Trade marks in Pakistan are primarily governed by the Trade Marks Ordinance, 2001 (as amended in 2023) (the “Trade Marks Ordinance”) and the Trade Marks Rules, 2004, which regulate registration, prosecution and enforcement.

Copyright protection is provided under the Copyright Ordinance, 1962 (the “Copyright Ordinance”) and the Copyright Rules, 1967, both amended in 2000. Pakistan also recognises common law trade mark rights based on prior use, enforceable through passing off. In addition, well-known trade marks are protected under Section 86 of the Trade Marks Ordinance, reflecting Pakistan’s obligations under the Paris Convention.

Pakistan is a signatory to several key international intellectual property treaties. In the area of trade marks, these include:

• the Paris Convention;
• the TRIPS Agreement;
• the WIPO Convention;
• the Madrid Agreement and Madrid Protocol; and
• the WTO Agreement.

Pakistan has also acceded to major copyright treaties, including:

• the Berne Convention;
• the TRIPS Agreement;
• the Universal Copyright Convention;
• the WIPO Copyright Treaty;
• the Rome Convention; and
• the Marrakesh Treaty.

These treaties are not self-executing in Pakistan; however, their provisions have been incorporated and enforced through domestic legislation, particularly the Trade Marks Ordinance, which gives effect to instruments such as the Paris Convention, TRIPS Agreement and Madrid Protocol. Even where specific implementing legislation is absent, Pakistani courts and authorities accord due weight to international treaty obligations, recognising their binding effect on the State and their persuasive value in intellectual property adjudication.

The Trade Marks Ordinance defines a trade mark as any mark capable of graphical representation and of distinguishing the goods or services of one undertaking from another. A “mark” broadly includes words, names, symbols, devices, numerals, slogans and figurative elements, and has evolved to cover non-traditional marks such as colours, sounds and three-dimensional designs, although protection for smells remains uncertain due to graphical representation requirements.

In addition to individual trade marks, the Ordinance provides protection for collective and certification marks under Sections 82 and 83. Geographical indications, which were previously registrable as trade marks, are now governed separately under the Geographical Indications Ordinance, 2020.

The Trade Marks Ordinance further restricts the registration of certain marks under Sections 87, 88 and 89, including national flags, state emblems, official hallmarks, and emblems or names protected under the Paris Convention, unless proper authorisation is obtained. Lastly, Section 86 affords special protection to well-known marks, allowing enforcement against infringement even without registration in Pakistan, unlike ordinary trade marks.

In order to qualify for trade mark protection, a mark must satisfy the requirements of Section 2(xlvii) of the Trade Marks Ordinance, namely that it is capable of graphical representation and of distinguishing the goods or services of one undertaking from those of others. Sections 14 and 17 of the Ordinance set out the absolute and relative grounds for refusal, on the basis of which a trade mark may be refused registration. However, the proviso to Section 14 creates an exception to the absolute grounds by allowing the registration of marks lacking inherent distinctiveness where, prior to the application date, the mark has acquired distinctiveness and a secondary meaning through use and has become well known. In assessing distinctiveness, factors such as duration and extent of use, advertising and promotional efforts, market presence, and consumer recognition are typically taken into account.

Section 39 of the Trade Marks Ordinance grants registered trade mark proprietors exclusive rights to use their marks and restrain unauthorised use. Registration constitutes prima facie evidence of ownership, enabling courts to grant injunctive relief and facilitating enforcement before authorities such as Customs, the Drug Regulatory Authority of Pakistan, the Securities and Exchange Commission of Pakistan, and the Competition Commission of Pakistan. These rights are subject to use requirements, as a mark may be cancelled if not put to bona fide commercial use within five years.

In contrast, the Copyright Ordinance does not expressly recognise anti-circumvention rights, though such protection may be inferred from the broad exclusive rights granted to copyright owners.

There are no specific legal guidelines for establishing the use of a trade mark in Pakistan per se. Parties may demonstrate usage through evidence such as promotional and marketing materials, sales invoices, and import/export documents associated with the trade mark, helping to 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 ® symbol and trade mark symbol denote the status of the mark in Pakistan as being registered or applied for, respectively. Though 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 under the Trade Marks Ordinance is broad and may overlap with copyright protection. Artistic elements such as logos, trade dress and packaging can be protected under both trade mark and copyright law. Additionally, surnames may be registered as trade marks if they have acquired distinctiveness and secondary meaning in relation to specific goods or services. The registration of a surname does not raise issues of morality, provided it is not used in a derogatory or defamatory manner.

Section 10 of the Copyright Ordinance recognises copyright in original literary, dramatic, musical and artistic works, as well as cinematographic works and records. Section 2 further elaborates the scope of these protected categories.

Literary works include writings in religion, sciences, humanities, compilations and computer programs, along with works stored or reproduced through digital or mechanical devices.

Musical works cover the graphical representation or reproduction of melody and harmony.

Dramatic works comprise choreographic works, mime, recitation and theatrical arrangements fixed in a tangible form, excluding cinematographic works.

Artistic works include paintings, sculptures, photographs, drawings, maps, architectural works, and works of artistic craftsmanship, without any requirement of artistic merit. Cinematographic works consist of visual image sequences, with or without sound, creating the impression of motion, while records cover sound-recording media such as tapes and discs, excluding soundtracks associated with films.

Under Section 12, industrial designs are expressly excluded from copyright protection in Pakistan. Such designs are governed by the Registered Designs Ordinance, 2000, and copyright does not subsist where a design is registered under that law or has been industrially reproduced more than 50 times.

In order to qualify for copyright protection, work that includes literary, dramatic, musical or artistic work in a cinematographic work or a record must be original and fixed in a tangible medium form of expression.

The Copyright Ordinance defines an “author” under Section 2(d) according to the nature of the work, including:

• the writer of a literary or dramatic work;
• the composer of a musical work;
• the artist of an artistic work;
• the photographer of a photograph;
• the owner of a cinematographic work at the time of its completion; and
• the owner of the original plate in the case of a record.

The Ordinance sets out rules on first ownership of copyright. Where a literary, dramatic or artistic work is created in the course of employment for publication in a newspaper or similar periodical, the employer is the first owner only for publication-related rights, while all other rights remain with the author. In cases of works made for valuable consideration at the instance of another person (such as photographs, portraits, engravings or cinematographic works), the commissioning party is the first owner, unless agreed otherwise. For other works created under a contract of service or apprenticeship, the employer is deemed the first owner in the absence of a contrary agreement.

The Ordinance also recognises anonymous and pseudonymous works, with copyright lasting 50 years from publication, or from the author’s death if identity is later disclosed. Joint authorship is recognised as a single work, with the term calculated from the death of the last surviving author. Contractual arrangements between joint authors regarding exploitation remain governed by contract law.

The Copyright Ordinance grants copyright owners statutory protection against infringement. Under Section 60, owners may seek civil remedies including injunctions, damages and accounts of profits for unauthorised use. Section 60-A further allows courts to issue provisional orders for the recovery and preservation of infringing copies prior to formal proceedings. In addition, criminal remedies for infringement are available under Sections 66 to 74 of the Ordinance.

The Ordinance also safeguards the moral rights of authors. Under Section 62, an author may restrain or claim damages for any distortion, mutilation or modification of a work that is prejudicial to the author’s honour or reputation, regardless of whether the economic rights in the work have been assigned.

While synchronisation rights are not expressly defined under the Ordinance, the use of musical or other copyrighted works in synchronised formats requires the prior licence or consent of the relevant copyright owner(s).

For a work that was created and has been expressed in a tangible form for the first time, the copyright protection commences from the moment of its creation, and is ordinarily given a term that extends across the author’s lifetime plus an additional 50 years after the author’s death. In the case of a joint work prepared by two or more authors who did not work for hire, the term lasts for 50 years after the last surviving author’s death. For works made for hire and for anonymous and pseudonymous works, the duration of copyright is 50 years from publication.

Collective rights management in Pakistan is governed by Sections 31 to 34 of the Copyright Ordinance, which regulate performing rights societies responsible for licensing public performances and collecting royalties. These provisions establish a structured and legally enforceable framework for setting and administering fees, ensuring transparency and balancing the interests of right-holders and users. At present, music rights in Pakistan are managed collectively through the Collective Organization for Music Rights (COMP).

In Pakistan, copyright protection arises automatically upon the creation of a work in tangible form, and registration is not mandatory. However, registration serves as formal evidence of ownership and strengthens enforcement. Registered copyright owners enjoy exclusive rights to reproduce, publish, perform, communicate, adapt, broadcast, sell, license or assign the work, and to restrain unauthorised use and initiate legal action for infringement.

Any individual or legal entity may apply for copyright registration, and foreign applicants may do so through a local attorney. Once approved, the work is entered in the Register of Copyrights maintained by the Registrar, which records details of the work, authors, publishers and owners. While certified copies or extracts may be obtained upon payment of the prescribed fee, the Register is not currently accessible online.

Copyright registration in Pakistan is governed by the Copyright Ordinance and the Copyright Rules. The Copyright Register is divided into four categories under which applications are filed according to the nature of the work:

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

Registration requires filing Form II with full applicant and work details, along with prescribed supporting documents, including statements of particulars where applicable, copies of the work, declarations of originality, and evidence of ownership or assignment such as NOCs or affidavits in cases of commissioned or collaborative works. A notarised power of attorney is required if the application is filed through an agent, along with payment of the official fee.

Applications are filed at the Copyright Registrar’s Office in Karachi or IPO offices in Lahore, Peshawar or Islamabad, with one application per work. For artistic works, an advertisement must be published in an English or Urdu newspaper within the prescribed time and copies submitted to the Registrar, and notice must be given to any interested or disputing parties. Fees vary by category and are subject to revision; as of 2023, official costs were generally under USD100.

A copyright application in Pakistan may be refused primarily for lack of originality or failure to be fixed in a tangible medium of expression, as copyright protects the expression of ideas and not the ideas themselves. Protection is not available for unfixed works, abstract ideas, systems, methods, principles, discoveries or information that constitutes common property, such as facts or standard public data. Works that infringe existing intellectual property rights or that are registered as industrial designs are also excluded from copyright protection.

An appeal against refusal may be filed before the Copyright Board within three months of the decision. The Board’s determination is final and not subject to further appeal or challenge.

Although copyright and trade mark protection may overlap in relation to logos, artistic designs, trade dress and packaging, there is no statutory provision treating copyright as an inherent component of trade mark protection. In practice, however, the Copyright Office tends to favour registered trade mark owners. Pakistani courts have also clarified that copyright registration cannot substitute trade mark protection, and for vendible goods, copyright claims are generally expected to be supported by a valid trade mark registration.

As a common law jurisdiction, Pakistan recognises the rights of prior users or adopters of a trade mark irrespective of registration, provided bona fide use can be established in the event of a dispute. While registration is not mandatory to claim trade mark rights, it offers significant statutory advantages, including stronger enforcement and clearer exclusivity.

Trade mark rights primarily arise from use; however, proprietors with a bona fide intention to use a mark may file a “proposed to be used” application to secure an early priority date. Despite this, Section 73 of the Trade Marks Ordinance provides that a registered trade mark is liable to revocation if it is not used in Pakistan for a continuous period exceeding five years after registration.

Under Sections 39 and 33 of the Ordinance, registration confers exclusive rights from the date of registration, and any unauthorised use constitutes infringement. Registration also serves as prima facie evidence of proprietorship, enabling courts to grant interlocutory injunctions. Additionally, it facilitates enforcement before government and regulatory bodies, including Customs, the Drug Regulatory Authority, and the Competition Commission of Pakistan. All trade marks are subject to the same procedural requirements under the Trade Marks Ordinance and the Trade Marks Rules, 2004.

Under the Trade Marks Ordinance, a Register of Trade Marks is maintained containing details of all registered trade marks. While the Register is not available online, it is accessible for public inspection at the Trade Mark Office through a dedicated portal commonly used for clearance searches. In addition, official trade mark searches may be requested by filing Form TM-55, which applies to a single mark in one class and must be accompanied by two representations of the mark and a search fee of PKR1,000.

A registered trade mark in Pakistan is valid for ten years from the application date and may be renewed under Section 35 of the Trade Marks Ordinance upon payment of the prescribed fee. A minimum six-month grace period is available after expiry on payment of an additional fee, failing which the mark may be removed from the Register, subject to possible restoration. Continued registration requires bona fide use in Pakistan, supported by evidence such as invoices or promotional material.

Section 37 allows limited alterations to registered trade marks, such as changes to the proprietor’s name or address, provided the mark’s identity is not substantially affected. Material alterations require publication, while amendments to the mark or goods and services are not permitted after registration; however, pending applications may be amended using Form TM-16.

Trade mark applications in Pakistan must be filed in hard copy in accordance with the Trade Marks Ordinance and the Trade Marks Rules, 2004. The application must include the prescribed form containing the applicant’s name and address, a formal request for registration, a statement and classification of the relevant goods or services, a clear representation of the mark, and the agent’s details where applicable.

Pakistan does not permit multi-class applications; each application must be filed separately for a single class under Rules 13 and 14 of the Trade Marks Rules, 2004. Applicants must also provide a statement of the period and manner of use of the mark, and the Registrar may require supporting evidence by way of affidavit and exhibits.

Trade mark registration is sought by filing Form TM-1 along with the official fee of PKR12,000. Any legal person, including foreign nationals, companies and partnerships, may apply for registration without the mandatory appointment of a licensed attorney.

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 Office only considers those marks which are on the register, whether registered or pending.

The owner of a prior registration may provide consent to the registration of a given application; this may include a recitation of facts and reasons for the absence of 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.

It is possible to amend or correct an application for a trade mark during the registration process through the prescribed form – ie, TM-16. Material alterations are also allowed, depending on the stage the application is at, and such alterations are subject to the approval of the Registrar of Trade Marks and republication in the official Trade Marks Journal. It is important to note that 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.

A trade mark application in Pakistan may be divided by filing Form TM-14 while the original application under Section 22 of the Trade Marks Ordinance is still pending. A divisional application allows the applicant to seek registration of part of the trade mark or to limit the application to some of the goods or services covered in the original filing. The divisional application is examined and processed in the same manner as the original application and retains the original filing date for priority purposes.

Providing incorrect or false information in connection with a trade mark application can lead to serious consequences, including rejection or cancellation of the application, loss of trade mark rights, and opposition on the ground that the mark was accepted due to false representations, as recognised under Section 29(3)(c) of the Trade Marks Ordinance.

Additionally, Section 99 prescribes criminal penalties for false trade descriptions, including imprisonment of up to two years and/or fines starting from PKR50,000. Errors or inaccuracies may be corrected by filing Form TM-16, subject to approval by the Registrar of Trade Marks.

Under Section 14 of the Trade Marks Ordinance, trade mark registration in Pakistan may be refused on absolute grounds where a mark:

• lacks distinctiveness;
• is descriptive or customary in trade;
• consists of functional or value-giving shapes; or
• is deceptive, scandalous, contrary to law or morality, or filed in bad faith.

Marks failing to meet the statutory definition of a trade mark are also barred. However, such marks may still be registered if they have acquired distinctiveness through prior use or qualify as well known before filing. Applicants are given an opportunity to respond to objections by submitting a reasoned reply supported by evidence.

The Trade Marks (Amendment) Act 2023 introduced international registration under the Madrid Protocol. It is important to note that, while the substantive law is the same for international registrations, procedural requirements have been introduced wherein an application must be examined within 18 months of the filing so as to avoid registration without examination as granted under the Madrid System.

Once a trade mark application is published in the Trade Mark Journal, any person may oppose its registration by filing a Notice of Opposition on Form TM-5 within two months of the advertisement, in accordance with Rule 30 of the Trade Marks Rules. The Registrar may grant up to two extensions of one month each. Under Rule 80(5), further extensions may be allowed at the Registrar’s discretion even after expiry of the opposition period, provided no party is prejudiced. Although not expressly provided by law, a cooling-off period is commonly granted in practice to allow parties time to explore amicable settlement.

Section 29 of the Trade Marks Ordinance sets out the grounds on which a trade mark application may be opposed. These include:

• all statutory grounds for refusal (other than lack of graphical representation);
• absence of intention to use the mark in Pakistan;
• lack of proprietorship;
• procedural irregularities or false evidence;
• improper pre-acceptance advertisement; and
• conflict with a well-known trade mark.

Opposition may also be based on likelihood of confusion, deception or dilution of another mark’s reputation, as well as misuse of geographical indications. The provision expressly recognises trade mark dilution as a valid ground for opposition.

Any interested party may file an opposition to a trade mark application in Pakistan and may do so without representation. The term “interested party” is broad and includes individuals, entities or organisations that have a legitimate concern or stake in the registration of the trade mark in question. It is not mandatory for the opponent to hold a trade mark or trade mark registration to file an opposition. However, the opponent should have a genuine interest or grounds for opposing the application – otherwise, the notice of opposition may be dismissed by the Registrar.

The official fee for filing a notice of opposition for one application is PKR9,000. With regards to attorney fees, please note that these range between PKR50,000 to PKR250,000 but can vary 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 commence with the filing of a Notice of Opposition on Form TM-5 within two months of the trade mark’s advertisement. The notice sets out the grounds of opposition and is served on the applicant by the Registrar. The applicant must file a counter-statement on Form TM-6 within one month, or within any extended period granted by the Registrar, failing which the application is deemed abandoned. The opponent may then file a rejoinder within one month of receiving the counter-statement.

The matter proceeds to the evidence stage, where the opponent must submit evidence in support of the opposition within two months of the counter-statement, failing which the opposition is abandoned. The applicant is then required to file evidence in support of the application within two months, followed by the opponent’s reply evidence, limited strictly to rebuttal, within one month. The Registrar may allow further evidence at their discretion.

After completion of evidence, the Registrar issues a hearing notice. Parties may present oral submissions and/or file written arguments. Upon conclusion of the hearing, the Registrar considers the pleadings, evidence and arguments on record and issues a decision on the opposition.

Revocation

Trade mark

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 – then, the application shall be made to the High Court. Moreover, under Section 80 of the Ordinance, an applicant may file the application before the Registrar or the High Court; however, in the event that proceedings concerning the marks are pending at the 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. Sections 73 and 80 of the Ordinance provide that, where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.

An aggrieved party may appeal a decision of the Trade Mark Registry before the relevant High Court. A further appeal lies before the Supreme Court of Pakistan, subject to the granting of leave to appeal, whose decision is final. Appeals can only be filed once the Registry’s decision has attained finality. While the appellate mechanism provides recourse, no fixed timeline is prescribed, and the duration of proceedings depends on factors such as case complexity and court workload.

An amendment is allowed in revocation/cancellation proceedings subject to the other party’s consent thereto. In many instances, a party may oppose any such amendment and it is then left to the court/Registrar’s discretion.

Historically, when the cases are before the same forum, a revocation/cancellation and an infringement action are heard together. However, with the promulgation of the Trade Marks Amendment Act, 2023, a revocation/cancellation shall be filed before the High Courts and thus will have separate timelines.

There are no specific provisions that outline an investigation per se when a registration is challenged on the ground of being filed fraudulently, and the same procedure as is in the case of other grounds for cancellation/revocation applies.

Assignment of a Trade Mark

A registered trade mark, being movable property, may be transferred by assignment with or without goodwill. An assignment may cover all or some of the goods or services for which the mark is registered and may be restricted to a particular manner of use or geographic area. To record an assignment, an application must be filed on Form TM-23 or TM-24 along with the prescribed fee, supported by relevant documents such as the registration certificate, incorporation documents and a board resolution, where applicable.

For validity, the assignment must be recorded with the Registrar of Trademarks. Upon satisfaction that the requirements are met and no third-party rights are prejudiced, the Registrar issues a certificate of assignment in favour of the assignee. Section 69(3) of the Ordinance expressly allows partial assignments limited to specific goods, services, modes of use, or localities.

Assignment of a Copyright

Section 14 of the Copyright Ordinance permits the assignment of copyright, wholly or partially, in existing works and in future works, subject to conditions imposed by the owner. Assignments may be limited in duration or scope and, in the case of future works, take effect only once the work comes into existence. Where the author is also the copyright owner, an assignment is statutorily limited to ten years, after which rights revert to the author or, if deceased, to the author’s heirs or legal representatives. This limitation does not apply to assignments in favour of government, educational, charitable, religious or non-profit institutions. In unpublished works, assigned for publication, rights revert to the author if the work is not published within three years.

Upon assignment, the assignee is treated as the owner of the assigned rights, while the assignor retains ownership of unassigned rights. The author’s moral rights remain enforceable during the assignment period. Any aggrieved owner or publisher may apply to the Copyright Board within one year to challenge adverse assignment terms, whose decision is binding. Assignments must be in writing and may be recorded with the Registrar of Copyright.

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 licence depend on the understanding and agreement of the parties, and while it is not necessary to register a licence 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 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.

Section 70 of the Trade Marks Ordinance requires that any registrable transaction affecting a registered trade mark be recorded in the Trade Marks Register. Until such recordal is made, the transaction is ineffective against third parties acquiring a conflicting interest. Further, a person claiming rights as a licensee is not entitled to statutory protections, such as those relating to assignment, infringement remedies or surrender of the mark, until the transaction is duly recorded with the Registry.

As per the Limitation Act, 1908, a claim of infringement shall be made within three years of the date of knowledge of the infringement; for trade marks, Section 81 provides for a period of five years from date of knowledge.

In Pakistan, trade mark and copyright owners have multiple enforcement options, depending on whether the rights are registered. Trade mark infringement involves the unauthorised use of an identical or deceptively similar mark to exploit goodwill and gain commercial advantage. A claim for trade mark infringement requires a valid registration; in the absence of registration, remedies are available only through a passing-off action based on prior use. In both cases, the claimant must establish a prima facie case, including proof of rights, likelihood of irreparable harm, and balance of convenience.

Copyright infringement covers unauthorised reproduction, distribution or display of protected works. Remedies include civil relief such as injunctions and damages, as well as criminal sanctions involving fines and imprisonment. Additional claims relating to copyright management information may also be available under applicable law.

Trade Marks

Sections 40 and 46 of the Trade Marks Ordinance outline the following as constituting the infringement of a trade mark:

• 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; and
• 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 as constituting copyright infringement:

• where any person without the copyright owner’s consent or a licence from the Registrar does an action exclusive to the copyright owner;
• where any person allows their place to be used for profit in a way that infringes the copyright; and
• where any person who, for commercial purposes, makes, sells, displays, distributes or imports infringing copies of the work.

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

Following the Intellectual Property Organization Act, 2012, all intellectual property infringement suits in Pakistan must be filed before the provincial Intellectual Property Tribunals, which now have exclusive jurisdiction over such matters. Appeals from Tribunal decisions lie with the relevant High Court, with a further appeal to the Supreme Court, subject to leave.

Infringement or dilution proceedings typically cost PKR2.5 million to PKR3 million or more, including legal fees; legal representation is advisable, though not mandatory. Foreign trade mark owners may enforce rights in Pakistan under the Paris Convention, including protection of well-known marks without local registration, while foreign copyright-holders may enforce their rights under applicable international treaties.

An alleged trade mark or copyright infringer can file a suit under Section 52 of the Ordinance for “groundless threats”, especially where they are or have the apprehension of being threatened for trade mark infringement. Further, a defendant can only protect itself 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, thus attracting 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 Ordinance.

There is no distinction made in the law for small claims. All suits or actions relating to infringement shall be instituted before the Intellectual Property Tribunal of competent jurisdiction.

The Trade Mark or Copyright Offices do not make decisions on infringement per se. They may adjudicate upon similarity and/or dissimilarity of marks during opposition proceedings; however, the Tribunals are not bound by such decisions. That said, the decisions of the Trade Mark and Copyright Offices carry substantial weight.

Trade Marks

The Trade Marks Ordinance defines counterfeit trade mark goods as unauthorised products or packaging bearing a mark identical or indistinguishable from a validly registered trade mark. Enforcement against counterfeit exports and imports is available under the Customs Rules, 2001 through SRO No 170(1)/2017, which empowers customs authorities to seize or confiscate infringing goods. Counterfeiting also constitutes a criminal offence under Section 478 of the Pakistan Penal Code, attracting penalties including imprisonment, fines and destruction of infringing goods.

Copyright

The Copyright Ordinance defines a counterfeit copy as an imitation that appears to be genuine but is not. Distribution of counterfeit works for commercial gain is a criminal offence, punishable with imprisonment of up to three years, a fine of up to PKR100,000, or both. The Ordinance also provides for the seizure of counterfeit goods upon application.

The legal framework for trade mark and copyright proceedings in Pakistan is provided by the Trade Mark Ordinance  and the Copyright Ordinance, respectively. These matters are heard in specialised courts known as Intellectual Property Tribunals, with provincial jurisdiction. The proceedings in these tribunals are adversarial and 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 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.

Costs for infringement or dilution actions, including trial and appeal, vary from PKR2.5 million to PKR3 million or more. Recovering costs is provided for under the law, though Pakistani courts are generally hesitant in this regard and, when granted, the amounts are limited to a small fraction of the total expenses.

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 licence;
• 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 the concept of fair use under Section 57 of the Copyright Ordinance, which specifies acts that do not constitute copyright infringement. These include fair dealing with literary, dramatic, musical or artistic works for purposes such as research or private study, criticism or review, and reporting current events through print media, broadcast, cinematographic works or photographs. Limited use of copyrighted material is therefore permitted in defined circumstances without the owner’s consent, with the assessment guided by statutory factors such as the purpose of use and the nature of the work.

Although the Ordinance does not expressly provide exceptions for satire, parody or free speech, such uses may potentially fall within the broader scope of fair dealing under Section 57. Whether a particular use qualifies as fair dealing in these contexts is determined on a case-by-case basis and rests within the discretion of the adjudicating authority.

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.

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. Injunctive relief, whether interim or permanent, can be made out upon fulfilment of three conditions:

• 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 High Court or the Intellectual Property Tribunal may order:

• 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
• 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 High Court or Intellectual Property Tribunal 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.

That said, there is no requirement to present a bond to obtain an injunction.

Section 46(2) of the Trade Marks Ordinance proposes that, in an action for infringement, all such relief by way of damages, injunctions, accounts or otherwise shall be available to the proprietor of the trade mark as is available in respect of the infringement of any other property right. Damages are typically calculated based on the actual harm suffered by the owner, the profits gained by the infringer and, in the case 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 monetary remedies, the courts have often shown reluctance in awarding these to the plaintiff.

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

Ex parte relief is granted to the trade mark/copyright owner upon the provision 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. 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 has implemented border enforcement mechanisms to prevent the importation and exportation of counterfeit goods. Under the Customs Rules, 2001 and Statutory Regulatory Order (SRO) No 170(1)/2017, trade mark and copyright owners may file complaints with Customs against infringing goods. The SRO establishes a dedicated Directorate for Intellectual Property Rights, empowering customs authorities to seize counterfeit or infringing goods at the import or export stage, subject to an independent adjudication process and the provision of security by the complainant.

Additionally, a registered trade mark proprietor may notify the Collector of Customs in writing to treat infringing goods as prohibited, enabling seizure and destruction in accordance with statutory procedures. It is also noted that parallel imports are lawful in Pakistan, provided applicable duties, taxes and declaration requirements are satisfied.

A trade mark or copyright infringement decision issued by the Tribunal can be appealed to the High Court having territorial jurisdiction over the Tribunal.

The timeframe for an appeal against a decision of the trial court to the High Court is 30 days. The disposal of an appeal may take up to two to three years.

Pakistan is in the process of promulgating amendments to the Copyright Ordinance to cater to the emergence of artificial intelligence (AI). Moreover, a draft National Artificial Intelligence Policy is also pending promulgation as issued by the Ministry of Information Technology and Telecommunication, indicating a recognition of the need to establish guidelines for the responsible development and deployment of AI technologies in the country. That said, the absence of specialised laws has posed challenges in addressing modern issues related to software development, distribution and infringement. 

This topic is not applicable.