News Archive (7)Apr 22, 2021 (Newsletter Issue 8/21)Accession to Madrid Protocol On February 24, 2021, Pakistan deposited with WIPO its instrument of accession to the Madrid Protocol, containing:
- the declaration extending the refusal period to 18 months and making it possible to notify refusals based on opposition after the expiry of that period (Article 5(2)(b) and (c) of the Madrid Protocol);
- the declaration indicating that Pakistan wishes to receive an individual fee when it is designated in an international application, in a subsequent designation and in respect of the renewal of an international registration (Article 8(7)(a) of the Madrid Protocol). The amounts of that individual fee will be the subject of a separate information notice;
- the notification indicating that Pakistan requires, when it is designated under the Madrid Protocol, a declaration of intention to use the mark (Rule 7(2) of the Regulations under the Madrid Protocol);
- the notification indicating that the recording of licenses in the International Register shall have no effect in Pakistan (Rule 20bis(6)(b) of the Regulations under the Madrid Protocol); and
- the notification indicating that the Office of Pakistan will not present to WIPO requests for the merger of international registrations resulting from division because the law of Pakistan does not provide for the merger of registrations of a mark (Rule 27ter(2)(b) of the Regulations under the Madrid Protocol).
The Madrid Protocol will enter into force on May 24, 2021.
For further Information can be seen in the Information Notice No. 4/2021 hereSource: www.wipo.int Mar 11, 2021 (Newsletter Issue 5/21)
Accession to Madrid System
On February 24, 2021, Pakistan deposited its instrument of accession to the Madrid Protocol with WIPO. The Protocol will enter into force for Pakistan on May 24, 2021.
Starting May 24, 2021, local brand owners in Pakistan can begin using the Madrid System to protect their trademarks in the 123 territories of the System’s other 107 members by filing a single international application and paying a single set of fees.
With its straightforward designation process, foreign companies and trademark owners can, from May 24, 2021, seek trademark protection through the Madrid System when selling their products and services in the Islamic Republic of Pakistan.
Source: www.wipo.int
Mar 21, 2019 (Newsletter Issue 4/19)Official Fees 50% IncreasedOn March 4, 2019, the Pakistani Ministry of Commerce and Textile (Commerce Division) has promulgated an official notification advising of the Federal Government directive an increase of 50% in official fees for all IP related matters amending the Trade Marks Rules of 2004. The said increase is effective as of March 9, 2019, for Trademark and Patent matters whereas for copyrights the revised fees is effective as of March 14, 2019.
The new official fee for filing a trademark application is PKR 3,000 for one class and PKR 3,000 for each additional class. The official registration fee is PKR 9,000. There is no publication fees.
To access the notification, please click here
Source: JAH & Co. IP, Qatar and Bharucha & Co., Pakistan Mar 14, 2017 (Newsletter Issue 5/17)Draft Geographical Indication Bill PublishedThe Intellectual Property Organisation of Pakistan (IPO) prepared and published on its website the Draft Geographical Indication Protection Bill 2016.
There has been a need for comprehensive legislation because the current Trade Marks Ordinance 2001 provides only minimal provisions relating to the protection of geographical indications. The Draft Geographical Indication Protection Billl aims at improving protection and public awareness of geographical indication products in Pakistan and aligning local laws with international standards, such as TRIPS and the Paris Convention.
The draft bill published on the IPO website is open for discussion and public comment.
For more information, please check the article of our Country Index partner here
Source: Vellani & Vellani, Pakistan Sep 15, 2015 (Newsletter Issue 14/15)Amended Terms and IP Related Fees IncreasedThe Sindh Finance Act 2015 has made some amendments to various statutes including the Sindh Sales Tax on Services Act, 2011. The following terms have been defined therein:
(54A) “intellectual property right” means and includes any right of intangible property, anything produced by the mind, trade mark, patent, design including industrial design, layout design (topographies) of integrated circuits, copyright or any other similar intangible property as defined in clause (g) of section 2 of the Intellectual Property Organization of Pakistan Act, 2012 (Act No. XXII of 2012) and covered by the Intellectual Property Laws specified in clause (h) of section 2 thereof or under any other law for the time being in force;
(54B) “intellectual property service” means any service provided or rendered to a person by any person by transferring temporarily or permitting the use or enjoyment of an intellectual property right.
Further, the Sindh Revenue Board (SRB) of Pakistan has issued a notification stipulating that 10% sales tax will be added on all Intellectual Property services offered in Pakistan.
Source: Vellani & Vellani, Pakistan and www.agip.com Nov 08, 2011 (Newsletter Issue 13/11)Journal of Trademarks Available Electronically NowThe Intellectual Property Organization of Pakistan (IPO) has launched the first publication of Digital Journal of Trademarks at the Trademarks Registry in Karachi on October 20, 2011.
Accordingly, trademarks will be published faster and in colors while in the past they needed 12-18 months.
Last August, the Intellectual Property Organization of Pakistan (IPO) informed all the applicants, attorneys and General Public that Trademark Rules 2004 has been amended to give legal effect to the Digital Form of the Trademark Journal available on the website of IPO-Pakistan. To access the IPO's website, please here
Source: AGIP; Bharucha & Co., Pakistan Jul 01, 2011 (Newsletter Issue 9/11)
Official Fees Increased
The Pakistani Patent and Trademark Office announced on its website that the fee for IP applications i.e. trademarks, patents and copyrights has been restructured and increased, likely effective from June 4th, 2011 (notice of July 6th, 2011).
The official application fee for a trademark is USD 24.00 (approx. EUR 17.00) for one class and USD 24.00 for each additional class. The official registration fee is USD 71.00 (approx. EUR 50.00).
Source: www.ipo.gov.pk
Bharucha & Co., Karachi, Pakistan
Legal basis is the Trademark Law “Trade Marks Ordinance 2001, in force since April 12th, 2004.
Trademark protection is obtained by registration or use.
Member of the Madrid Protocol as of May 25, 2021.
ClassificationNice classification; although law is yet to be amended, the Trade Marks Registry accepts applications as per 10th edition.
What is Registrable as a TrademarkRegistrable as a trademark are all distinctive and graphically representable signs, such as words, names, letters, numbers, devices, and any combination of the mentioned signs. Well-known marks are recognised.
The following trademark types are registrable: trademarks, certification marks, collective marks, domain names and geographical indications.
Registration ProceedingsThe application is filed at the Trademarks Registry. Electronic filing is available.
Multiple class applications are not permissible in Pakistan and therefore, a separate application has to be filed for each class.
It is possible to file other similar trademarks as series trademarks in the same application.
It is possible to file an application in Pakistan claiming priority rights in a corresponding Convention country, provided that the certified copy of the priority application is filed within 3 months of the date of filing of the application in Pakistan.
Foreign applicants need a local agent.
A notarised power of attorney is necessary and acceptable.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for any conflicts with prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The first office action is taken within approx. 3 months of filing of the application. The whole procedure from application to registration takes around 12 to 14 months if no third party objection/opposition is raised/filed.
Prior to registration, the trademark application is published in the monthly “Trademarks Journal” for inviting third party oppositions.
Opposition PeriodNational:The national opposition period is 2 months from the publication date of the trademark application. The period may be extended twice by filing an extension of time of one month each.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Trademark DurationA trademark registration is valid for 10 years from date of application.
The registration is renewable for subsequent periods of 10 years. The initial registration of a trademark application filed prior to April 12, 2004, is valid for a period of 7 years. Renewals prior to April 12, 2004 were made for a period of 15 years from the expiration date of the original registration or from the last renewal of registration, renewals after April 12, 2004 will be done for a period of 10 years.
Grace Period for Trademark RenewalPractical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is PKR 3,000 for one class and PKR 3,000 for each additional class. The official registration fee is PKR 9,000. There is no publication fee.
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Practical details on trademark licensing are available in our publication
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General Trademark Regulations
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Jun 03, 2024
Vellani & Vellani, Karachi, Pakistan
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