Trade Mark Registration

A. Trademark Comprehensive Search:

Choosing the right name for your business and brand can mean the difference between success and failure. Trademark searches are critical for new brands.

Trademark Search evaluates the likelihood of the proposed trademark obtaining registration by examining marks already in use in the marketplace. It helps identify potential problems in pursuing a particular name, phrase, design, or symbol to understand the uniqueness and distinctiveness of the client’s chosen mark in the preferred jurisdiction which may easily be overlooked by the untrained eye.

This search is performed on the national trademarks registry and various paid and non-paid databases to ensure the best accuracy in the results yielded. An exhaustive search report is prepared which may or may not be accompanied by an opinion letter from an attorney analyzing the results.

Our team is adept at performing trademark searches across varied jurisdictions and is experienced in working with different search software.

We assist our clients to implement a comprehensive brand development strategy and provide clearance searches and opinions in over 200 trademark registers across the world.

B. Trade Mark Classification:

In Pakistan Trade Marks are classified under 45 classifications having signatory to International Nice Classification (Agreement) based on Geneva accord executed by 75 Countries. Idea is to register Trade Mark under these classifications capable of distinguishing your goods or services from similar Trade Mark of other classified business sectors.

C. Trademark Registration:

We are amongst the top IP firms in Pakistan to provide comprehensive trademark registration services to many national and multinational corporations, domestic companies, SMEs and start-ups. With over two decades of experience, deep understanding, and industry specific nuances our well-experienced trademark prosecuting lawyers, litigators and transactional lawyers closely work together to provide the best advice and services to our clients. We provide strategic protection perspective and to devise offensive and defensive strategies to protect the clients’ rights over trademarks, trade dress, domain names, etc. in Pakistan and across the world.

Trademark Registration Procedure in Pakistan:

Trade Marks are registered and protected under Trade Marks Ordinance, 2001 in Pakistan. For a purpose of registration of Trade Mark following procedure is commonly adopted:

• Application seeking nation-wide search of Trade Mark.
• Filing of Trademark Application.
• Preliminary Examination by Registrar of Trademarks Pakistan.
• Hearing for objections from Public at Large.
• Submission of material confirming Trade Mark use.
• Decision on Trade Mark.
• Publishing of Trademarks Journal of Pakistan.
• Renewal of Trade Mark
  
  

A trademark registration in Pakistan is valid for 10 years and starts with registration date. The registration is renewable for periods of 10 years, where after the Trade Mark is to be applied afresh. It should be noted that trademark rights generally arise out of the use or to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other trademark objections.

D. Legal Statutory Remedy Against Infringement Of Trade Mark:

Trade Mark having been registered, is protected under the Trade Mark Ordinance, 2001 and in terms of the said law any such person aggrieved of infringement can instantly approach Court of law for interim relief so as to restrain a person from using such Trade Mark. Moreover, a suit for damages can be filed claiming general loss arising out of falsification, counterfeit and undue advantage, as a substantial relief.

Whereas a simultaneous criminal course can also be adopted for prosecuting a person having committed an offence of infringement by lodging First Information Report (FIR) with respective police station in terms of offences mentioned under Section 478 – 489 of Pakistan Penal Code 1860.

E. We Expert In Trademark Litigation:

Our attorneys organize online and offline use investigations, send cease & desist notices, negotiate the withdrawal of conflicting marks or co-existence, file oppositions, cancellation actions at the Trademark Registry, Intellectual Property Tribunal and High Courts.

Our trademark litigators have deep experience in advising and handling litigations and dispute resolution related to infringement, passing off, trademark dilution, unfair competition, ambush marketing, domain name disputes, etc.

F. Trademark Watch:

Trademark Watch ensures to monitor similar trademarks/potentially infringing marks by third parties which are registered or are in the process of registration with national trademark offices. It is an essential step in assuring trademark owners to identify potential infringers of their mark on time.  The earlier such applications are discovered, the simpler it is for companies to act out.

Brand owners should rigorously conduct trademark watch to challenge potentially conflicting trademarks, abide by the strict deadlines for filing the notice of oppositions when such applications are published in journals. Our experienced paralegal support team watches out for such infringers and supports clients in accordance with their tailored requirements.

We offer customized trademark watch assistance to fit your exclusive requirements and share relevant and accurate results. With worldwide coverage through niche partners across the globe for language support, our trademark watch monitoring services are targeted and reliable.

G. Trademark Counterfeit Watch:

Counterfeiters create grave obstacles for authentic businesses but too many people are oblivious of the destruction of counterfeit goods on brands or goods bearing counterfeit marks.

Trademark Counterfeit Watch exposes the possible counterfeiters by keeping a diligent watch over the e-commerce websites.

Our efficient and experienced in-house team provides a cutting-edge exhaustive watch targeting forgers easily getting away with infringing rightfully owned trademarks. The watch is conducted across the globe as well for the jurisdictional preference of the client. We monitor, report, and enforce as per the client’s need.

H. Our Global Presence:

To serve the needs of businesses, we work with a trusted network of global trademark attorneys/law firms to handle trademark filings, prosecution and enforcement outside Pakistan. Our attorneys coordinate and formulate prosecution strategies, manage effective and efficient dispute resolution, and handle litigation and enforcement in Pakistan and across the world, through our network of associated firms and IP attorneys and litigators in more than 180 countries.

I. Registration under Paris Convention:

The right to priority is an indispensable right granted by the Paris Convention (“Convention”) which allows the owner of an industrial design application in one Convention country (“first country of origin priority application”) to secure the same filing date for subsequent applications for the same design, filed within six months, in other Convention countries. Pakistan is a member of the Paris Convention for the Protection of Industrial Property. Pakistan is currently following both the Trademarks Act of 1940 in respect of cases filed prior to April 12, 2004, as well as the new Trademarks Ordinance of 2001 that was promulgated on April 12, 2004. In the said Ordinance, provisions for the registration of trade marks, convention applications, priority rights and domain names have been included.

J. Registration under Madrid System:

The Madrid Protocol (Protocol), an international treaty, which has been in force since April 1, 1996 and has become a convenient and economical means of securing trademark registration in member countries. The Madrid Protocol is an effective system of international registration of marks administered by the International Bureau (IB) of World Intellectual Property Organization (WIPO). Pakistan has joined Madrid Protocol on 24th February, 2021 and ratified it on 24th May, 2021. It means that Trademark applications under Madrid Protocol are being received by Pakistan from 24th May, 2021.

The Madrid Protocol is a part of Madrid System. The members of Madrid system form a Madrid Union. Three official languages are used for Madrid Protocol i.e. English, French, Spanish and currency for submission of fee is Swiss Francs. The applicant can file one application, in one language and pay fee in single currency instead of filing separate applications in different trademarks offices in different language and in different currency. In order to become party to the Madrid Protocol, it is mandatory to be a member of Paris Convention for the Protection of Industrial Property and Pakistan is a member of Paris Convention since 2004. Rao Law Associates (RLA) assist you in holding and establishing a statutory business right in Pakistan under Madrid Protocol.

Client Portfolio:

Our client portfolio is spread over various industries including publishing, education, media and entertainment, pharmaceuticals, food and beverages, IT and software, fashion, automobiles, liquor, cosmetics and personal care etc.

Specialized services provided by our team with astute legal acumen and business understanding is the biggest differentiator of our firm.