IP Registration System Summaries
01-Sep-2002
Trademark Registration System
Pakistan is a member country to the Bern Convention for the Protection of Literary and Artistic Works, Geneva Convention, World Intellectual Property Organization, the Universal Copyright Convention of 1952, and the WTO / TRIPS Agreement. Also, Pakistan is about to join the Paris Convention and is implementing the international classification of goods and will be adopting the new service mark classification from classes 35 to 42.
Pakistan is currently following the Trademarks Act of 1940 while the new Trademarks Ordinance of 2001 that has already been promulgated conforms to the TRIPS Agreement. In the said Ordinance, provisions for the registration of service marks, convention applications, right to priority and domain names have been included. This ordinance will come into effect upon the publication of its implementing regulations.
The trademark application filed in Pakistan shall be examined as to its registrability. When a trademark is accepted by the Registrar it shall be published in the Trademarks Journal. Any interested party may file a notice of opposition to the registration of a trademark within two months from the date of publication or within the period set by the Registrar, not exceeding six months in aggregate.
The initial registration of a trademark is valid for a period of seven years, renewable for a period of fifteen years from the date of expiration of the original registration, or from the last renewal of registration, as the case may be. The fees for renewing a trademark registration can be paid at any time during the last six months prior to the expiration of the latest registration. However, upon payment of additional fee, a late renewal is possible during a grace period of four months starting from the date of publication of the registration in the Trademarks Journal under the heading “Unpaid Renewal Fee”.
Assignments of a registered trademark with or without goodwill of business, change of name and/or address, registered user agreement and licenses of registered marks, are possible. The introduction of amendments to the registered mark without substantially affecting the identity of the mark or the boundaries of the list of goods covered by the registration of a trademark is also possible and shall be recorded in the official register.
The use of a trademark is not mandatory for filing an application neither for registration or maintaining the registration in effect. However, a concerned party may request from the Registrar or the High Court to remove a trademark from the register if it has not been used for five years and one month from the date of registration. Illegal use of the word “Registered” on an unregistered trademark, use of counterfeited trademark, illegal use of a registered trademark by an unauthorized person, dealing in goods bearing the counterfeited trademark are offences punishable under the law in Pakistan. Infringement proceedings may be filed in the District Court as well as in the High Court.
Trademark/Service Mark Applications
Power of attorney [on Form TM-48] duly notarized and signed by the applicant in two places marked by X. (for each case separately)
Transliteration and translation of non-English works appearing in the mark.
Confirmation whether the mark is in use in Pakistan or proposed to be used. If in use, the period of use shall be specified.
Nature of business of the applicant, e.g. manufacturers, merchants, etc.
Name, address and nationality / domicile of the applicant.
Specification of the goods on which the mark is applied.
Ten specimens of the mark (not needed for the work mark).
Renewal Applications
Power of attorney [on Form TM-48] duly notarized and signed by the applicant in two places marked by X. (for each case separately)
Copy of Registration Certificate.
Assignment Applications
Power of attorney [on Form TM-48] duly notarized and signed by the applicant in two places marked by X. (from each party separately)
Duly notarized deed of assignment executed by both parties.
The copy of certificate of registration of the mark.
Registered User/License Applications
Power of attorney [on Form TM-48] duly notarized and signed by the applicant in two places marked by X. (from each party separately)
A duly notarized license agreement executed by both parties.
Change of Name/Address Applications
A power of attorney (on Form-48) in the new name and/or address duly notarized.
A notarized certificate proving the change of name or address issued by the local competent authority of the applicant’s domicile.
The copy of the certificate of registration of the mark.
Patent Registration System
Once an application for the grant of a patent is filed, it is examined with respect to compliance with formalities and patentability provided for under the Patent Law, including novelty, inventiveness and industrial application. In case of rejection, the applicant has the right to appeal to the High Court within 90 days as of the date of receiving the notification of rejection. Accepted applications are published in the Official Gazette and any interested party has the right to appeal to the Controller of opposition within 120 days as of the date of publication in the Official Gazette. In the absence of opposition, the letters patent are issued. A patent is valid for 20 years. The right to a patent may be assigned or licensed. An assignment shall have no effect against third parties unless it has been recorded at the Patent Office and published in the Official Gazette. Working of patents in the Pakistan is an official requirement. If the owner of a patented invention does not satisfy the stipulated working requirements within 4 years from the filing date or 3 years from the grant date of the patent, if the working is stopped for 2 consecutive years, if the use does not cover the demands of the Pakistan, or if the owner refuses to license it under a contract of fair terms, then the patent will be subject to compulsory licensing under the provisions of the law. Importation of products made under the patent is not considered as use.
Although the law does not have any stipulation of novelty except the mention of “new”, the Implementing Regulations require the administration to examine the patent as to its novelty: i.e., the new invention has no precedence in the industrial prior art. The industrial prior art means all that was disclosed to the public anywhere at any time whether by written or oral disclosure or by use or any other method which allows the understanding of the invention. Technical know-how is protected from any unauthorized use, breach or disclosure. Infringement of the rights of a patentee is punishable under the provisions of the law.
Under the Patents Ordinance, four kinds of patents are granted:
An ordinary patent, which is dated as of the official date of the application for the patent.
A Black/Mail box patent relating to chemical products intended for use in agriculture and medicines. The application shall be kept dormant until December 31, 2004.
A patent claiming “priority” which is dated as of the official date of the corresponding application for patent first made in a country which is a member to the WTO.
A patent of addition, for the purpose of improving or modifying an invention for which a patent has already been applied or granted.
A patent is valid for 20 years. Annuities are to be paid starting from the fifth year of the patent term and are paid in advance at the beginning of the year.
The right to a patent may be assigned or licensed. An assignment shall have no effect against third parties unless it has been recorded at the Patent Office and published in the official gazette.
Patent/Utility Model Applications
A power of attorney simply signed on Form -31.
A duly notarized deed of assignment signed by the inventor, if the applicant is not the inventor. (Form 1A is to be signed by the applicant when the true and first inventor is not party to the application.)
An abstract of the invention of no more than 200 words.
Three copies of the specifications and claims.
Three sets of the drawings relating to the invention, if any.
A certified copy of the application giving the filing date, number and country if the application is to be filed with a priority claim.
Note: The applicant has to sign Form 2 for patent applications under the WTO
Assignment Applications
Power of attorney [on Form-31] duly notarized and signed by the applicant in two places marked by X. (from each party separately)
Duly notarized deed of assignment executed by both parties.
The copy of certificate of registration of the mark.
Registered User/License Applications
Power of attorney [on Form-31] duly notarized and signed by the applicant in two places marked by X. (from each party separately)
A duly notarized license agreement executed by both parties.
Change of Name/Address Applications
A power of attorney (on Form-11) in the new name and/or address duly notarized.
A notarized certificate proving the change of name or address issued by the local competent authority of the applicant’s domicile.
The copy of the certificate of registration of the mark.
Design and Industrial Models Registration System
Designs and industrial models are protectable in Pakistan through registration with the competent office. An application for a design registration is examined with respect to compliance with formalities and patentability provided for under the Design Law including novelty and distinctiveness. Designs that are granted registration shall be published and thereby become open to opposition for a period of six months. However, upon the request of the applicant, the publication may be postponed. If opposition by a third party is justified, the design shall not be registered. The registered design shall be protected for ten years as from the filing date. Protection period is subject of renewal.
The renewal application may be filed during the last six months of the tenth year of the protection period. However, a late renewal is possible upon the payment of a fine, within six months from the expiration of the protection period. Registration, assignment, or cancellation of a design or industrial model registration shall be published in the Official Gazette and entered in the register.
Design & Industrial Model Applications
A power of attorney simply signed on Form-31.
A duly notarized deed of assignment signed by the inventor, if the applicant is not the inventor.
Two copies of the model or design if it is two-dimensional or two copies of each view thereof, if it is three-dimensional.
A certified copy of the priority document if it is to be claimed.
Assignment Applications
Power of attorney [on Form-31] duly notarized and signed by the applicant in two places marked by X. (from each party separately)
Duly notarized deed of assignment executed by both parties.
The copy of certificate of registration of the mark.
Registered User/License Applications
Power of attorney [on Form-31] duly notarized and signed by the applicant in two places marked by X. (from each party separately)
A duly notarized license agreement executed by both parties.
Change of Name/Address Applications
A power of attorney (on Form-11) in the new name and/or address duly notarized.
A notarized certificate proving the change of name or address issued by the local competent authority of the applicant’s domicile.
A copy of the certificate of registration of the mark.
Copyright Registration System
Under the Pakistan Copyright Ordinance of 1962 and its amendments of the year 2000, original works of literature, art and science, regardless of type, significance or purpose are protectable. Protection includes works of art expressed in writing, sound, drawings, photography and motion pictures, such as books, speeches, oral work, dramatic works, musical composition, films, phonographic works and applied art. Such works are protected for the lifetime of the author plus 50 years following his/her death. Civil remedies by way of injunction and/ or damages, and criminal remedies by way of fine and imprisonment are available through the courts of Pakistan. Police raids are also permissible.
Copyright Applications
A notarized power of attorney.
Affidavit from the author.
Name, address and nationality of the applicant and author; and if the author is dead, the date of his death.
Nature of the applicant’s interest in the copyright of the work.
Class and description of the work.
Title of the work.
Language of the work.
Whether the work is published or unpublished.
Year and country of first publication and name, address and nationalities of the publishers.
Years and countries of subsequent publishers, if any, and names, addresses and nationalities of the publishers.
Names, addresses and nationalities of the owners of the various rights comprising the copyright in the work and the extent of rights held by each, together with particulars of assignment and licenses, if any.
Name, address and nationalities of the other persons, if any, authorized to assign or license the rights comprising the copyright.
If the work is an artistic work, the location of the original work, including name, address and nationality of the person in possession of the work (In case of an architectural work the year of completion of the work should also, be mentioned).
Statement of Further Particulars
(For Literary, Dramatic, Musical and Artistic works only)
- If the work to be registered, whether the work is:
- An original work;
- A translation of a work in the public domain;
- A translation of a work in which copyright subsists;
- An adaptation of a work in public domain; or
- An adaptation of work in which copyright subsists.
- If the work is a translation or adaptation of a work in which copyright subsists:
- Title of the original work.
- Language of the original work.
- Name, address and nationality of the author of this original work; and if the author is dead, the date of his death.
- Name, address and nationality of the publisher, if any, of the work.
- Particulars of the authorization for a translation or adaptation including the name, address and nationality of the party authorizing.