Basics of intellectual property law, registration, and prosecution process in Pakistan.
Mian Abid Qayyum
Legal Advisor | IP Litigator | Corporate Counsel | Contract Lawyer | WIPO Consultant | Experienced Attorney Who Helps Companies, Startups, Entrepreneurs & E-commerce Owners
WHAT IS A TRADE/SERVICE MARK?
?Generally speaking, a trademark is a mark used to differentiate the goods or services of one business from the goods or services of others.
How can your company protect its trademark(s)?
?In Pakistan protection is available for both the registered and unregistered marks.
?The registered marks are given protection under the Trade Marks Ordinance, 2001, whereas the unregistered marks can seek protection under the common law of “Passing Off”.
The law of “Passing Off” prohibits a business from presenting its products as if they belong to some other business. A registration certificate is proof of your entitlement to exclusive use of the mark. However, in
order to seek protection for an unregistered mark certain facts are required to be proved.
Applicable laws;
Trademark Ordinance, 2001 & Trade Mark Rules, 2004.
REGISTERING A TRADEMARK — STEP-BY-STEP
?The Applicant
?As a first step, the applicant may request for a search of the trademark that he/she intends to register by submitting the TM-55 form to the Trade Marks Registry, along with a fee.
You have to send or hand in a duly completed trademark application on prescribed form TM-1, which includes the contact details of your company, a graphic illustration of its mark, a description of the goods or services and class for which your business wishes to obtain trademark registration, and pay the required fees in form of a bank draft or pay order in favour of DG, IPO Pakistan.
The Trademark Registry:
The steps taken by the Trademark Registry for registration of a trademark in Pakistan are as described below:
Formal examination:
Application number & Acknowledgment Slip:
An application number assigns to every new application along with other particulars about the applicant within 15 to 20 days after filing
Substantive examination:
The trademark office examines the application to verify whether it complies with all the substantive requirements
If there are some objections then an examination report (commonly known as “Show Cause Notice”) is sent to the applicant.
Reply: The applicant files a reply to the objections raised in the examination report.
Hearing:
Publication and opposition: After hearing if the Registrar is convinced then the trademark is accepted for publication in the official Trade Marks Journal within two months for third parties to oppose its registration.
Registration: If there is no opposition or once it has been decided that there are no grounds for refusal, the trademark is registered, and a registration certificate is issued which is valid for 10 years.
Renewal: the mark may be renewed after every ten years
Duration of Registration: normally 1 to 2 years.
Is trademark registration in Pakistan valid internationally?
The legal rights arising out of trademark registration are normally limited to the territory to which they pertain; so, ordinarily, valid registration of a trademark in Pakistan gives you rights only within Pakistan.
REGISTRATION OF A MARK OUTSIDE PAKISTAN/INTERNATIONAL REGISTRATION PROCESS:
There are three ways to register a mark/name outside Pakistan.
The Madrid Protocol (Protocol), an international treaty 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 the World Intellectual Property Organization (WIPO). Pakistan has joined the Madrid Protocol on 24th February 2021 and ratified it on 24th May 2021. It means that Trademark applications under the Madrid Protocol are being received by Pakistan from 24th May 2021.
ADVANTAGES OF REGISTERING A TRADEMARK/BRAND NAME
1.???Exclusive Rights:?
The owner of the Registered Trademark enjoys exclusive rights over the trademark.
2.???Builds trust and Goodwill:?
The established quality of your product and services are known by everyone through the trademark which establishes trust and goodwill among the customers in the market.
3.???Differentiates Product:?
The logo can communicate the vision, quality, or unique characteristics of your company and any organisation.
4.???Recognition of product’s Quality:?
It gives recognition to the quality of the product. Customers attach the product’s quality with the brand name and this image is created in the market about the quality of a particular brand.
5.???Creation of Asset:?
Registration of Trademark?creates an intangible asset i.e. Intellectual Property for an organisation.
6.???Use of ? symbol:?
Once the trademark is registered you can use the ? symbol on your logo stating that it is a registered trademark.
7.???Protection against infringement:?
No competitor or other person can use the wordmark or logo registered by you under the trademark.
8.???Protection for 10 Years at low cost:?
Once you register the trademark you have to just pay the maintenance cost and renewal cost which is after 10 years.
9.???Global Trademark Registration:?
If one wants to register the trademark in countries other than Pakistan, the trademark registered in Pakistan can be used as the basis of registration there.
10. Attract Human Resources:
Young minds aspire to join big Brands as it acts as a magnet. It inspires a positive image of the organisation and thus candidates are attracted towards them easily. This reduces the cost of hiring and related activities.
WHAT IS COPYRIGHT?
In Pakistan copyrights are regulated by the law called the Copyright Ordinance, 1962 (as amended in 2000), (the Ordinance), and the Copyright Rules, 1967 (as amended in 2000), (the Rules). As per the Ordinance, Copyright means;
'the exclusive rights of authors, composers, computer programmers, website designers and other creators for their literary, artistic, dramatic and other types of creations, which are usually referred to as works'.
Copyright law also provides “Author's special rights,” which protect an author's honour and reputation. These rights are commonly known as “moral rights”. “Related rights” refer to the category of rights granted to performers, phonogram producers and broadcasters.
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How are copyright and related rights relevant to your Business?
Copyright protects the literary, artistic, dramatic or other creative elements of a product or service, whereby the copyright holder can prevent those original elements from being used by others. Copyright and related rights enable a business to
Infringement Proceedings:
Copyright law enables right holders to take legal action against anyone encroaching on the exclusive rights of the copyright holder (called infringers in legal jargon) for obtaining monetary relief, destruction of infringing works, and recovery of attorney’s fees. Under the Copyright Ordinance, even criminal penalties may be imposed on willful copyright violators. These penalties include imprisonment which may extend to three years or a fine which may extend to one hundred thousand rupees or both.
In Pakistan, copyrights are obtained automatically without registration or other formalities. The rights under copyright law arise as soon as the author creates the work in any tangible medium. The Copyright Ordinance does not require mandatory registration of copyright but registration, among other things, acts as an apparent proof that the work has been created by the person who has registered it and is therefore highly recommended.
What categories or types of works are protected by copyright?
The categories or types of works protected in Pakistan include the following:
Literary work: which includes works on humanity, religion, social and physical sciences, tables, compilations, and computer programs, that is to say, programs recorded on any disc, tape, or storage device, which, if fed into or located in a computer or computer-based equipment is capable of reproducing any information;
Musical work: which means any combination of melody and harmony or either of them, printed, reduced to writing or otherwise graphically produced or reproduced;
Dramatic work: which includes any piece for recitation, choreographic work or entertainment in a dumb show, the scenic arrangement or acting form of which is fixed in writing or otherwise but does not include a cinematographic work; Artistic works: means a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possess artistic quality; an architectural work of art
Cinematographic work: which means any sequence of visual images including video films of every kind, recorded on material of any description, whether silent or accompanied by sound, which, if shown (played back, exhibited) conveys the sensation of motion; Record: which means any disc, tape, wire, perforated roll or other device in which sounds are embodied to be capable of being reproduced therefrom. The record does not include a soundtrack associated with a cinematographic work
What do you have to do to obtain copyright or related rights protection?
?Copyright and related rights protection is granted without any official procedure. A work is automatically protected as soon as it exists, without any special registration, deposit, payment of a fee, or any other formal requirement.
How do you prove that you are the owner of the copyright?
The best option is to get your work registered with the Copyright Office for a fee. Doing so provides evidence of the existence of a valid claim to copyright protection. You can more effectively pursue a lawsuit for copyright infringement if you have registered the work at the Copyright Office. Prior optional registration is, therefore, strongly advisable.
Procedure for CR Registration:
The author or publisher of, or the owner or any other person interested in the copyright in, any work may make an application in triplicate in the prescribed form II to the Registrar of Copyrights. This application must be accompanied by a copy of the work and the prescribed fee of Rs. 500..If no objections to such registration are received by the Registrar within 30 days of the receipt of the application, he shall register the copyright if he is satisfied with the correctness of the particulars given in the application.
?If objections are received by the Registrar within 30 days of the receipt of the application, or, if he is not satisfied with the correctness of the particulars given in the application, he may hold such inquiry as he may deem fit and then register the copyright.
?There is no timeline for applying for registration of copyright, however, it is advisable to apply as soon as possible. The registration procedure generally does not take long and is completed within 4 to 8 weeks.
In the case of artistic works, after applying, the applicant will advertise the work in a newspaper and send two copies of the same to the Registrar. If the Registrar does not receive any objections then the particulars of the work are entered in the Register of Copyrights and a certificate of registration is issued to the applicant.
INDUSTRIAL/PRODUCT DESIGNS:
In everyday language, an industrial design ' generally refers to a product's overall form and function. For example, a sofa is commonly said to have a “good industrial design when it is comfortable to sit in and we like the way it looks however, an industrial design refers only to the ornamental or aesthetic aspects of a product
?Applicable laws:
In Pakistan, registration and protection of industrial design is regulated by the law called “the Registered Designs Ordinance, 2000” (the Ordinance).
General Rule:
As a general rule, an industrial design consists of three-dimensional features, such as the shape of a product, e.g. the cylindrical shape of the cooler two-dimensional features, such as ornamentation, patterns, lines, or colour of a product; e.g. the pattern of the print lawn or a combination of one or more such features.
Need to protect industrial designs;
By protecting an industrial design through its registration at the Patent Office, the owner obtains the exclusive right to prevent its unauthorized copying or imitation by others
How do you obtain protection for industrial designs?
In Pakistan, an industrial design must be registered under the Registered Designs Ordinance, 2000, to be protected. To register an industrial design, you must file an application on the prescribed form at the Patent Office. Here we focus mainly on registered industrial designs, it is important to point out that, in Pakistan, there are alternative ways of protecting industrial designs; the same is as under:
A limited protection of a design can be availed under the law called “Copyright Ordinance, 1962”.
Essential Element For Registration??
?How do you register a design?
?To register a design in Pakistan you must generally take the following steps
?Fill in the prescribed application form i.e., Form 15??including your name, contact details and specimen of design, drawings, and/or photographs of the design(s) in question (standard formats have been specified in the law).
?You will also be required to pay the filing fee of Rs. 450/- for one design application. You may apply yourself or may choose to employ an IP agent to assist you in filing the application and completing the registration process. In that latter case, you will also have to file a power of attorney in favour of your agent.
?The Patent Office registers the design after undertaking a substantive examination to check the existing designs for novelty and/or originality. Once a design is registered, it is entered into the register of designs and a design registration certificate is issued.
How long does it take to register a design?
?The process of registration of an industrial design generally takes 8 to 12 months or longer depending on the time taken by the applicant to respond to objections raised by the design examiner. The applicant gets up to 7 months in aggregate (after obtaining extensions) to respond to official objections.
How important is it to keep the design confidential before registration?
If you wish to protect your industrial design through a registration system, keeping the design confidential is crucial. The reason is that the fundamental requirement for design protection is generally, that the design must be “new”.
What is the “grace period”?
A grace period is an exception to the confidentiality requirement for the registration of a design. If you wish to protect your industrial design through a registration system, keeping the design confidential is crucial
How long does industrial design protection last?
In Pakistan, the original term of protection for a registered industrial design is ten years.
What are the differences between copyright protection and industrial design protection for designs?
In Pakistan, the applicable law recognizes copyright protection for designs. However, the copyright protection is only extended to the designs that do not qualify to be registered under the designs law. The designs that qualify to be registered under relevant designs law are granted limited protection.
Drafted & Compiled by;
Mian Abid Qayyum
Attorney-at-Law.
For
MAQ & Associates
13-SAF Centre, Fane Road, Lahore
www.maqandassociates.com