Trademark Registration in Pakistan: Process, Classes and Protection

A brand name is often one of the most valuable things a business owns, yet many businesses in Pakistan trade for years without registering it. Then a competitor, a former partner or a distributor files first, and an expensive dispute follows. This guide explains how trademark registration in Pakistan works, how to choose a mark that can be registered, and how a registered mark is protected.

What a trademark is and why register it

A trademark is a sign that distinguishes the goods or services of one business from those of others. It can be a word, a name, a logo, a slogan, a combination of colours or other signs capable of graphical representation.

Registration gives the owner the exclusive right to use the mark for the registered goods or services, and makes it easier to stop others using an identical or confusingly similar mark. It also turns the brand into an asset that can be licensed, assigned or used as security.

The law and the Registry

Trademarks in Pakistan are governed by the Trade Marks Ordinance, 2001 and the Trade Marks Rules, 2004. Applications are handled by the Trade Marks Registry in Karachi, part of the Intellectual Property Organization of Pakistan (IPO-Pakistan), established under the Intellectual Property Organization of Pakistan Act, 2012. Applications can be filed through IPO-Pakistan's online system.

Choosing a mark that can be registered

Not every name can be registered. The Ordinance sets out grounds on which registration can be refused. In broad terms, they fall into two groups.

Absolute grounds concern the mark itself. Marks that are devoid of distinctive character, that only describe the goods or services (for example their kind, quality or origin), or that have become customary in the trade are likely to face objection, unless they have acquired distinctiveness through use. Deceptive marks and marks contrary to law can also be refused.

Relative grounds concern earlier rights. A mark that is identical or similar to an earlier mark for identical or similar goods or services, where there is a likelihood of confusion, can be refused or opposed.

In practice, invented or arbitrary words are the easiest to register and enforce. Purely descriptive names, such as a common word for the product, are the hardest.

The registration process step by step

1. Search. Search the Registry's records for identical and similar marks before filing. A search does not guarantee registration, but it reveals obvious conflicts and can save the cost of a refused application.
2. Choose the classes. Goods and services are grouped into the 45 classes of the international (Nice) classification. A separate application, or a separate class, is needed for each category of goods or services you want covered. Choose classes that match your current business and planned expansion.
3. File the application. The application, on the prescribed form, identifies the applicant, the mark, the class and the specification of goods or services, and whether the mark is already in use and since when.
4. Examination. The Registry examines the application against the absolute and relative grounds. If it raises objections, the applicant can respond in writing or ask for a hearing.
5. Acceptance and advertisement. If accepted, the mark is advertised in the Trade Marks Journal.
6. Opposition. Any person may oppose the application within the period allowed after advertisement. If an opposition is filed, both sides file their statements and evidence before the Registrar decides.
7. Registration. If there is no opposition, or it fails, the mark is registered and a certificate is issued.

The overall time varies with the Registry's workload and whether objections or oppositions arise, so it is not possible to promise a fixed timeline.

After registration: renewal, use and the ® symbol

• Validity. A registered mark is valid for ten years and can be renewed for further ten-year periods. Diarise the renewal date.
• Use. A registered mark that is not used for a continuous period set by the Ordinance can be challenged and removed for non-use. Use the mark as registered and keep evidence of use, such as invoices and advertising.
• The ® symbol. Use ® only after registration. Before that, "TM" may be used to show that you claim the mark.
• Changes. Assignments, licences and changes of name or address should be recorded with the Registry.

Enforcing your trademark

Where someone uses an identical or confusingly similar mark, the usual first step is a written notice requiring them to stop. If that fails, civil proceedings for infringement can be brought. Suits concerning intellectual property rights are heard by the Intellectual Property Tribunals set up under the IPO-Pakistan Act, 2012. Remedies can include an injunction, damages or an account of profits, and delivery up of infringing goods. Interim relief can be sought in urgent cases; our guide on stay orders in Pakistan explains the general tests courts apply to interim injunctions.

An unregistered mark can still be protected through a passing off action, but the owner must prove goodwill and misrepresentation, which is usually harder than relying on a registration.

Foreign applicants and international protection

Pakistan is a member of the Paris Convention. An applicant who has filed in another member country can generally claim priority from that earlier filing if the Pakistani application is made within six months.

The Trade Marks Registry is also Pakistan's office for international applications under the Madrid System, which lets an owner seek protection in several member countries through a single international application based on a Pakistani application or registration. Businesses planning to export or franchise should consider this early.

Registration is also part of setting up a business properly; see our guide on company registration and SECP filings, and note that a company name approved by SECP is not the same as a registered trademark. The firm handles searches, filings, oppositions and enforcement through its intellectual property practice, and commercial agreements such as licences through its corporate and commercial work.

Disclaimer: This article is general information about the law in Pakistan as at the date shown. It is not legal advice and does not create a lawyer-client relationship. Laws, fees and procedures change; please take advice on your own facts before acting.