Pakistan

Text Box: Trade Mark Filling Requirement A Power of Attorney [on Form TM-48] duly notarized and signed by the applicant in two places marked by X. Transliteration and translation of the non-English words 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. The nature of business of the applicant, e.g. manufacturers, merchants, etc. The name, address and nationality/domicile of the applicant. Specification of the goods on which the mark is applied. Twelve specimens of the mark, (not needed for word marks). A certified copy of the application giving the filing date, number and country, if the application is to be filed with a priority claim. Renewal of Trademark/Service Mark Registrations
1. A Power of Attorney [on Form TM-48] duly notarized and signed by the applicant in two places marked by X.
2. A copy of the Registration Certificate.

Search 1. Prints of the mark, (not needed for word marks).
2. Classes or goods to be searched. Recording an Assignment 1. A Power of Attorney [on Form TM-48] duly notarized and signed by the applicant in two places marked by X, (from each party separately).
2. A duly notarized deed of assignment executed by both parties.
3. A copy of the certificate of the trademark registration.

Recording a License Agreement 1. A Power of Attorney (form-48) notarized.
2. License agreement document notarized or legalized up to the Pakistani Consulate.
3. Trademark registration number and class. Recording a Merger 1. A Power of Attorney (form-48) notarized.
2. Merger document notarized or legalized up to the Pakistani Consulate.
3. Trademark registration number and class.
Recording Change of Name 1. A Power of Attorney (on Form-48) in the new name and/or address duly notarized.
2. A notarized certificate proving the change of name or address issued by the local competent authority of the applicant's domicile.
3. A copy of the certificate of the mark registration.
Recording Change of Address 1. A Power of Attorney (on Form-48) in the new name and/or address duly notarized.
2. A notarized certificate proving the change of name or address issued by the local competent authority of the applicant's domicile.
3. A copy of the certificate of the trademark registration.
Obtaining a Certified Copy of Registration A Power of Attorney (on Form-48) duly notarized and signed by the applicant. Trademark registration number and class. FAQ T1: How long does it take to conduct a trademark search?
5 -7 working days. T2: Does Pakistan use the international classification?
Yes. T3: Are there any goods or services for which the mark cannot be registered?
No.
T4: Does the specification of goods in any class limit the protection to the specified goods, or does it give additional protection to all the goods in the class?
Specification of the goods must be provided. All goods in a class cannot be covered in general.
T5: Can a trademark be registered in the name of more than one applicant (i.e. joint application)? If so, what are its requirements?
Yes. A power of attorney executed by all the applicants. T6: Can an application be filed without its complete documents?
No. T7: Can one application cover more than one class of goods/services?
No. T8: May priority be claimed under the Convention Countries?
Yes. T9: What is the term of protection of a trademark? From what date is it calculated?
Ten years from the filing date. T10: Is marking mandatory?
No. T11: In case a trademark is not renewed in due time, and another company register the same trademark, can the original owner oppose the registration?
Yes. T12: If the trademark was originally filed incorrectly, what documentation would be required to amend the official register to show the correct details?
Amendment application. T13: Is use required before registration or for maintaining the registration in force?
No. Application can be filed with "Proposed to be used". T14: Is use of the trademark on one item sufficient to maintain the protection for all the goods covered by the registration?
Yes. T15: What are the types of use required?
Exhibitions, sale, publication materials, LCs, bills of lading, TV Advertisements ? etc. T16: Can the assignment of an application be recorded?
Yes.
T17: Is recording a license agreement mandatory?
It is necessary in order to have effect against third parties. T18: Can recorders such as change of name, address, merger, assignment, license, etc., be made against pending applications?
Yes.
T19: Can an assignment be made with or without the goodwill? What monetary consideration is to be mentioned as the value of the assignment? Is there any tax based on the value mentioned?
Yes, nominal value at least $10.00 (only), Yes. T20: Can the trademark application be opposed and what is the opposition period?
Yes; 60 days from the date of publication. Summary Pakistan is a member of the Paris Convention for the Protection of Industrial Property. The International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (classes 1-34) and service mark classification (classes 35- 45) is applied in Pakistan. 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 service marks, convention applications, priority rights and domain names have been included. A trademark application filed in Pakistan is examined to determine its registrability. When a trademark is accepted by the Registrar, it is published in the Trademarks Journal. Any interested party may file a notice of opposition to the registration of a trademark within 2 months from the date of publication or within the period set by the Registrar, not exceeding 2 months in aggregate. The initial registration of the trademark is valid for a period of 7 years in respect of applications filed prior to April 12, 2004, renewable for a period of 15 years from the date of the expiration of the original registration, or from the last renewal of registration, as the case may be. The initial registration of a trademark filed after April 12, 2004 is valid for 10 years and renewable for a period of 10 years.

The fees for renewing a trademark registration can be paid at any time during the last 6 months prior to the expiration of the latest registration. However, upon payment of an additional fee, a late renewal is possible during a grace period of 4 months starting from the date of publication of the registration in the Trademarks Journal under the heading "Unpaid Renewal Fee." The assignment of a registered trademark with or without the goodwill of the 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. However, for maintaining the registration in effect, evidence of use is required to be filed at the time of second renewal. However, a concerned party may request the Registrar or the High Court to remove a trademark from the register, if it has not been used for 5 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 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.

Pakistan IP Procedures & Requirements

Trade Mark

Patent

Filing Requirements

1. A Power of Attorney simply signed on Form P-28.
2. Name, address and nationality of the applicant.
3. An abstract of the invention of no more than 200 words.
4. Three copies of the specifications and claims.
5. Three sets of the drawings relating to the invention, if any.
6. A certified copy of the application giving the filing date, number and country, if the application is to be filed with a priority claim.

Search
1. Title of the invention, (filing number and filing date, if any).
2. Years to be searched.

Annuity
1. Title of the invention.
2. Filing number and filing date.
Recording an Assignment
1. A Power of Attorney simply signed on Form P-28.
2. A duly notarized deed of assignment executed by both parties.

Obtaining a Copy of the Patent Document

1. Title of the invention.
2. Filing number and filing date.

Change of Name
1. A Power of Attorney simply signed on Form P-28.
2. A notarized certificate proving the change of name or address issued by the local competent authority of the applicant's domicile.

Change of Address
1. A Power of Attorney simply signed on Form P-28.
2. A notarized certificate proving the change of name or address issued by the local competent authority of the applicant's domicile.

FAQ

P1: Can a patent search be conducted?
Yes.

P2: Can a patent application be filed without its complete documents?
Yes, without forms, Power of Attorney and certified copies of priority documents.
P3: Can convention priority be claimed? Convention Countries?
Yes.

P4: Can a registration be obtained for pharmaceutical products?
yes

P5: What is the term of protection of a patent and from which date is it calculated?
Twenty years starting from the priority/first filing date.
P6: Is a secret form of filing a model/design permitted?
Yes.

P7: Is there a novelty requirement? Is it local or worldwide?
Yes, worldwide.

P8: Is the patent protection available for software alone, or must the software be coupled with computer hardware in order to permit patent application?
Yes, alone.

P9: Can the specifications or claims be amended?
Yes.

P10: Could annuity payments be made before the granting of the patent?
Yes.

P11: In what language should specifications and claims of the patent be filed?
English only.

P12: Is working of the invention required to keep protection in force?
Yes.

P13: What are the conditions that might lead to a compulsory license?
Compulsory license is possible if a patent is neither effectively used in Pakistan nor offered for license.

P14: Must assignments be recorded within a certain period?
No.

P15: Does the Patent Law provide for licenses or registered users?
Yes.

P16: Does the Patent Office publish the patent applications?
Yes.

Summary

Effective January 1, 2005, Pakistan has entered into the product per se patent protection regime in the field of pharmaceutics and agriculture. With the new regime, the ?Black Box? application era has ended up. The old system of UNIFORM filing is now restored. There is, however, no development as to when Pakistan is going to sign the Patent Cooperation Treaty (PCT).

Once an application for the grant of a patent is filed, it is examined with respect to compliance with the 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 is issued.

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 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 Pakistan, or if the owner refuses to license it under a contract of fair terms, 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 of 2000, four kinds of patents are granted:

1. An ordinary patent which is dated as of the official date of the application for the patent.

2. A patent relating to chemical products intended for use in agriculture and medicines.

3. 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 of the WTO.

4. 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 fourth 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.

Domain Name

Filing Requirements

1. An application form which can be submitted by mail, email or fax.

2. A registration certificate of the trademark, if used in the domain name. (If not available, this registration can be provided by our company upon your request).

Note: Regarding the files required in original form, you must send scanned copies of the documents by email for confirmation before sending them by mail.

Summary-Second-Level Domains

.com.pk:  general business or individuals
.net.pk:   network related business
.edu.pk:   educational institutes
.org.pk:   non-profit organizations
.fam.pk:   family and individuals
.biz.pk:   general business, promotional
.web.pk: websites
.gov.pk:   the government of Pakistan
.info.pk:   informational websites

Copy Rights

Filing Requirements

1. A notarized Power of Attorney.

2. Affidavit from the author.

3. Name, address and nationality of the applicant and author. If the author is dead, the date of his death.

4. Nature of the applicant's interest in the copyright of the work.

5. Class and description of the work.

6. Title of the work.

7. Language of the work.

8. Whether the work is published or unpublished.

9. Year and country of first publication and name, address and nationalities of the publishers.

10. Years and countries of subsequent publishers, if any, and names, addresses and nationalities of the publishers.

11. 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 the particulars of assignment and licenses, if any.

12. Name, address and nationalities of the other persons, if any, authorized to assign or license the rights comprising the copyright.

13. 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 the work completion should also be mentioned).

Statement of further particulars

(For literary, dramatic, musical and artistic works only)

Whether the work to be registered 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 a 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; 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.

FAQ

C1: Is copyright protected in your country?
Yes, Law No. 5846 in 1951.

C2: what types of items copyright law in your country protects?
The following Intellectual Works:
(a) Software, CD, & Cassettes
(b) Translation
(c) Original, literary, dramatic, musical and artistic works;
(d) Cinematographic works; and
(e) Records

C3: What is the length of protection of a copyright in your country?
Life of the author + 70 years for inheritors.

C4: How long does a copyright take to be registered?
No registrations.

C5: What kind of sanctions does your copyright law provide against infringers?
Imprisonment that may extend 2-4 years and a fine $35,000- $110,000.

C6: Are there any limitations of copyright in your jurisdictions?
No provisions.

C7: Must transfer agreements be recorded?
No registrations.

C8: Must license agreements be recorded?
No registrations.

C9: Are there any consequences of non-recordable of agreements?
No registrations.

Summary

Under Pakistan's Copyright Ordinance of 1962 and its amendments of 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 works, 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.

Pakistan is a member of the Berne Convention for the Protection of Literary and Artistic Works and the Universal Copyright Convention.