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.
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.
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.