Trademark registration in Pakistan: the IPO-Pakistan process, stage by stage

Registering a trade mark with the Intellectual Property Organisation of Pakistan (IPO-Pakistan) is a staged process. Each stage has its own requirements and, in some cases, statutory time limits. This guide walks through the process step by step under the Trade Marks Ordinance, 2001 and the Trade Marks Rules made under it. It is a companion to our shorter article on why registration matters. That article covers the reasons to register. This one covers how the process works.

The legal framework

Trade marks in Pakistan are governed by the Trade Marks Ordinance, 2001 (the Ordinance) and the Trade Marks Rules, 2004, as amended from time to time. Applications are handled by the Trade Marks Registry, which operates under IPO-Pakistan. The Ordinance has since been amended, including by the Trade Marks (Amendment) Act, 2023, which, according to published reports, added provisions on international registrations under the Madrid Protocol. The current consolidated text should be checked before relying on any particular section.

Registration is not the only source of protection. The Ordinance expressly preserves the right to bring an action for passing off (section 46(3)). It also gives protection to marks that are well known in Pakistan (section 86). Even so, a registered mark carries the exclusive rights set out in section 39, and those rights are generally the clearest to enforce.

Stage 1: Clearance search

The law does not require a search, but one is strongly advisable before filing. A search looks for identical or similar marks that have already been filed or registered for the same or related goods or services. An earlier conflicting mark can lead to an objection from the Registry or an opposition from its owner. A search is not a guarantee that no conflict exists. It does, however, reduce the risk of investing in a brand you later cannot protect.

Stage 2: Choosing classes

Under section 12 of the Ordinance, goods and services are registered according to the international classification. In practice, that means the Nice Classification, which groups goods into 34 classes and services into 11. Your specification should describe what you actually sell, or genuinely intend to sell, under the mark. If it is too narrow, it may not cover your business. If it is too broad, it may draw objections or leave the registration open to challenge for non-use later. Depending on the filing route and current Registry practice, a business active in several areas may need to file in several classes.

Stage 3: Filing the application

Under section 22, an application is made in writing to the Registrar in the prescribed manner, using the forms set out in the Rules. IPO-Pakistan introduced online filing in 2023, and applications may now be filed electronically. An application generally identifies:

• the applicant (an individual, firm or company) and its address;
• a clear representation of the mark;
• the class or classes, and the goods or services covered; and
• whether the mark is already in use, or is proposed to be used.

Under section 23, the filing date is the date on which documents containing the required particulars reach the Registrar. This date matters a great deal: under section 33(3), a mark is registered as of its filing date once it proceeds to registration.

Convention priority. If you have already applied for the same mark in a Paris Convention country, section 25 lets you claim that earlier date in Pakistan. The Pakistani application must be filed within six months of the first application.

Stage 4: Examination

Under section 27, the Registrar examines whether the application meets the requirements of the Ordinance. The examiner considers whether the mark is distinctive enough and not merely descriptive. The examiner also checks whether it conflicts with earlier marks. If there is an objection, the applicant is normally told and may respond in writing, ask for a hearing, or amend the application, for example by narrowing the specification. If the objection is not overcome, the application can be refused.

Stage 5: Acceptance and advertisement in the Trade Marks Journal

Once an application is accepted, section 28(1) requires it to be advertised in the Trade Marks Journal. Advertisement puts the public on notice and starts the opposition period.

Stage 6: Opposition

Under section 28(2), any person may file a notice of opposition within two months of the date of advertisement. The Registrar may allow further time, up to two months in total. If an opposition is filed, the applicant has one month from receiving the notice to file a counter-statement. This period too may be extended, up to two months in total (section 28(4)). If no counter-statement is filed in time, the application may be treated as abandoned. If the opposition goes ahead, both sides normally file evidence, and the Registrar decides the matter after hearing them. Oppositions can add many months to the process, so any notice should be dealt with promptly.

Stage 7: Registration

If no opposition is filed, or an opposition is decided in the applicant's favour, section 33 provides that the Registrar shall register the mark, subject to the prescribed requirements. A certificate of registration is then issued. As noted above, the registration takes effect from the filing date.

Taken as a whole, the process from filing to registration usually takes many months and often longer. It depends on Registry workload, objections and any opposition.

Stage 8: Renewal and keeping the registration alive

Under section 34, a mark is registered for ten years from the date of registration. Under section 35, it may be renewed at the proprietor's request for further periods. If renewal is missed, the Ordinance allows a further period of at least six months, as prescribed, for late renewal on payment of an additional fee. After that, the registration may be removed.

Use matters as well. Under section 73, a registration may be revoked if the mark has not been put to genuine use in Pakistan within five years after the registration procedure is completed, or if such use has been suspended for an uninterrupted period of five years, unless there are proper reasons for non-use.

Changes of ownership should also be recorded. Assignments must be in writing. Under section 70, an unregistered transaction may be ineffective against a person who later acquires a conflicting interest without knowing about it.

International filings: the Madrid Protocol

Pakistan deposited its instrument of accession to the Madrid Protocol with WIPO on 24 February 2021. The Protocol entered into force for Pakistan on 24 May 2021. The Madrid System lets an applicant file one international application, through the trade mark office of its home member, that designates other member countries. Pakistani businesses can therefore seek protection abroad through IPO-Pakistan. Foreign owners can also designate Pakistan in their international registrations. The procedural provisions for this were added to the Ordinance by the 2023 amendment. An international registration designating Pakistan is still examined under Pakistani law and may be refused in Pakistan on the same grounds as a national application.

Frequently asked questions

Do I have to register my trade mark in Pakistan?

No. Registration is not compulsory. However, it gives you the exclusive rights set out in the Ordinance and makes enforcement much simpler. Without registration, you would generally need to rely on passing off or, for well-known marks, on section 86. Both require more evidence.

How long can someone oppose my application?

A notice of opposition may be filed within two months of the date your application is advertised in the Trade Marks Journal. The Registrar may allow up to two further months in total (section 28(2)).

From when is my mark protected?

Once registered, a mark is treated as registered from its filing date (section 33(3)). Until registration is granted, however, you cannot bring an infringement action based on the application alone.

Can I use my Pakistani application to protect the mark abroad?

Yes, through the Madrid System, which has applied to Pakistan since May 2021. A Pakistani application or registration can serve as the basis for an international application designating other Madrid members. Each designated country examines the mark under its own law.

Sources

• Trade Marks Ordinance, 2001 (text hosted by the Federal Board of Revenue)
• WIPO Lex: Trade Marks Ordinance, 2001 (Pakistan)
• WIPO Lex: Trade Marks Rules, 2004 (Pakistan)
• WIPO: The Islamic Republic of Pakistan Joins the Madrid System (2021)
• Intellectual Property Organisation of Pakistan
• PITB: IPO-Pakistan and PITB introduce online trademark filing system (2023)
• Asia IP: Trade Marks (Amendment) Act, 2023 receives assent (press, corroborative)

This guide is general information only and is not legal advice. It reflects our understanding of the Trade Marks Ordinance, 2001 and related materials at the time of writing. The law, rules and Registry practice may change. Please take advice on your specific situation.