A Trademark is a word, phrase, symbol, and/or design (logo) that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and / or design that identifies and distinguishes the source of a service rather than goods. In Pakistan, Trade Marks Registry (TMR) is premier body of Intellectual Property Organization of Pakistan (IPO-Pakistan) working for the registration of trade and services marks under the Trademarks Ordinance, 2001. In addition to its traditional role of registering trademarks, it has started awareness to persuading entrepreneurs to seek protection of their trade and services marks so that they could establish their business on fair practices.

Documents required for Trademark registration:

• Logo of the brand name
• Scanned copy of CNIC of owner
• Prescribed application form
• Power of Attorney on Stamp paper
• Class of Trademark (Goods or Services)
• Year of use

Procedure of Filing Trademark Application

Request for Search Facility (Optional)

It is advisable that a search may be made to the Registrar of Trademarks to check whether there are any identical or similar marks present on the Register. Search request can be filed on a prescribed form.

Check list for Filing a Search Application

• One Search prescribed Application Form would be applicable for one trademark search in any one class only.
• Search Form should be accompanied with two representations of the mark (each representation should be mounted on a sheet of strong paper)
• Search prescribed fee (in PKR) should be submitted in the form of Pay order/ Bank draft made in the name of Director General IPO Pakistan.

Personal Search Facility for quick information is available at Trade Marks Registry, Karachi, IPO-HQs, Islamabad and IPO-Regional Office, Lahore on receipt of prescribed fee bank draft (in PKR) for 15 minutes per client.

After the search of the Register, an application may be made in writing to the Registrar of Trademarks for registration of a trademark on prescribed form.

Check List to fill prescribed Form for Applying Registration of Trademarks

• An application to register a trademark shall be made on prescribed form
• The prescribed form in duplicate along with six additional representations affixed on a durable paper of 13×8 inch should be filed.
• Application should be made for specification of goods or services in any one class i.e., separate applications for separate classes.
• Please see Schedule IV of Trade Marks Rules, 2004, for classification of goods and services.
• Insert Full name, Description and Nationality of the applicant.
• In the case of a firm, the full name and nationality of every partner should be stated.
• Add the full trade or business address of the applicant. The address given should be as full as possible for the purpose of easy location of the place.
• If the mark is in the form, of series, then indicate the number of series.
• Indicate domain name is in respect of goods or services.
• If the mark is in color, then color may be claimed. In this case, the applicant shall have right to use only the claimed colors in his/her mark.
• If no color is claimed, mark may be used in any color.
• Signature of applicant is required with his/her designation. If the mark is owned by an individual, he must sign it. · If owned by a partnership firm, by the managing partner, · If the applicant is a limited company, by the managing director or Director.
• Where the application is being filed through an attorney, a power of attorney on prescribed form, duly stamped, must accompany this application.
• If the applicant is foreign national, he should file application through their duly authorized attorney or advocate in Pakistan.
• If the mark is in a language other than English or Urdu, it’s translation and transliteration in the form of an affidavit from the applicant must accompany this application. 

Process of Registration

• Cash receipt and trademark number is allotted to the applicant when the application is received;
• The Acknowledgement Receipt by the Trade Marks Registry is issued to the applicant within 10-15 days of filing an application;
• Examination Report is generated after 3 months of filing an application. If there are any objections on the applied trademark, they are communicated to the applicant immediately in the form of a Show Cause Notice. The applicant is required to submit a reply within two months from the date of issuance of a Show Cause Notice;
• If there are no objections, application will be published in the Trade Marks Journal.
• If no oppositions are filed to the published application within two months from date of publication of the Trade Marks Journal, the application stands accepted and Demand Notice is issued to the applicant requesting him/her to submit prescribed form along with registration fee (in PKR) from scheduled bank in form of a pay order/ bank draft in the name of Director General IPO-Pakistan for issuance of the Registration Certificate; and
• On the receipt of registration fee, the Registration Certificate is issued by the Registrar of Trademarks.

Copyright is a legal instrument that provides the creator of a work of art or literature, or a work that conveys information or ideas, the right to control how the work is used. The intent of copyright is to advance the progress of knowledge by giving an author of a work an economic incentive to create new works.

Copyright includes the following creative works:

• Literary works which includes Books, Magazines, Journals, Lectures, Dramas, Novels, Computer programs/Software and compilation of data etc.
• Artistic works like paintings, Maps, photographs, drawings, Charts, Calligraphy, Sculptures, Architectural Works, Label Designs, Logos, Monograms and other works alike.
• Cinematographic works which includes movies, audio-visual works, documentaries etc.; and
• Record works which include sound recordings, musical works etc.

Following documents required for the registration of Copyright:

For an Artistic Work

• 03 copies of prescribed application form.
• Registration Fee in the form of Demand Draft/Pay Order in the name of Director General IPO-Pakistan.
• Prescribed Fee (in Pak Rupees) for Artistic work (paintings, photographs, sculptures, drawings, architectural works etc.)
• Prescribed Fee (in Pak Rupees) for Artistic work used or capable to be used or associated with goods and services. (Used as a Trade Marks)
• 03 copies of Artistic Work.
• NOC/Affidavit for transfer of copyright from Artist/Creator (sample will be provided).
• Undertaking/Affidavit for original creativity of the work (sample will be provided).
• Two original Newspapers in which the Artistic Work is advertised (sample will be provided).
• Trade Mark number of the Artistic work if it used as a Trade Mark.
• Vakalatnama if applied through attorney.
• Any other requirement by this office as per nature of the case.

For Literary Works

• 03 copies of prescribed application form.
• Registration Fee in the form of Demand Draft / Pay-Order in the name of Director General IPO-Pakistan
• Prescribed Fee (in Pak Rupees) for Literary work other than computer program/software.
• Prescribed Fee (in Pak Rupees) for Computer program/software
• 02 copies of Literary Work
• Undertaking/Affidavit for original creativity of the work (sample will be provided).
• NOC / Assignment of copyright from the copyright owner / writer of the work in favor of applicant if any.
• Any other requirement by this office as per nature of the case.

For Cinematographic Work

• 03 copies of prescribed application form.
• Registration Fee in the form of Demand Draft / Pay-Order in the name of Director General IPO-Pakistan
• Prescribed Fee (in Pak Rupees) for (Movies, Dramatic works and other feature films, animated movies and games, etc.
• 02 copies of Cinematographic Work in the form of Video VCD/DVD / CD/ USB.
• Undertaking/Affidavit for original creativity of the work (As per sample below).
• NOC for assignment of copyright from the all contributors (performers / singer / lyric writer / musician etc.) of the work.
• Any other requirement by this office as per nature of the case.

For Record work

• 03 copies of prescribed application form
• Registration Fee in the form of Demand Draft / Pay-Order in the name of Director General IPO-Pakistan
• Prescribed Fee (in Pak Rupees) for (Music, sounds, songs, etc.) [per song/sound]
• Prescribed Fee (in Pak Rupees) for Musical work with video [per song]
• 02 copies of Records Work in the form of Audio VCD/DVD / CD / USB.
• Undertaking/Affidavit for original creativity of the (As per sample below).
• NOC for assignment of copyright from the all contributors (performers / singer / lyric writer / musician etc.) of the work.
• Any other requirement by this office as per nature of the case.

Note: Registration Fee in the form of Demand Draft / Pay-Order in the name of Director General IPO-Pakistan.

A patent is grant of exclusive rights for an invention to make, use and sell the invention for a limited period of 20 years. The patent grant excludes others from making, using, or selling the invention. Patent protection does not start until the actual grant of a patent.

A patent owner has the right to decide who may or may not use the patented invention for the period in which the invention is protected. The patent owner may give permission, or license, to other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends and invention enters the public domain, that is, the owner no longer holds exclusive right to the invention which becomes available to commercial exploitation by others.

The patent system is desirable in the public interest that industrial techniques should be improved. The monopoly rights are granted in lieu of disclosure of the invention i.e advancement in technology. In order to encourage improvements and to encourage also the disclosure of improvements in preference to their use in secret. Any person devising any improvement in a manufactured article or in machinery or methods for making it, may upon disclosure of his improvement at the Patent Office demand to be given a monopoly in the use of it for a limited period. After that period, it passes into the public domain.

Patentable Inventions in Pakistan

In order to be patentable an invention should have the following characteristics:

 – The invention should be process or product

 – The invention should be novel or new

 – It involves an inventive step

 – It is capable of industrial application

Patent applications are examined under the Patents Ordinance, 2000 and Rules there under for both technical and legal merits. These characteristics are briefly explained below:

Invention whether Product or Process

Invention means any new and useful product or process, in any field of technology; and includes any new and useful improvement of either of them. Whereas as a “process” means any art, process or method or manner of new manufacture of a product and a “product” means any substance, article, apparatus, or machine.

Novelty

An invention shall be considered to be novel or new if it does not form part of the state of the art. The state of the art shall comprise everything disclosed to the public anywhere in the world, by publication in tangible form or by oral disclosure, by use or in any other way, prior to the filing or, where appropriate, the priority date, of the application claiming the invention.

The public use or knowledge of an invention anywhere in the world before the date of the application would prejudice the novelty of the invention. Applicants for patents should therefore, take particular care to see that their inventions are not publicly used anywhere in the world, prior to the date of their patent applications. Publication of the invention should, therefore, be avoided before applying for Patents.

However, disclosure of a patent able invention in respect of goods shall not constitute ‘state of the art’ if an article is exhibited at an official or officially recognized international exhibition within twelve months preceding the date of filing of an application for grant of patent.

Inventive Step

An invention shall be considered as involving an inventive step if it has not been obvious to a person skilled in the art, prior to the date of application for a patent. In order to be patentable, the new subject must involve invention over what is old. A patent for new use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties is not an invention. If the new use involves no ingenuity, but is in manner and purpose is analogous to the old use, although not quite the same there is no invention. There should be a substantive change or improvement or addition in the prior art.

Industrial Application

An invention shall be considered to be capable of industrial application if it is capable of being manufactured or otherwise industrially used.

Exceptions & Non-Patentable Inventions in Pakistan

The following shall not be regarded as invention within the meaning of the Patent ordinance, 2000

  – a discovery, scientific theory, law of nature or mathematical method;

 – a literary, dramatic, musical or artistic work or any other creation of purely aesthetic character whatsoever;

 – a scheme, rule or method for performing a mental act, playing a game or doing business;

 – the presentation of information, computer software; and

 – that exist in nature or if isolated there from.

Patent shall not be granted for:

 – invention against the “order public” or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment;

 – plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes;

 – diagnostic, therapeutic and surgical methods for the treatment of humans or animals;

 – a new or subsequent use of a known product or process; and

 – a mere change in physical appearance of a chemical product.

Types of Patent Application

Patent applications can be applied in the following manners:

 – An ordinary patent application with “provisional or complete specification”, which is dated as of the official date of the application for the patent.

 – A convention patent application claiming “right of priority”, which is dated as of the official date of the corresponding application for patent first made in a country which is the member of WTO (World Trade Organization).

 – Application for a patent of addition, for improvement or modification of an invention for which a patent has already been applied for or granted.

Industrial Design

An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape or surface of an article, or of two dimensional features, such as patterns, lines or color.

Industrial designs are applied to a wide variety of products of industry and handicraft: from technical and medical instruments to watches, jewelry and other luxury items; from house wares and electrical appliances to vehicles and architectural structures; from textile designs to leisure goods.

An industrial design is primarily of an aesthetic or visual nature, and does not relate to the technical features of an article.

Advantages of Registered Designs

The owner is able to prevent unauthorized copying or imitation of his or her design by third parties. In addition, as industrial designs add to the commercial value of a product & facilitate its marketing & commercialization, their protection helps ensure that a fair return on investment is obtained.

Protection of industrial designs encourages fair competition & honest trade practices. It leads to the production of more aesthetically attractive & diversified products, thereby broadening consumer choice.

Industrial design protection acts as a spur to a country’s economic development by contributing to the expansion of commercial activities & by enhancing the export potential of national product.

Disadvantages of Unregistered Designs

The owner is unable to prevent unauthorized copying or limitation of his or her design by third parties.

Non-protection of industrial designs discourages unfair competition & dishonest trade practices.

The following do not constitute register able designs within meaning of the Ordinance:

• A design, which in the opinion of the Registrar of Designs is not new or original.
• A design which is the same as a design already registered or published anywhere in the world before the date of the application (or, in the case of an application claiming priority of date under Section 11, before the priority date), or which differs from such prior design only in immaterial details or in features which are variants commonly used in the trade.

But under Section 6 of the Ordinance, the following is an exception to this rule: 
– “Where the registered proprietor of a design registered in respect of any article makes an application.

1. for registration in respect of one or more other articles of the registered design, or 
2. for registration in respect of the same or one or more other articles of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof.
   The application shall not be refused and the registration made on that application should not be invalidated by reason only of the previous registration or publication of the registered design:

Provided that the period of registration of a design registered by virtue of this section shall not extend beyond the expiration of the original and extended period of registration in the original registered design”.

• A method or principle of construction, or an improvement in the construction, arrangement or application of machinery.
• Anything, which is in substance a mere mechanical device. In other words, a design consisting features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform.
• Any Trade Marks as defined in Section 2 of the Trade Marks Act, 1940.
• A mere adjunction of two or more known articles of known shape or patterns.
• Copyrights in literary, dramatic, musical and artistic work within the meaning of Copyrights Ordinance, 1962. In other words, works of sculpture, other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process; wall plaques and medals; and printed mater primarily of a literary or artistic character including book-jackets, calendars, certificates, coupons, dressmaking patterns, greeting cards, leaflets, maps plans, postcards, stamps, trade advertisements, trade forms and cards, transfers and the like.
• A design containing a reproduction or imitation of the armorial bearings, emblems, seals, coat-of-arms, insignia, orders of chivalry, decorations or flags of any country, city, borough, town, place, society, body corporate, institution or person, or the name or portrait of a living or dead person, unless the consent of the appropriate official or person to the registration of design is furnished to the Registrar.

The Pakistan Names and Emblems (Prevention of Unauthorized Use) Act, 1957 specifically precludes from registration as Design or Patents (Under the Registered Designs Ordinance, 2000 and the Patents Ordinance, 2000) the following names or emblems, and their reproductions or imitations.