Starting with Gracious Name of Allah SWT

Presented to class of LLM Corporate Law – f12

By eeshal zai

trademarksTrademarks are brand identifiers. . .

Trade mark rules

ScopeMandateSignificance of TM in Pakistan & internationally

What is a trademark?

Any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A sign can include a letter, word, name including personal name, signature, figurative element, numeral, device, brand, heading, label, ticket, aspect of packing, shape, color, sound or any combination of these features.

Trademarks & Pakistan

Pakistan is playing a significant role in establishing and backing up TM.

Trademarks are assigned through the Intellectual Property Organisation of Pakistan.

Pakistan is not a member of the Madrid Protocol.

A trademark is valid for 7 years and may be renewed for further periods of 7 years each.

No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would:

by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice ; or

be likely to hurt the religious susceptibilities of any class of 1 [the citizens of Pakistan] ; or

be contrary to any law for the time being in force or to morality.

TRADEMARK SEARCHTrademark search in Pakistan is optional. However, it is advisable to conduct a trademark search in Pakistan before filing an application,

to ensure that there is any prior registered trademark that is identical or similar to the trademark that you intend to use in Pakistan.

Trademark search is more important if it is related to the area of your business in Pakistan.

The trademark search report will be completed within 5 – 10 working days.

TRADEMARK REGISTRATION

Trademark registration means to file your trademark application before the Trademark Office in Pakistan.

Thereafter, your trademark application will be examined by the Registry of Trademark in Pakistan.

If there is no objection as to your trademark registration by the Examiner, then your trademark application will be accepted for registration and your trademark will be published in Official Gazette in Pakistan

Separate application.– An application for the registration of the same trade mark in different classes shall be treated as separate and distinct applications, and in all cases where a trade mark is registered under the same official number for goods or services in more than one class, whether on conversion of the specification under rule 71 or otherwise, the registration in respect of goods or services included in each separate class shall be deemed to be a separate registration for all the purposes of the Ordinance.

Separate licencing

In the US and EU, trademarks and trade dress are attacked in predictable ways.  Retailers often mimic the trademark and packaging of a top-selling brand to stimulate sales of private label offerings.

Cover all your brand bases

Even some larger companies with established brand registrations forget to protect and register brand derivatives such as social media tags and possible online names.

Even if you have a registered trademark for your brand, you should also make sure that social media tags with that name belong to you.

you've registered all the principal domain suffixes for your brand name or catchphrase online.

You don't want someone establishing a website with your business name and using it to give you a bad reputation somehow.

If you have your trademark already registered but someone has stolen the name as part of a domain name or social media tag, you can sue in court.

but will first have to establish proof the your registration was made before the other party set up the domain name or tag. Otherwise, you venture into murky legal ground.

TRADEMARK PUBLICATION

Once your trademark registration is accepted by the Registry of Trademark in Pakistan, your trademark will be published for opposition in Official Gazette in Pakistan.

If there is no objection from any third party after the opposition period for your trademark, the trademark application will proceed to registration and a Trademark Certificate of Registration will be issued by the Registry of Trademark in Pakistan.

Establish a clear IP licensing protocol

This step applies to trademark, copyright, and patents as well. You need to establish strictly defined procedures for how you will or will not license use of your IP to third parties. If you enter into licensing or franchising contracts with other companies or vendors, make sure that ...

the financial and legal conditions of your partnership are firmly cleared on paper and have been drafted or at least reviewed by legal professionals.

Securing trademark registration Internationally

secure a trademark registration covering many different countries through a centralized source or service

Several international agreements coordinate the procedure of filing applications for trademark registration in more than one country.

BOIP :A registration with the Benelux Office for Intellectual Property (BOIP) covers Belgium, Luxembourg and the Netherlands.

CTM : A Community Trade Mark (CTM) protects a trademark in all of the member countries of the European Union. A CTM is a single unitary trademark right that must be applied for, and which provides protection for a trademark or service mark in all of the member countries of the European Union.

Madrid Agreement and Madrid Protocol : The Madrid Agreement and Madrid Protocol provide an opportunity to file an application for an international registration that will cover multiple member countries

OAPI. Filing with the African Intellectual Property Organization (OAPI) protects trademarks in all of the member countries in Africa.

it is formed by members of certain French-speaking African nations .

ARIPO. There is also the possibility of filing with the African Regional Industrial Property Organization (ARIPO), under which a trademark owner can protect its trademark in the member states in southern Africa.

It is formed by members of certain English-speaking African nations and enables members to file one regional application for the protection of trademarks in member countries.

"Convention Priority in TM RegistrationUnder the Paris Convention, any person who files a trademark application in a member country may claim priority of that filing date if an application is filed in any other member country within six months from the date the original application was filed.

same mark be owned by different parties in different countries

Since trademark rights are generally geographic in scope.

it is possible for some trademarks to be registered in different countries by different owners.

In a few countries, including the United States, a trademark can have multiple owners in different geographical regions of the same country.

TM Laws powerful driver of innovationIP professionals doing great job in stablizing trademark laws in Pakistan.

IPO established in 2005, 8April.Its focal organization for integrated management of IP in Pakistan.

In IP, trademark laws are the powerful driver of innovation & creativity of wealth.

It provide protection to service provider & consumers as well

Trademark Electronic System (TESS).

You must find out whether a symbol, logo, catchphrase, brand name, or image that you want to trademark is not already trademarked.

Attempting to trademark without first running a check is merely going to waste valuable time and money.

You can use a clearance search service that offers to do search for a fee

you can simply take care of the process yourself by visiting the Patent and Trademark Office's Trademark Electronic System

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