The short answer
To register a trademark in Pakistan, file an application with the Trade Marks Registry of the Intellectual Property Organization of Pakistan (IPO-Pakistan) under the Trade Marks Ordinance, 2001 and the Trade Marks Rules, 2004. An applicant who does not reside or carry on business in Pakistan must give an address for service in Pakistan. Others have 2 months from advertisement to oppose. A registration lasts 10 years, and the registration date is deemed to be the filing date.
Trademark deadlines in Pakistan at a glance
| Question | Answer for Pakistan |
|---|---|
| How long does a registration last? | 10 years, renewable for further 10-year periods (Sections 34 and 35) |
| Which date does the term count from? | The Ordinance counts 10 years from the date of registration, and Section 33(3) says a mark is registered as of the date of filing, which is deemed the date of registration. Count from the filing date |
| When can I renew? | On Form TM-12, within the 6 months ending on the expiry date (Rule 51). The Registrar sends a reminder between 6 and 1 month before expiry |
| Is there a grace period? | Yes. If the fee is not paid, you can still renew within a further period of at least 6 months with an additional fee (Section 35(3)). The Rules give 6 months from the non-payment advertisement (Rule 52) |
| What if I miss that too? | The mark is removed from the register. Ask to restore it on Form TM-13 within 6 months of removal (Rule 53) |
| Opposition period | 2 months from advertisement, on Form TM-5. It can be extended by up to 2 months in the aggregate (Rule 30) |
| Counter-statement | 1 month from receiving the opposition, on Form TM-6, extendable up to 2 months in the aggregate. Otherwise the application is abandoned |
| Priority period | 6 months from the first Convention application (Section 25) |
| Non-use revocation | If not put to bona fide use in Pakistan within 5 years of registration, or use is suspended for 5 uninterrupted years (Section 73) |
| Assignment | Record it on Form TM-23 or TM-24 (Rule 56) |
| Change of name or address | Forms TM-33 or TM-34 (Rule 70). Change of address for service on Form TM-50 |
| Extension of time | Form TM-56. Extensions are capped at 3 months in aggregate (Rule 80) |
Who can apply for a trademark in Pakistan?
Any person who uses or intends to use a mark can apply. A mark is registered as of its filing date, and that date is deemed the registration date for the purposes of the Ordinance (Section 33(3)).
Applicants in Pakistan
File directly
An applicant who resides or carries on business in Pakistan files with the Trade Marks Registry.
Applicants abroad
Address for service in Pakistan
Section 126 says every applicant or opponent who does not reside or carry on business in Pakistan must give an address for service in Pakistan. Foreign owners normally appoint a local agent for this.
A Convention application carries a right to priority if the Pakistani filing follows within 6 months of the first filing (Section 25). The date of the first Convention application then becomes the date of filing.
Trademark registration in Pakistan: the steps
Search and file
- Search the register and the Trade Marks Journal for conflicting marks before you file
- The application is made on the prescribed form with the prescribed fee. The date of filing is set by Section 23
Examination
- The Registrar examines whether the application meets the requirements and whether there are absolute or relative grounds for refusal
- If there is an objection, the applicant can reply or amend
Advertisement in the Journal
- An accepted application is advertised in the Trade Marks Journal
- The advertisement starts the opposition period
Opposition
- Anyone may file a notice of opposition on Form TM-5 within 2 months of the advertisement. The period can be extended by up to 2 months in the aggregate
- The applicant files a counter-statement on Form TM-6 within 1 month, or the application is deemed abandoned
- If there is no opposition, the application is accepted and the registration fee is demanded
Registration
- The mark is registered as of the date of filing, published, and a certificate is issued (Section 33)
- Registration becomes conclusive as to validity after 5 years from the original registration (Section 44)
Fees. The Rules set the amounts in their First Schedule. They are not reproduced here, so ask IPO-Pakistan or your agent for the current schedule before you budget.
How long does a registration last, and how does renewal work?
Section 34 gives a registration 10 years from the date of registration, renewable for further periods of 10 years. Because the registration date is the filing date (Section 33(3)), count from the day you filed.
- The Registrar must inform the proprietor of the expiry date and how to renew (Section 35(2)). The Rules say the reminder goes out between 6 and 1 month before expiry
- A renewal request on Form TM-12 with the fee is filed within the 6 months ending on the expiry date (Rule 51)
- If not, a late request with an additional renewal fee is allowed within a further period of at least 6 months (Section 35(3))
- Renewal takes effect from the expiry of the previous registration. Except at the first renewal, the Registrar may ask for evidence of use in Pakistan (Section 35(4)-(5))
- If the mark is not renewed, it is removed, and the Registrar may restore it on conditions. The Rules allow 6 months from removal, on Form TM-13
Keep proof of use. From the second renewal the Registrar can ask for evidence that the mark is used in Pakistan.
Assignment, licence, and change of name or address
Assignment
Forms TM-23 and TM-24
The new title holder, alone or jointly with the registered proprietor, records the assignment or transmission on Form TM-23 or TM-24 (Rule 56). Some assignments made without the goodwill need the Registrar's approval and advertisement (Rules 58 and 61).
Name or address
Forms TM-33 and TM-34
A change of the proprietor's or licensee's name or address is recorded in the register on request (Rule 70). A change of the address for service is made on Form TM-50.
Alteration or surrender
Sections 37 and 38
The registered mark itself can only be altered to a limited extent, and a proprietor can surrender a registration.
Use it, or risk revocation
Section 73 allows a registration to be revoked if the mark has not been put to bona fide use in Pakistan within 5 years of the completion of the registration procedure, or if use has been suspended for an uninterrupted 5 years, and there are no proper reasons for non-use.
After 5 years from its original registration, a registration is taken to be valid in all respects in legal proceedings, subject to the exceptions in Section 44.
How to check the status of a trademark in Pakistan
- Applications are advertised in the Trade Marks Journal, which IPO-Pakistan publishes. The advertisement starts the 2-month opposition period
- Ask your agent to search the register before you file, and to report the status, owner and expiry date
- Renewals and restorations are published in the Journal (Section 35(7))
Sources used
Trade Marks Ordinance, 2001 (Pakistan Code and IPO-Pakistan) and the Trade Marks Rules, 2004 on WIPO Lex. Fees are in the First Schedule of the Rules, so check the current schedule before filing.
Trademark registration in Pakistan: common questions
How long is a trademark valid in Pakistan, and from when is it counted?
Ten years. The Ordinance counts it from the registration date, and Section 33(3) deems the registration date to be the filing date, so count from the day you filed.
When should I renew a Pakistan trademark, and is there a grace period?
File Form TM-12 within the 6 months ending on the expiry date. A late renewal with an additional fee is allowed within a further period of at least 6 months. After removal you can ask to restore the mark within 6 months.
How long is the opposition period in Pakistan?
Two months from advertisement on Form TM-5, extendable by up to 2 months in the aggregate.
Can a foreign company register a trademark in Pakistan?
Yes, but it must give an address for service in Pakistan (Section 126). A local agent normally provides this.
How do I assign a Pakistan trademark?
Record the assignment on Form TM-23 or TM-24 with the Registry.
How do I change the name or address on a Pakistan trademark?
Use Form TM-33 or TM-34, and Form TM-50 to change the address for service.
Can a trademark be revoked for non-use in Pakistan?
Yes. Section 73 allows revocation after 5 years without bona fide use in Pakistan, unless there are proper reasons.
How do I check the status of a trademark in Pakistan?
Check the Trade Marks Journal published by IPO-Pakistan, and ask your agent to search the register.
Can I claim priority from my home filing?
Yes. A Convention application gives a priority right if you file in Pakistan within 6 months of the first filing (Section 25).
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