FICPI INFORMATION no.49
   
by Mr Zulfiqar Khan
FICPI member - Attorney at Law, Pakistan

 
Pakistan: Trade Marks Ordinance, 2001

 

 

On April 13, 2001 the President of Pakistan has promulgated Trade Marks Ordinance, 2001. This is a TRIPs compliant law, which has not come into force immediately. However, it is intended that once Rules have been made and advertised, the new law and the Rules will come into immediate effect.

The new law represents a fundamental change in the Pakistan Trade Mark law. It introduces new concepts and some significant extensions are made to the previous trade mark law.

The following are among the most significant changes:

  • the definition of mark is broadened to include three dimensional and sensory marks;

  • the law extends to provide protection for geographical indications and well known trademarks;

  • the definition of what constitutes "trade description", "trade names" and "service" has been incorporated;

  • the law also defines "use" to include use of a trade mark on signboards, advertisements and business documents;

  • filing of a divisional application while maintaining priority date from the original application has been embodied;

  • registration and protection of collective marks and regulations regarding acceptance, inspection, opposition and infringement proceedings by a registered proprietor of a collective mark;

  • significant changes to the law concerning trade marks infringements has been embodied to extend the range of activities that will infringe a registered trade mark;

  • introducing comparative advertising and allowing its practice;

  • defining unfair competition and including provisions constituting an act of unfair competition;

  • provisions are made for an application to claim priority by applicants of a convention country for some or all of the same goods or services, for a period of six months from the date of filing of the first such application;

  • the law provides for the prohibition and seizure of goods with infringing trade marks by the Collector of custom and excise;

  • modes of licensing have been extended to include financial controls by the parent company;

  • the law also grants temporary protection to those who have exhibited a mark in respect of goods/services at an officially recognised international exhibition to apply for registration of the mark within the next six months.

The new law provides greater protection to owners and give them more control over the activities of competitors. This increased protection will apply not only to trade marks registered after the new law comes into effect but also to trade marks which have already been registered.



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