A Trade Mark is entitled to limited protection in Pakistan, even if it is not registered in Pakistan, provided that it is considered a well known Trade Marks under the Paris Convention. The relevant law in respect of Trade Marks, unfair competition, registration & protection of Trade Mark is the Trade Marks Ordinance 2001 (the Ordinance), which Ordinance extends to the whole of Pakistan. The term Trade Mark is defined under Section 2 Clause 37 as any mark which is capable of being represented graphically and which is capable of distinguishing goods or services of one undertaking from those of another undertaking. Further, the term mark is defined under Clause 24 of Section 2 of the Ordinance as including a devise, brand, heading, label, ticket, name including person name, signature, word, letter, numeral, figurative elements, colour, sound or combination thereof. Whereas the term Paris Convention is defined under Section 85 Clause (a) of the Ordinance as the Paris Convention for the Protection of the Industrial Property of the 20th March 1883 as revised or amended from time to time.
Generally speaking, a Trade Mark is not protected in Pakistan until and unless it is registered in Pakistan, meaning thereby that no infringement proceedings under the Ordinance may be initiated in Pakistan in respect of a Trade Mark which is not registered in Pakistan. Having said that, there are three circumstances, mentioned in the Ordinance itself, in which an International Trade Mark may be protected or given priority in Pakistan.
Firstly, under Section 25 of the Ordinance where a person has duly made a Convention application in respect of a Trade Mark and within six months from the date of such a Convention application that person or his ‘successor in title’ applies to the Registrar in Pakistan for the registration of the same Trade Mark under the Ordinance in respect of some or all of the same goods or services (or both) in respect of which registration was sought in the Convention Country. In such a case the person or his ‘successor in title’ may claim priority for the registration of the Trade Mark in Pakistan. The effect of such priority is that the relevant date for the purpose of establishing precedence of right is the date of filing of the first Convention application and the registerability of the Trade Mark shall not be affected by any use of the mark in Pakistan for period between the date of first application in Convention Country and the date of application for registration in Pakistan.
Hence, where a person has duly filed an application in a Convention Country and he intends to register the same Trade Mark in Pakistan in respect of same goods or services he can claim priority in Pakistan within six months of the filing of that application in the Convention Country. One important point to note here is that Trade Mark applied for in a Convention Country is not automatically protected in Pakistan and such Trade Mark merely enjoys a right of priority of six months.
The second circumstance is provided under Section 86 of the Ordinance. Under this provision a Trade Mark which is entitled to protection under the Paris Convention, as a well known Trade Mark, and which is a well known Trade Mark in Pakistan is protected in Pakistan subject to the following conditions enumerated in the said Section:
- It is a Trade Mark of a national of a Convention Country or,
- It is a Trade Mark of someone domiciled in or has a real and effective industrial or commercial establishment in a Convention Country.
Under Sub Section 2 of Section 86 the ‘tribunal’ shall determine whether or not a Trade Mark is well known. The tribunal shall take into account the following factors in deciding whether or not a Trade Mark is well known:
- the amount of Pakistan or worldwide recognition of the Trade Mark;
- the degree of inherent or acquired distinctiveness of the Trade Mark;
- the Pakistan or worldwide duration of the use and advertising of the Trade Mark;
- the Pakistan or worldwide commercial value attributed to the Trade Mark;
- the Pakistan or worldwide geographical scope of the use and advertising of the Trade Mark;
- the Pakistan or worldwide quality and image that the Trade Mark has acquired; and
- the Pakistan or worldwide exclusivity of use and registration attained by the Trade Mark and the presence or absence of identical or deceptively similar third party Trade Marks validly registered or used in relation to identical or similar goods and services
The word ‘tribunal’ is defined under Section 2 Clause (LI) of the Ordinance and it means the Registrar, or the High Court or a District Court before which the proceedings concerned are pending.
Under Subsection 3 of Section 86 of the Ordinance the owner of a well known Trade Mark may seek an order of the tribunal for restraining by injunction the use in Pakistan of Trade Mark which is identical or deceptively similar to the well known Trade Mark in relation to identical or similar goods or services where such use is likely to cause confusion or where such use causes dilution of the distinctive quality of the well known Trade Mark. The term dilution means under Clause (XIII) of Section 2 of the Ordinance the lessening of the capacity of a well known Trade Mark to identify and distinguish the goods or services, regardless of the presence or absence of competition between owner of the well known Trade Mark or other parties or likelihood of confusion or deception.
Further, under Subsection 4 of Section 86 of the Ordinance rights conferred on the owner of the well known Trade Mark shall not affect the continuation of any bonafide use of a Trade Mark begun before the commencement of the Ordinance.
The third circumstance is given under Section 92 of Ordinance. Under this Section a trade name shall be protected without being registered under the Ordinance and whether it forms a part of a Trade Mark or not. Trade name is defined under Clause (XLIX) of Section 2 as meaning names used by a person to denote his trade or calling and includes firms’ or companies’ names. Therefore, by virtue of Section 92 of the Ordinance names of companies and firms, whether in Pakistan or outside are protected, along with other trade names, irrespective of the fact whether or not they are registered as a Trade Mark in Pakistan.
And finally there is the classic tortious remedy of ‘passing off’ one’s goods as the goods of another person. By virtue of Subsection 3 of Section 39 and subsection 3 of Section 46 of the Ordinance a person’s right to file a suit on the basis of passing off has not been curtailed by the Ordinance. Subsection 3 of Section 39 states that without prejudice to the right of the proprietor of a registered Trade Mark to obtain any relief under any other law for the time being in force, the proprietor shall also have the right to obtain relief under this Ordinance if the Trade Mark is infringed, whereas Subsection 3 of Section 46 provides that nothing in this Ordinance shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or services as services provided by another person, or the remedies thereof.
In view of the aforementioned, it is advised that all International business undertakings should get their Trade Marks registered in Pakistan because only the proprietor of a Trade Mark registered in Pakistan enjoys full protection of the Ordinance. Also, the procedure of registration of a Trade Mark in Pakistan is simple and inexpensive. Otherwise, an international undertaking which has not registered its Trade Mark in Pakistan is only entitled to a right of priority within the prescribed period of six months, or its Trade Mark will be protected as a well known Trade Mark provided that the tribunal recognizes it as a well known Trade Mark in which case the proprietor of such a mark may seek a restraining order or he may file a civil suit and base his claim on ‘passing off’.