Making a Mark Pa

8/10/2019 Making a Mark Pa

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MAKING A MARKAn introduction to

Trademarks for Smalland Medium-sizedEnterprises

Intellectual Propertyfor Business Series

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Publications in the Intellectual Property for Business Series:

1. Making A Mark - An introduction to Trademarks for Small andMedium-Sized Enterprises.

2. Looking Good An introduction to Industrial Designs for Small andMedium-Sized Enterprises.

3. Inventing the Future - An introduction to Patents for Small andMedium-Sized Enterprises.

4. Creative Expression - An introduction to Copyright and Related Rightsfor Small and Medium-Sized Enterprises.

The adapted versions of the above mentioned publications are available at WIPO(WIPO e-bookshop atwww.wipo.int/ebookshop)and SMEDA website (SMEDApublications atwww.smeda.org.pk)

Disclaimer:The information contained in this guide is not meant as a substitutefor professional legal advice. Its purpose is to provide basic information on thesubject matter. This publication has been adapted and reproduced with the priorexpress permission of the World Intellectual Property Organization (WIPO), thecopyright owner of the original English Language version, which is available atwww.wipo.int/sme/en/documents/guides/ . As such, WIPO is not liable orresponsible for the accuracy or correctness of the adapted version of thepublication, as that liability or responsibility rests solely with the Small andMedium Enterprises Development Authority of Pakistan.

SMEDA Copyright (2009). WIPO owns copyright in the original EnglishLanguage version (2006).

No part of this publication may be reproduced or transmitted in any form or byany means, electronically or mechanically, except as permitted by law, withoutwritten permission from Small and Medium Enterprises Development Authority(the owner of the copyright).


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Preface

'Intellectual Property' till recently has been considered a luxury bythe industry in general and SMEs in particular. In reality, it is thebiggest opportunity for SMEs to establish their credentials at parwith the large enterprises. In fact, every business has some valuableintangible property worth protecting. Keeping SMEs abreast oninformation about Intellectual Property Rights (IPRs) systems so asto protect their IP assets is a must. Ignorance in this field may lead toloss of valuable rights, expensive litigation or both.

This customized version of 'Making a Mark' will provide usefulinsights to SMEs in Pakistan about trademarks, its benefits, its

registration procedure in Pakistan as well as abroad (especially forexporters) and other relevant information, illustrated with the helpof examples of Pakistani businesses. It is mainly directed at SMEsengaged in product manufacturing or service delivery activities.The purpose of this endeavour is to enable SMEs to seize theopportunity of trademark protection rather than deferring thedecision to adopt IP system on the assumption that IP protection iscostly and time consuming or enforcement of the laws areineffective.

In compilation of this booklet, efforts of SMEDA team comprisingMr. Muhammad Jamil Afaqi, Ms. Aisha Amjad Mir andMr. Shaheen Tahir have been commendable.

I hope this joint effort on part of the World Intellectual PropertyOrganisation (WIPO) and Small and Medium EnterprisesDevelopment Authority (SMEDA), will assist SMEs to build theirbrand identities. With the help of this Guide, SMEs will be able tocreate distinctive trademarks to uniquely position their products/services in the marketplace.

Shahid RashidCEO, SMEDA

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TableofContents

1. Trademarks

2. Protecting Trademarks

3. Types of Trademark

4. Using Your Trademark

5. Enforcing Trademark

Annexure:

Annex I: Addresses of Important Offices in Pakistan

Annex II: Classification of Goods and Services

Annex III: Form TM 1

Annexure IV: Form TM 55

Annexure V: List of the Member Countries of the

Madrid Union

Page No.

3

6

16

18

22

24

26

29

31

32

Sections Topic

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Any distinctive words, letters, numerals,drawings, pictures, shapes, colors,logotypes, labels or combinationsused todistinguish goods or services may beconsidered a trademark.

In Pakistan, registration and protection oftrademarks is regulated under the law calledThe Trade Marks Ordinance, 2001 (TheOrdinance). Section 2(xlvii) of theOrdinance defines the trade mark asfollows:

Trade mark means any mark capabl e ofbeing represented graphically which iscapable of distin guishing goods or servicesof one undertaking from those of otherundertakings;

There are some less traditional forms oftrademarks also, such as single colors, three-dimensional signs (shapes of products orpackaging), audible signs (sounds) orolfactory signs (smells). An increasingnumber of countries recognize these lesstraditional forms of trademarks forregistration. However, many countries haveset limits on what can be registered as atrademark, generally only allowing for signsthat are visually perceptible or that can berepresented graphically.

What is a Trademark?Generally speaking, a trademark is a markused for the purposes of differentiatinggoods or services of one business fromthe goods or services of others.

The definition of mark given in Pakistanilaw also includes sound or scent. However,registration of these marks is only possible ifthey are capable of graphical representation.This condition of graphical representationsubstantially restricts the scope of protectionextendable to such marks in Pakistan.

Examples:

Word marks:

[Courtesy: Treet Corporati on Ltd.]Treet Corporation lim ited is the manufacturer oftop quali ty blades and razors in Pakistan for thelast fifty years.

[Courtesy Workman]WORKM AN is a registered trademarkfor furniture and w ooden products.

Logo

[Cou rtesy: NestlPakistan Ltd]The logo was adopted and fi rst ever used by Nestlein the Year 1998 in Pakistan for its bottl ed waterand since then it has continuou sly been used innumerous countries around the w orld.

Trademarks1


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Why should your company protect itstrademark(s)?While most businesses realize theimportance of using trademarks todifferentiate their products from those oftheir competitors, not all realize theimportance of protecting them throughregistration.

Registration gives your company theexclusive right to prevent others frommarketing identical or similar productsunder the same or a confusingly similarmark.

Without trademark registration, yourinvestments in marketing a product maybecome wasteful as rival companies mayuse the same or a confusingly similartrademark for identical or similar products.Just think for a moment, if a competitoradopts a trademark similar or identical toyour trademark, your customers could bemisled into buying the competitor's productthinking it is your company's product. Thiscould not only decrease your company'sprofits and confuse your customers, but mayalso damage the reputation and image of

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By enabling companies to differentiatethemselves and their products from those of

the competitors, trademarks play a pivotalrole in the branding and marketingstrategiesof companies, contributing to thedefinition of the image, and reputation of thecompany's products in the eyes ofconsumers. The image and reputation of acompany create trustwhich is the basis forestablishing a loyal clienteleand enhancinga company's goodwill. Consumers oftendevelop anemotional attachmentto certaintrademarks, based on a set of desiredqualities or features embodied in theproducts bearing such trademarks.

Trademarks also provide an incentive forcompanies to invest in maintaining orimproving the quality of their products inorder to ensure that products bearing theirtrademark have a positive reputation.

Can you registerAdvertising slogans as trademark?In Pakistan advertising slogans are alsoconsidered as a trademark and can beprotected if they fulfill the criterion fixedfor registration of a trade mark. Forinstance Tapal Tea has registered its

advertising slogan.

[Courtesy: Tapal Tea (Private) Limi ted]

What are trademarks for?

The main function of a trademark is toenable consumers to identify a product(whether a good or a service) of a particularcompany so as to distinguish it from otheridentical or similar productsprovided bycompetitors of such company.

Consumers who are satisfied with a givenproduct are likely to buy or use the productagain in the future. For this, they need to beable to distinguish easily between identicalor similar products.

The Value of TrademarksA carefully selected and maintainedtrademark is a valuable business assetformost companies. For some, it may be themost valuable asset they own. Estimatesof the value of some of the world's most

famous trademarks such as Coca- Cola orIBM exceed 50 billion dollars each. Thisis because consumers value trademarks,their reputation, their image and a set ofdesired qualities they associate with themark, and are willing to pay more for aproduct bearing a trademark that theyrecognize and which meets theirexpectations. Therefore, the veryownership of a trademark with a goodimage and reputation provides acompany with a competitive edge.

Example

[Courtesy: Nestle Pakistan Limi ted]The value of Nescafe brand is estimated at 13 bill iondollars in 2007.

In Pakistan the recognition of brands isgrowing with the passage of time andvarious brands have gained immensevalue.

your company, particularly if the rivalproduct is of inferior quality. Given the

value of trademarks and the importance thata trademark may have in determining thesuccess of a product in the marketplace, it iscritical to make sure that it is registered in therelevant market(s).

In addition, you may also grant license of aregistered trademark to other companies,thus creating an additional source ofrevenue for your company. You may alsouse your trademark for the purpose of afranchising agreement. On occasion, aregistered trademark with a good reputationamong consumers may also be used to

obtain funding from financial institutionsthat are increasingly aware of theimportance of brands for business success.

Trademarks:

ensure that consumers can distinguish

between products;

enable companies to differentiate

their products;

are a marketing tool and the basis for

building a brand image and reputation;

may be licensed to provide a direct

source of revenue through royalties;

are a crucial component of franchising

agreements;

may be a valuable business asset;

encourage companies to invest in

maintaining or improving product quality;

may be useful for obtaining financing.

Composite:

[Courtesy: Friends Sons (Pvt.) Ltd. ]

TAPAL DANEDAR

AUR KYA CHAHEYE!


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The trade names applications are not filedwith the Trade Marks Registry. Applicationfor registration of trade name of a companyare filed with the Securities & ExchangeCommission of Pakistan (SECP)www.secp.gov.pk

Appl icati on for registration of trade name ofa partnership firm may be filed w ith theRegistrar of Firms in your concerned di strict.

Who is authorized to apply for trademarkregistration?In general, any person who intends to use a

trademark or to have it used by third partiescan apply for registration. It can be either anindividual or a legal entity i.e. a company ora firm.

Is it compulsory to register a company'strademarks?While it is not compulsory, it is highlyadvisable, as registration provides theexclusive right to prevent unauthorized useof the trademark.In addition, a registeredtrademark is also useful when you file

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How can your company protect itstrademark(s)?In Pakistan protection is available for boththe registered and unregistered marks. Theregistered marks are given protection underthe Trade Marks Ordinance, 2001, whereasthe unregistered marks can seek protectionunder the common law of Passing Off. Thelaw of Passing Off prohibits a businessfrom presenting its products as if they belongto some other business. A registrationcertificate is a proof of your entitlement to

exclusive use of the mark. However, inorder to seek protection for an unregisteredmark certain facts are required to be proved.The first and foremost fact which must beproved is that the mark has acquireddistinctiveness through extensive use.

Hiring the services of a trademarks agentalthough is recommendable yet is notcompulsory for registration of a trademark inPakistan.

Applications for registration of trademarks inPakistan can be filed personally or through

post. The Trade Marks Registry of Pakistan iscurrently being computerized. Theapplication forms are available on itswebsite www.ipo.gov.pk;however, onlinefiling is not yet available.

Unlike some countries, the Trade MarksRegistry of Pakistan maintains a singletrademark register for entering theparticulars of registered trademarks and itdoes not have part A and part B withdifferent categories of rights.

proceedings in a court of law to preventothers from using your trademark or a mark

similar to your trademark. Further, theowner of a registered trademark may alsoclaim damages in a court of law.

What are the main reasons for rejectingan application?While selecting a trademark it is helpful toknow which categories of signs are usuallynot acceptable for registration. Applicationsfor trademark registration are usuallyrejected by the Trade Marks Registry on

what are commonly referred to as absolute

groundsin the following cases:

1. Generic terms. These are the actualnames of the products in question. Forexample, if your company intends to registerthe trademark COMPUTER to sellcomputers, the mark would be rejected

since computer is the generic term for theproduct.

2. Descriptive terms. These are wordsthat are usually used in trade to describe theproduct in question. For example, the markSWEET is likely to be rejected for marketingchocolates as being descriptive. In fact, itwould be considered unfair to give any

single chocolate manufacturer exclusivity over the word sweet for marketing itsproducts. Similarly, qualitative or laudatoryterms such as RAPID, BEST, CLASSIC orINNOVATIVE are likely to give rise tosimilar objections unless they are part of anotherwise distinctive mark. In such cases, itmay be necessary to include a disclaimerclarifying that no exclusivity is sought forthat particular part of the mark.

3. Deceptive trademarks. These are

Can you Register Defensive Marks?Registration of defensive trademarks is notprovided in the Trade Marks Ordinance,2001. You can only register your marks forgoods on which you actually use yourtrademark or intend to use the same in futurewithin five years from the date of itsregistration.

Is the registration of the trade name ofyour company sufficient?Many people believe that by registering

their business and its trade namewith theSecurities and Exchange Commission ofPakistan or the Registrar of Firms, this namewould also be automatically protected as atrademark. This is a rather commonmisconception. It is important to understandthe difference between trade names andtrade marks.

A trade name is the full name of yourbusiness, such as: Pak Elektron Limitedand it identifies your company or firm.Itmeans the name and style under which anybusiness is carried on whether in

partnership or otherwise as a limitedcompany. It often ends with the wordsLimited or other title that shows the legalcharacter of the company or firm.

A trademark, however, is the sign thatdistinguishes the product(s) of yourcompany. A company may have varioustrademarks. For instance, Pak ElektronLimited sells its products under thetrademarkPEL.

Companies or firms may use a specifictrademark to identify all their products, a

particular range of products or one specifictype of product. Some companies may alsouse their trade name, or a part of it, as atrademark. They should, in that case,register it as a trademark, as for instanceChenOne Stores Ltd.has registered part ofits trade nameChenOneas a trademark.

[Courtesy: ChenOne Stores Ltd.

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Make sure the trademark is easy toread, write, spell and rememberandis suitable to all types of advertisingmedia.Make sure the mark does not haveany undesired connotationsin yourown language or in any of thelanguages of potential export markets.Check that the corresponding domainname(i.e. Internet address) is availablefor registration (for more on therelationship between trademarks anddomain names see page 19).

While selecting one or more words as yourtrademark you should also take into

consideration the implications of selectingcertain types of words:

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When the trademark conflicts withprior trademark rights.

Having two identical (or very similar)trademarks for the same type of productcould cause confusion among consumers.For example the trademark 'Workmenwould not be accepted for registration as amark for furniture sale due to the existenceof the mark Workman for the sameproducts.

The Trademark Registry checks for conflictwith existing marks, including unregisteredpending marks, as a regular part of theregistration process. If the trademark isconsidered to be identical or confusingly

similar to an existing one for identical orsimilar products, it will be rejected.

trademarks that are likely to deceive ormislead consumers as to the nature, quality

or geographical origin of the product. Forexample, marketing margarine under atrademark featuring a COW would probablybe rejected, as it would be consideredmisleading for consumers, who are likely toassociate the mark with dairy products (i.e.butter).

4. Marks considered to be contrary topublic order or morality. Words andillustrations that are considered to violatecommonly-accepted norms of morality andreligion are generally not allowed to beregistered as trademarks in Pakistan.

5. Flags, armorial bearings, officialhallmarks and emblems of states memberof Paris Convention for the Protection ofIndustrial Property (hereinafter ParisConvention) and internationalorganizations protected under ParisConvention are excluded from registration.For example, the Pakistani Flag may not beregistered for marketing a product withoutauthorization from the Government.

6. Shape of Product.The trademarks thatconsist exclusively of the shape which

results from the nature of the goodsthemselves or the shape of goods which isnecessary to obtain a technical result or theshape which gives substantial value to thegoods cannot be registered. For instance if aparticular shape of the shaving razor isrequired to accommodate 6 blades thensuch a shape will not be registered as atrademark.

Relative GroundsApplications are also rejected on relative

grounds in following cases:

What should be kept in mind whenselecting or creating a trademark?Selecting or creating an appropriatetrademark is a critical step, as it is animportant element of the marketing strategyof your business. So what is an appropriatetrademark for your product(s) or services?Evidently, there are no hard and fast rules.But the following five-point checklist maybe useful.

Coined or fanciful words.These areinvented words without any intrinsic or realmeaning. Coined words have the advantageof being easy to protect, as they are morelikely to be considered inherentlydistinctive. On the negative side, however,they may be more difficult to remember forconsumers, requiring greater effort toadvertise the products.

Example:

The trademark PEL is a registered trademark that ispronounceable but does not have any real m eaning.

[Courtesy: Pak Elektron Ltd.]

also require heavy advertising to create theassociation between the mark and the

Product in the minds of consumersExample:The trademark ELEPHANT formarketing mobil e phones.

Suggestive marks:These are marks thathint at one or some of the attributes of theproduct. The appeal of suggestive marks isthat they act as a form of advertising. A slightrisk, however, is that in some cases Registrymay consider a suggestive mark to be toodescriptive of the product.

Five Point Checklist forSelecting Your Trademark

Check that your trademark of choicemeets all the legal requirementsforregistration (see reasons for rejectingapplications on page 7 & 8).Do a trademark searchto make surethat it is not identical or confusinglysimilar to existing trademarks(see page 12).

However, since the reference is indirect,therefore the mark has been registered.However, if the reference is direct then thesame will become a descriptive mark andmay not be registered.

Irrespective of the type of mark you choose,it is important to avoid imitating existing

trademarks. A slightly altered competitor'strademark or a misspelt well-known orfamous mark is unlikely to be registered.

Example: WORKMAN is a registeredtrademark for furniture and woodenproducts.It would be unwise to try to sellthe same or similar products using thetrademark VORKMAN, WERKMAN orWURKMANN etc., as they would probablybe considered confusingly similar to theexisting mark and are unlikely to beregistered.

Example:

The trademark Business Plus for a news chann el

hints at the fact that the channel k eeps youinform ed of business activi ties.

Arbitrary marks:These are words thathave a meaning that has no relation to theproduct they advertise. While these types ofmarks will also be easy to protect, they may

BusinessBusiness & Current Affairs

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REGISTERING ATRADEMARK STEP BY STEP

The ApplicantAs a first step, you have to send or hand ina duly completed trademark application(2 in original & 6 photocopies) onprescribed form TM-1 (Annex III), whichincludes the contact details of yourcompany, a graphic illustration of itsmark, a description of the goods orservices and class for which your businesswishes to obtain trademark registration,and pay the required fees in form of bankdraft or pay order in favour of DG, IPOPakistan. The applicant may request forsearch of the trademark that he/sheintends to register by submitting TM-55form (Annex IV) to the Trade MarksRegistry, along with fee.

Note that some trademark offices(e.g. US and Canada) may also requireproof of use or a declaration that yourcompany intends to use the trademark.In Pakistan no such declaration isrequired at the time of filing and atrademark can be filed on the basis ofits proposed use in future. However,such trademark is required to be usedwithin five years from the date of

registration.The Trademark Registry:The steps takenby the Trademark Registry for registrationof a trade mark in Pakistan are asdescribed below:Formal examination:At the time of filingapplication and before issuance of anyapplication number the trademark officeexamines the application to make surethat it complies with the administrativerequirements or formalities (i.e., whetherthe application fee has been paid and theapplication form is properly filled in).

Application number: The applicationnumber is given at the time of filing of

application; however, official receipt isusually given within three to four weeksafter filing.Substantive examination:The trademarkoffice examines the application to verifywhether it complies with all thesubstantive requirements (e.g., whether itbelongs to a category which is excludedfrom registration by the trademark lawand whether the trademark is in conflictwith an existing mark on the register in therelevant class). If there are someobjections then an examination report(commonly known as Show CauseNotice) is sent to the applicant.

Reply: The applicant files reply to theobjections raised in the examinationreport.Hearing: In most of the cases, theapplicant files a response to theexamination report and a hearing isappointed and the Registrar hears thearguments of the applicant or his agent insupport of the stance taken in the reply.Publication and opposition:After hearingif the Registrar is convinced thentrademark is accepted for publication inofficial Trade Marks Journal with a twomonth's period of time (furtherextensions, not exceeding two months,may be obtained) for third parties to

oppose its registration.Registration:If there is no opposition oronce it has been decided that there are nogrounds for refusal, the trademark isregistered, and a registration certificate isissued which is valid for 10 years.Renewal:the mark may be renewed afterevery ten years, for indefinite term, onpayment of required renewal fees, but theregistration may be canceled entirely forcertain goods or services if the trademarkhas not been used for a continuous periodof five years.

Application Filed

30 days

Official Receipt

4 to 8 months

Substantive Examination / Examination Report

2+3 months

Reply to Examination Report

Hearing

Accepted Rejected

4 to 8 months appeal beforeHigh Court

Publication

Demand Note Issued Opposition

30 days

Fee Paid

Registration Certificate Issued

* The boxes in blue indicate the likely time frame.* The boxes in green indicate the different stages of application.


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How long does it take to register a

trademark?As the Trade Marks Registry conductssubstantive examination, therefore it takeslonger to get a trademark registered inPakistan as compared to some othercountries. The registration process used totake three to four years for its completion.However, with ongoing computerization ofthe Registry, the process has been expeditedand now it is completed positively withintwo years and is likely to get more expedientover time. Application for renewal of atrademark can be filed within six monthsbefore the date of expiry. After expiry of atrade mark, the same can be renewed withinsix months after paying late fee.

What are the costs associatedwith trademark protection?It is important to keep in mind, and properlybudget, the costs related to trademarkcreation and registration in Pakistan. Thesecosts may include the following:1. Costs associated with the creation of a

logo or word to be used as atrademark, as many companiesoutsource this task.

2. Cost for conducting a trademark searchi.e. Rupees 500.

3. The other official costs associated withthe registration process are as under:

Details

Filing application

Publication fee

Registration fee

1000 Rupees

There is no official fee,but printing blockshave to be provided bythe applicant for its mark.

3000 Rupees

Official Fees

4. Companies choosing to use a

professional trademark agent to assist inthe registration process would faceadditional costs but would probablysave significant time and energy infollowing the registration process.

5. If you intend to register your trademarkin a foreign country you may have toincur additional costs.

The above cost estimates are for registrationof one trademark in one class. It may rise ifyou intend to register your trademark inmore than one class.

How can you find out if your chosentrademark might conflict with otherregistered trademarks? What is atrademark search?Before submitting an application forregistering a trademark, you should ensurethat a proper trademark searchhas beencarried out. This is done to make sure thatthe trademark you intend to use, or a similarone, is not already registered by anothercompany for identical or similar products.

You can either make a trademark searchyourself or hire the services of a trademarkagent. Either of you can do the searchthrough the Trademark Registry. There is asearch section in the Registry and anexaminer of trademarks is head of thisSection. Always bear in mind that atrademark search is only preliminary. It maybe difficult to make sure that your trademark

of choice is not confusingly similar toexisting validly-registered trademarks. Thisis why the guidance of an experiencedtrademark agent, who is familiar with thepractice of the trademark office and courtdecisions, may be very helpful.

Trademarks are grouped into classesaccording to the goods or services they serve

to identify (see the classification of goodsand services in Annex II). However, pleasebear in mind that in Pakistan currentlyclasses 01 to 42 are available and classes 43to 45 are not yet available (proposed to beincluded). Appropriate amendments in theTrademark Ordinance, 2001 are however,being considered by the Government ofPakistan. Once these amendments are madeTrade Marks Registry will start entertainingapplications falling in classes 43 to 45 aswell.

A WELLCLASSIFIED SYSTEM

While filling in your trademarkapplication form you are required toindicate the goods or services for whichyou wish to register your trademark and togroup them according to classes. Theserefer to the classes in the trademarkclassification system.

The trademark classification systemallows for the storage of data on registeredtrademarks in an orderly manner inrelation to the types of goods or services.

This makes it easier to retrieve informationfrom trademark databases. It is critical toregister your trademark in all classes inwhich you intend to use your trademark.

Example:How are products classified? Let us take anexample. If your company is producingknives and forks, then your trademarkapplication should be made for thecorresponding goods in class 8. If,however, you wish to market otherkitchen utensils (such as containers, pansor pots) using the same trademark you willalso have to register the mark for thecorresponding goods in class 21 and youwould have to make a separate

application for each class of product sincemultiple class applications are notacceptable under the Trade MarksOrdinance, 2001.


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Do you need a trademark agent to file atrademark application?

Pakistani law does not require you to hire atrademark agent to file an application; youmay file the application yourself. However,the services of a trademark agent skilled inconducting trademark searches and familiarwith the detailed procedure for trademarkregistration may be used to save time,ensure that you apply for protection in theappropriate trademark class(es) and avoidrefusal on absolute grounds. If you apply fortrademark registration abroad you may berequired to have a trademark agent who isresident in the relevant country. You mayfind list of IP attorneys on the following

websites:www.smeda.org.pkwww.ipo.gov.pk

For how long is your registeredtrademark protected?While the term of protection may vary indifferent countries, in Pakistan registeredtrademarks are protected for 10 years.However, on payment of prescribedrenewal fee trademark registration may berenewed after every ten years as long as youare interested in protection of your

trademark. Make sure that someone in yourcompany or firm is made responsible for

ensuring timely renewal of trademarkregistrations in all countries of continuinginterest to your business.

Is trademark registration in Pakistanvalid internationally?The legal rights arising out of a trademarkregistration are normally limited to theterritory to which they pertain; so,ordinarily, valid registration of a trademarkin Pakistan gives you rights only withinPakistan unless your mark is considered tobe a well-known mark. (For information onwell-known marks see page 17).

Should you consider protecting yourtrademark abroad?All the main reasons for registering yourtrademark in Pakistan also apply to thecommercialization of your products inforeign markets. It is, therefore, highlyadvisable to register your trademarkabroadif you wish to grant a license to use inother countries. Exporting goods bearing adistinctive trademark will enable yourproducts to be recognized in foreignmarkets, allowing your company to build areputation and image among foreign

consumers, which may result in higherprofits.

How can you register the trademark ofyour company abroad?Once you have registered the trademark inPakistan, you may want to register it in oneor more other countries as well i f you wish toexport your product or grant a license toanother company to use your trademark inanother country. Typically there are threemain ways to register the trademark in othercountries:

OutsourcingTrademark CreationDesigning a trademark is a creativeprocess. In Pakistan, a creatorautomatically owns the copyright overcreative or artistic works, such as theartwork of a trademark. Therefore, whenthe creation of a trademark is outsourced,it is usually best to clarify issues ofcopyright ownership in the original

agreement and/or to make sure thecopyright over the trademark is formallyassigned to your company.

1. The National Route:your business mayapply to the trademark office of eachcountry in which it is seeking protection byfiling the corresponding application in therequired language and paying the requiredfees.As indicated earlier, a country may requireyou to use the services of a locally-basedtrademark agent for this purpose.

2. The Regional Route:if you wish to applyfor protection in countries which aremembers of a regional trademark systemyou may apply for registration, with effect inthe territories of all Member countries, byfiling an application at the relevant regional

office. The regional trademark offices are:

The African Regional IndustrialProperty Office

The Benelux Trademark Office

The Office for the Harmonization ofthe Internal Market of the EuropeanUnion

The Organisation Africaine de laProprit Intelectuelle.

3. The International Route:Madrid system(administered by WIPO) is used to register atrademark in more than 70 countries that areparty to the system. Pakistan is not yet amember of Madrid Protocol but is expectedto become a member in near futureand iscurrently in process of upgrading itstrademark Registry to enable it to fullyimplement the system.

Advantages of using theMadrid system

a single international application;

in one language;

subject to one set of fees anddeadlines.

The principal advantages of using theMadrid system are that the trademarkowner can register his trademark in all thecountries party to the system by filing:

Thereafter, the international registrationcan be maintained and renewed througha single procedure.

You can find more information oninternational registration of marks on theWIPO website: www.wipo.int/madrid/.

A list of the Member countries of theMadrid Union is available in Annex V.


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What are service marks?A service markis a common name given totrademarks registered to distinguish theservices of an enterprise from those ofothers. Pakistani law does not recognizeservice mark as a term independent from atrademark. Services may be of any kind,such as financial, banking, travel,advertising or catering, to name a few.

association whose members may use acollective mark to market their productsunder a common trade mark.

An application for registration of a collectivemark may be filed with the Registrar alongwith regulations governing the use of themark. These regulations will specify thepersons authorized to use the mark, theconditions of membership of the associationand, where they exist, the conditions of theuse of the mark, including any sanctionsagainst misuse. Collective marks may be aneffective way of jointly marketing theproducts of a group of enterprises whichmay find it more difficult for their individualmarks to be recognized by consumersand/or handled by the main distributors.

Example: In Pakistan the Basmati GrowersAssociation has filed an application forregistration of mark Basmati as acollective mark. This application is not yetregistered.

Types of Trademark3Marks used to distinguish certain goods or services as those producedor provided by a specific enterprise.Trade marks

Marks used to distinguish goods or services produced or providedby members of an association.

Collectivemarks

Certificationmarks

Well-knownmarks

Marks used to distinguish goods or services that comply with a set ofstandards and have been certified by a certifying authority.

Marks that are considered to be well-known in the market and as aresult benefit from stronger protection.

Example:

[Courtesy: Medi a Times Ltd]

What are collective marks?As per the Trademark Ordinance 2001, acollective markis a mark distinguishing thegoods or services of members of anassociation, which is the proprietor of themark, from those of other businesses. Acollective mark is generally owned by an

What are certification marks?As per the Trademark Ordinance 2001, acertification mark is a mark indicating thatthe goods or services in connection withwhich it is used are certified by the owner ofthe mark in respect of origin, mode ofmanufacture of goods or performance ofservices, quality, accuracy or othercharacteristics.

Certification marks are given for compliancewith defined standards, but are not confinedto any membership. They may be used byanyone whose products meet certainestablished standards. In many countries,the main difference between a collective

mark and a certification mark is that theformer may only be used by a specific groupof enterprises, e.g., members of anassociation, while a certification mark maybe used by anybody who complies with thestandards defined by the owner of thecertification mark.

An important requirement for a certificationmark is that the entity which applies for

registration is considered competent tocertify the products concerned.

Example: The Woolmark symbol is the

registered trade (certification) mark of theWoolmark Company. The Woolmark is aquality assurance symbol denoting that theproducts on which it is applied, are madefrom 100% new wool and comply with strictperformance specifications set down by theWoolmark Company. It is registered in over140 countries including Pakistan, and islicensed to manufacturers who are able tomeet these quality standards in 65 countries.

[Courtesy: The Woolmark Company]

What are well-known marks?Well-known marks are marks that areconsidered to be well-known in Pakistanand belong to an entity based in a country,other than Pakistan, which is a member ofthe Paris Convention. Well-known marksgenerally benefit from stronger protection.For example, well-known marks may beprotected even if they are not registered (orhave not even been used) in a given

territory. In addition, while marks aregenerally protected against confusinglysimilar marks only if used for identical orsimilar products, well-known marks areprotected against confusingly similar marksfor even dissimilar products, if certainconditions are met. The main purpose of thisstronger protection is to prevent companiesfrom free-riding on the reputation of a well-known mark and/or causing damage to itsreputation or goodwill.

Example: Let us assume thatWONDERCOLA is the famous trademark of

a soft drink. Wondercola Inc. would thenbenefit from automatic protection in thosecountries where well-known marks enjoystronger protection and where the mark iswell-known for soft drinks. The protectionwould also be available for unrelated goodsand services. That is to say that if anothercompany decides to market other products,ranging from T-shirts to sunglasses, using theWONDERCOLA mark, it will have to seekthe authorization of Wondercola Inc. or riskbeing sued for infringement of trademarkrights.

BusinessBusiness & Current Affairs

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Using Your Trademark4Can you register a trademark withouthaving used it?You may apply for registration before youhave used the trademark but if the trademarkis not used for five years followingregistration the same may be taken off thetrademark register. This mean you couldloseyour rights in your trademark.

TM or ?

The use of , TM or equivalent symbols

next to a trademark is not a requirementand generally provides no further legalprotection. Nevertheless, it may be aconvenient way of informing others that agiven sign is a trademark, thus warningpossible infringers and counterfeiters.The symbol is used once the trademarkhas been registered, whereas TM denotesthat a given sign is a trademark. Using thesymbol for an unregistered mark is anoffence under Pakistani law punishablewith imprisonment for a term which shallnot be less than one month but whichmay extend to six months, or with fine

which shall not be less then twentythousand rupees, or with both.

[Courtesy: Compm ughal Engineerin g Company ]

is used exactly as it is registered. Monitor itsuse closely as it is crucial for the image ofyour company's products. It is alsoimportant to avoid using the trademark as averb or noun so that it does not come to beperceived by consumers as a generic term.

Can your company use the sametrademark for different products?Different trademarks may be used for thedifferent products lines of a company.Depending on its branding strategy, each

company will decide whether to use thesame trademark for its products, extendingthe brand every time a new product isreleased, or to use a different mark for eachproduct line.

Extending an existing brand to new productsenables the new product to benefit from theimage and reputation of the mark. However,the use of a new mark, more specific andrelevant to the new product, may also proveadvantageous and enable the company totarget the new product to a specificcustomer group (e.g. children, teenagers,

etc.) or to create a specific image for the newproduct line.

How should you use trademarks inadvertising?If your mark is registered with a specificdesign or font, make sure that the trademark

Many companies also choose to use a new

brand in conjunction with an existing brand.Different companies adopt differentstrategies. Whatever your choice, youshould make sure that your trademark isregistered for all categories of goods and/orservices for which it is, or will be, used.

What should be kept in mind when usingtrademarks on the Internet?The use of trademarks on the Internet hasraised a number of controversial legalproblems with no easy or uniform solution.One important problem arises from the factthat trademark rights are territorial (that is,they are only protected in the country orregion where the mark has been registeredor used), whereas the reach of the Internet isglobal. This creates problems when it comesto settling disputes between persons orcompanies legitimately owning identical orconfusingly similar trademarks for identicalor similar goods or services in differentcountries. Legislation in this area is stilldeveloping and treatment may differ fromone country to another.

What is a domain name and how does itrelate to trademarks?An important problem concerns the conflictbetween trademarks and domain names.Domain names are Internet addresses, andare commonly used to find websites. Forexample, the domain name 'wipo.int' isused to locate the WIPO website atwww.wipo.int.

Over time, domain names have come toconstitute business identifiers thus oftencoming into conflict with trademarks. Oftennational laws, or courts, treat the registrationof the trademark of another company or

[Courtesy: Nestle Pakistan Ltd]

person as a domain name as trademarkinfringement, popularly known ascybersquatting. If this happens, then, yourbusiness may not only have to transfer orcancel the domain name, but it may alsohave to pay damages or a heavy fine.Therefore, it is important that you choose adomain name which is not the trademark ofanother company, particularly a well-known trademark. In order to find outwhether a particular trademark is alreadyprotected, you can directly contact theTrademark Registry. Many other regional ornational trademark offices operate Internetsearchable trademark databases. A list ofsuch databases is available on WIPO'swebsite at:www.arbiter.wipo.int/trademark/.

On the other hand, if the trademark of yourcompany is being used in a domain name oris being cybersquatted by anotherindividual or company then you may takeaction to stop such misuse/infringement ofthe rights of your company. In such a case,one option would be to use WIPO's verypopular online administrative procedure fordomain name dispute resolution at:www.arbiter.wipo.int/domains/. ThisWIPO website includes a model complaintas well as a legal index to the thousands ofWIPO domain name cases that have alreadybeen decided.


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21

Can you license your trademark to othercompanies?

Trademarks can be licensed to othercompanies. In such cases, the trademarkowner retains ownership and merely agreesto the use of the trademark by one or moreother companies. This is usually done onpayment of royalties and involves theconsent of the trademark owner, which isusually specified in a formal licensingagreement. Depending on the nature of theagreement, the licensor often retains somedegree of control over the licensee toguarantee that a certain quality ismaintained.

In practice, trademark licenses arefrequently granted within broader licensingagreements, for example, franchisingagreements or agreements including thelicensing of other intellectual property rightssuch as patents, know-how and somedegree of technical assistance for theproduction of a given product. Please notethat a grant of license must be registeredwith the Trade Marks Registry otherwisesome restrictions on the use of license areimposed by the law.

What does a franchising agreement have

to do with trademarks?The licensing of a trademark is central to afranchising agreement. In franchisingagreements the degree of control of thetrademark owner over the franchisee isgenerally greater than is the case forstandard trademark licensing agreements.In the case of franchising, the franchiserallows another person (the franchisee) touse his way of doing business (includingtrademarks, know-how, customer service,software, shop decoration etc.) inaccordance with a set of prescriptions and

in exchange for compensation or royalty.

Example

A very popular beauty salon of Pakistanoperating under the trademark Depilex,developed a successful model of franchisingsaloons. It started with Depilex Institute andBeauty Salon business in Karachi. During1990s, till 1998 there were 3 branches inKarachi and Lahore. But today in just 10

years, the business network has grown tomore than 30 franchises in Pakistan. Thesystem includes proper training manuals forfranchisees on all aspects ofrunning/managing the Depilex Saloon,standardization of products used, quality ofservices, staff/worker uniforms, corporatecolour etc. Depilex imparts its knowledge toits franchisees and retains the right tosupervise the franchisees. As a crucialcomponent of franchising Agreement thefranchisees are also authorized and obligedto use the Depilex trademark. Depilex hasnow taken trademark protection in UAE,

USA, and UK and own Salons in Dubai,London and New York.

Is there any restriction in selling orassigning the trademark of your companyto another company?It is increasingly possible to sell or assign atrademark independently from thebusiness that currently owns it. In the caseof sale or assignment of a trademark, it isrequired to deposit a copy of theagreement, or parts of it, at the TrademarkRegistry.

20

Do you need to register all smallmodifications to your trademark?

Many trademarks, including some of themost famous, have slightly changed orevolved over the years in order tomodernize the image of a company or adaptto new advertising media. Marks may bechanged or adapted, but your company willhave to be careful and consult with thetrademark office(s) concerned or acompetent trademark agent as to whether aspecific change will require the submissionof a new application and payment ofrelevant fees.

[Courtesy: Daw n Bread (Pvt.) Ltd]

Example

1984 2003 2008


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infringement, the judicial authorities mayunder sections 47 to 51 of Trade MarksOrdinance, 2001 order, upon your request,the offending trade mark to be erased,removed or obliterated from any infringinggoods, material or articles; or secure thedestruction of the infringing goods, materialor articles, if it is not reasonably practicablefor the offending trade mark to be erased,removed or obliterated. The penalties forapplying false trade description, etc. under

Section 99 of the Trade Marks Ordinance,2001 are punishable with imprisonment fora term which shall not be less than threemonths but which may extend to two years,or with fine which shall not be less than fiftythousand rupees, or with both;

2. If your business considers theinfringement to be willful and knows thelocation of the infringing activity, then itmay wish to take surprise action by lodging,preferably with the help of a trademarklawyer, a complaint under sections 482,484, 485, 486 or 487of Pakistan Penal

Code, 1860, with the police who mayconduct a raid without prior notice to theallegedly offending company/person;

3. In order to prevent theimportation ofcounterfeit trademark goods,measures atthe international border are available totrademark owners. As a trademark owner,your company may seek the assistance of thecustoms authorities at the border inaccordance with section 53 of the TradeMarks Ordinance, 2001, that is, before thecounterfeit goods have been distributed in

2322

What should your business do if itstrademark is being used by others withoutauthorization?It is up to your company as a trademarkowner to identify any infringement and todecide what measures should be taken toenforce trademark rights.

It is always useful to seek expert advice ifyou believe that someone is infringing yourtrademark. An intellectual property lawyer

would be the right person to give youinformation on the existing options inPakistan and, presumably, also inneighboring countries to initiate actionagainst counterfeiting and infringement andwill provide you with advice on how toenforce your rights.

If you are faced with infringementof yourtrademark rights, then you may choose tobegin by sending a letter preferably through

your lawyer (commonly known as a LegalNotice ) to the alleged infringer informing

him/her of the possible existence of a

conflict.

If the infringement does not stop after yourletter or legal notice, then you may considertaking one or more of the following steps:

1. You may seek injunctive/restrainingorder from the court by filing an actionunder section 46 of the Trade MarksOrdinance, 2001 and courts generally issuean order restraining the infringer from usingthe infringing mark till the decision of thecase. As an effective deterrent to

Pakistan. The assistance of customs would

require a security or equivalent assurancesufficient to protect the importer, consigneeor owner of the goods and an undertaking toindemnify the customs authorities.

In some instances, an effective way ofdealing with infringement is througharbitration or mediation. Arbitrationgenerally has the advantage of being a lessformal, shorter and cheaper procedure thancourt proceedings, and an arbitral award ismore easily enforceable. In Pakistanarbitration matters are governed byArbitration Act, 1940.

An advantage of mediation is that the partiesretain control of the dispute resolutionprocess. As such, it can help to preservegood business relations with anotherenterprise with which your company maylike to collaborate in the future.

Enforcing your Trademark5For more information on arbitration and

mediation, you can also see the website ofthe WIPO Arbitration and Mediation Centeratwww.arbiter.wipo.int.

The above actions can be taken by theregistered proprietor or by a person holdinga valid license or assignment deed from theregistered proprietor, duly registered withTrade Marks Registry.


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Annex I

2524

1. Intellectual Property Organization of Pakistan (IPO Pakistan) IPO PakistanHeadquarter:House No. 23, Street 87, Ataturk Avenue (West), Sector G-6/3, IslamabadTel: +92-51-9208146 Fax: +92-51-9208157Website: www.ipo.gov.pk Email: [email protected]

IPO-Pakistan's Trade Marks Registry provides following services to its clients with specialfocus on SMEs:Advice on Trade Marks filing (detailed procedure of filing of applications for grant of

Trade Marks, different application forms for the purpose, Trade Marks Journal,Classification for Goods and Services etc. may be downloaded by visiting IPOwebsite at www.ipo.gov.pk);

Processing of Trade Marks registrations;Hearings of the applications;Organising seminars through out the country for providing information regarding the

registration of Trade Marks to the members of the Chambers that mostly comprises smalland medium enterprises;Online application filing and tracking;Online search of trade mark database.

IPO Pakistan Regional Office3rd Floor, Farid Tower,19 Temple Road, Lahore.Tel: +92-42-7224395Fax: +92-42-7224396

Email: [email protected]

Trademarks RegistryRegistrar Trade Marks RegistryPlot No. CD-3, Behind KDA Civic Centre,Gulshan-e-Iqbal Block- 14, Karachi.Tel: +92-21-9230538Fax: +92-21-9231001Email: [email protected]

Patent OfficeController of Patents & Designs2nd Floor Kandawala Building,M. A. Jinnah Road, Karachi.Tel: +92-21-9215488

Fax: +92-21-9215489Email: [email protected]

Copyright OfficeRegistrar Central Copyright OfficeGround Floor, Liaqat Memorial LibraryBuilding, National Stadium Road, Karachi.Tel: +92-21-9230140Fax: +92-21-9230140Email: [email protected]

2. Small and Medium Enterprises Development Authority (SMEDA)

SMEDA Head Office:6th Floor, L.D.A Plaza, Egerton Road, Lahore-54792Tel: 111-111-456Fax: (042) 6304926Website: www.smeda.org.pk

In order to encourage and urge small businesses to effectively use IP system for theirbusiness success, SMEDA is providing following services to SMEs:

a) IP Helpline:SMEDA 'IP Helpline' assist SMEs on all forms of IPs including trademarks, patent, copyrightsand industrial designs. SMEs may contact our regional legal services officer for solving theirqueries on IP matters.

b) Training Programs:Keeping in view the information needs of SMEs, SMEDA conducts on regular basis IPawareness programs across Pakistan in collaboration with local chambers of commerce andindustry, IPO Pakistan and Trade Associations. Likewise, IP awareness programs are plannedespecially for small trade bodies in different regions for wider outreach.

REGIONAL OFFICES

PUNJAB8th Floor, L.D.A Plaza, Egerton RoadLahore-54792Tel: 111-111-456Fax: (042) 6304926Email: [email protected]

SINDH5th Floor, Bahria Complex 2,M.T.Khan Road,KarachiTel: (021) 111-111-456Fax: (021) 5610572Email: [email protected]

NWFPGround floor, State Life BuildingThe Mall, PeshawarTel: (091) 9213046-47Fax: (091) 286908Email: [email protected]

BALOCHISTANBungalow No. 15-AChaman Housing SchemeAirport Road, Quetta.Tel: (081) 2831702/2831623Fax: (081) 2831922Email: [email protected]


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Annex II

2726

CLASSIFICATION OF GOODS AND SERVICESNames of the Classes(Parts of an article or apparatus are, in general, classified with the actual article or apparatus,except where such parts constitute articles included in other classes).

Chemicals used in industry, science and photography, as well as agriculture, horticulture, forestry;manures (natural and artificial); fire extinguishing compositions, tempering substances andchemicals preparations for soldering, chemical substances for preserving foodstuff, tanningsubstances, adhesives used in industry, unprocessed artificial resins; unprocessed plastics.Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, coloringmatters, dyestuffs; mordents; raw natural resins; metals in foil and powder form for painters,decorators, printers and artists.

Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring andabrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.Industrial oils and greases (other than edible oils and fats and essential oils); lubricants, dustabsorbing wetting and binding compositions; fuels (including motor spirit) and illuminants,candles, tapers, nightlights and wicks.Pharmaceutical, veterinary and sanitary substances; infants' and invalids' foods; dietetic substancesadapted for medical use; plasters, materials for bandaging; material for stopping teeth, dental wax,disinfectants, preparations for killing weeds and destroying vermin; fungicides, herbicides.Common metals and their alloys, anchors, anvils, bells, rolled and metal building materials,transportable building of metals; materials of metal for railway tracks, chains (except driving chainsfor vehicles); non-electric cables and wires of common metal; locksmith's work; metallic pipes andtubes; safes and cash boxes; steel balls; horseshoes; nails and screws; ironmongery; small items ofmetal hardware; other goods in non-precious metal not included in other classes; ores.Machines and machine tools, motors and engines (except for vehicles), machine coupling andtransmission components (except for land vehicles) agricul tural implements, incubators for eggs.Hand tools and implements (hand-operated); cutlery, forks and spoons; side arms; razors.

Scientific, nautical, surveying and electrical apparatus and instruments (including wireless),photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision),life-saving and teaching apparatus and instruments, coin or counter-freed apparatus; talkingmachines; cash registers, calculating machines, apparatus for recording, transmission reproductionof sound or images, magnetic data carriers, recording discs, automatic vending machines andmechanisms for coin apparated apparatus, data processing equipment and computers; fireextinguishing apparatus.Surgical, medical, dental and veterinary instruments and apparatus, artificial limbs, eyes and teeth,orthopedic articles; suture materials.Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, watersupply and sanitary purposes.Vehicles, apparatus for locomotion by land, air or water.Firearms, ammunition and projectiles, explosives; fireworks.Precious metals and their alloys and goods in precious metals or coated therewith (except cutlery,

forks and spoons), jewellery, precious stones, horological and other chronometric instruments.Musical Instruments (other than talking machines and wireless apparatus).

Paper and paper articles, cardboard and cardboard articles; printed matter, newspapers andperiodicals, books; book-binding materials, photographs, stationery, adhesives materials(stationery), artists' materials, paint brushes, typewriters and office requisites (other than furniture),instructional and teaching material (other than apparatus), playing cards; (printers') type and cliches(stereotype); plastic materials, for packaging (not included in other classes).Gutta percha, rubber, balata and substitutes, articles made from these substances and not includedin other classes, materials for packing, stopping or insulating, asbestos, mica and their products;hose pipes (non-metallic); plastics in extruded form for use in manufacture.Leather and imitations of leather, and articles made from these materials, and not included in otherclasses, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks,whips, harness and saddlery.Building materials (non-metallic), natural and artificial stone, cement, lime, mortar, plaster andgravel; pipes of earthenware or cement; road-making, materials; asphalt, pitch and bitumen,portable buildings; monuments; not of metal, chimney pots; non-metallic rigid pipes for building;non-metallic; transportable buildings.Furniture, mirrors, picture frames; articles (not included in other classes) of wood, cork, reed, cane,

wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutesfor all these materials, or of plastics.household and kitchen utensils and containers (not of precious metal or coated therewith), combsand sponges, brushes (other than paint brushes), brush-making materials, articles for cleaningpurposes, steelwool, glassware, porcelain and earthenware not included in other classes; unworkedor semi-worked glass (except glass used in building).Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes)padding and stuffing materials (except of rubber or plastics) raw fibrous textile materials.Yarns and threads, for textile use.Textiles and textile goods, not included in other classes, bed and table covers.Clothing, footwear, headgear.Lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificialflowers.Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wallhangings (non-textile).Games and playthings, gymnastic and sporting articles not included in other classes, decorations for

Christmas trees.Meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables,jellies, jams, fruit sauces, eggs, milk and milk products; edible oils and fats; pickles.Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made fromcereals, bread, biscuits, cakes, pastry and confectionery, ices, honey, treacle, yeast, baking-powder,salt, mustard, pepper, vinegar, sauces, (condiments), spices; ice.Agricultural, horticultural and forestry products and grains not included in other classes, liveanimals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt.Beers, mineral and aerated waters and other non-alcoholic drinks, syrups and other preparations formaking beverages; fruit drinks and fruit juices.Alcoholic beverages (except beers).Tobacco; smokers' articles, matches.

1.

2.

3.

4.

5.

6.

7.

8.

9.

10.

11.

12.13.14.

15.

16.

17.

18.

19.

20.

21.

22.

23.24.25.26.

27.

28.

29.

30.

31.

32.33.34.35.


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2928

Advertising, business management, business administration, office functions.Insurance, financial affairs; monetary affairs; real estate affairs.Building construction; repair, installation services.Telecommunications.Transport, packaging and storage of goods, travel arrangement.Treatment of materials.Education, providing of training, entertainment, sporting and cultural activities.Providing of food and drink, temporary accommodation, medical, hygienic and beauty care,veterinary and agricultural services, legal services; scientific and industrial research; computerprogramming, services that can not be classified in other classes.

35.36.37.38.39.40.41.42.

SERVICES

Note:In order to conform to the Nice Classification System, following classes are beingconsidered to be included in the list of classification of goods and services underTrademark Ordinance

Services for providing food and drink; temporary accommodation.Medical services; veterinary services; hygienic and beauty care for human beings or animals;agriculture, horticulture and forestry services.Personal and social services rendered by others to meet the needs of individuals; securityservices for the protection of property and individuals.

43.44.

45.

Annex III

Application for registration of trade mark for goods or services and to register a domain nameUnder section 22(1), section 84(2); rule 12(To be accompanied by a duplicate of this Form and by six additional representations affixedon a durable paper of size 13 x 8)

On representation to be fixed within this space and six others to be sent separately.

Representation of the larger size may be folded but must then be mounted upon linen orother suitable material affixed thereto. See rule 17.

Application is hereby made for registration in the register of the accompanying trade markin class (a)____________in respect of (b)___________in the name(s) of (c)______________trading as (d) ______________ whose trade or business address is (e) __________________who claim(s) to be the proprietor(s) thereof and by whom the said mark is proposed to beused/being used since____________ in respect of said goods or services (f) ____________If the application is for a series of marks, indicate how many marks in the series(g) ____________________

If the application is for domain name indicate whether it is in respect of goods or services

If colour is claimed, indicate here and state the colour(s) (h) ____________

Address for service in Pakistan to which all correspondence should be sent(I) ___________________

Dated this __________ day of__________ 200___.

Signature (j) ______________Name of signatory in block letters.

To,The Registrar of Trade Marks,Trade Marks Registry,Karachi.

FORM TM-1

Fee: See entry No.1of the First Schedule


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3130

INSTRUCTIONS TO FILL FORM TM-1

(a) Insert the serial number of the class as indicated in Schedule IV to the Trade Marks Rules2004.

(b) Specify the goods or services. Only goods and services included in one and the sameclass should be specified. Please consult Schedule IV attached to the rules to check theclass of goods and services or the Book on International Classification of goods issued bythe International Bureau for the Protection of Intellectual Property, Geneva.

(c) Insert legible the full name, description and nationality of the applicant.

(d) Insert the trading style, if any.

(e) Insert the full trade or business address of the applicant.

(f) Strike out whichever is not applicable. If the mark is already in use, file the proof thereofby way of affidavits, publicity material, sale figures etc.

(g) Indicate how many marks are in the series.

(h) Indicate whether domain name is in respect of goods or services.

(i) State the colour(s) claimed.

(j) State address for service in Pakistan.

(k) Signature of the applicant. If the mark is owned by an individual, he must sign it, i fowned by a partnership firm, by the Managing Partner, if the applicant is a limitedcompany, by the Managing Director or Director.

Notes (1) The prescribed fee should be paid alongwith this application either through acheque drawn in favour of or through a money order address to the Registrar of Trade Marks.

(2) Where the application is being filed through an attorney, a power of attorney on FormTM-48 duly stamped must accompany this application.

(3) If the word mark is in a language other than English, Urdu or regional Pakistani languages,its translation and transliteration in the form of an affidavit must accompany this application.

Request for Search under Rule 87The Registrar is hereby request under rule 88 to search in Class*________________ inrespect of (a) ______________________________ to ascertain whether any trade marks areon record which resemble the trade mark sent herewith in duplicate (each representationbeing mounted on a sheet of strong paper approximately 13 inches by 8 inches in size).

Dated this__________ day of _______20____.

Signature (d) _________________Name of signatory in block letters(c) _________________________

To,The Registrar of Trade Marks,The Trade Marks Registry,Karachi.

*The Registrar' s direction should be obtained if the class is not known.

(a) Here specify the goods (in the class stated) in respect of which the search is to bemade.(b) Signature.(c) Address.

Annex IVFORM TM-55

Fee: See entry No.54of the First Schedule


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32

Annex VList of the Member Countries of the Madrid Union1. Albania

2. Algeria

3. Antigua and Barbuda

4. Armenia

5. Australia

6. Austria

7. Azerbaijan

8. Bahrain

9. Belarus

10. Belgium11. Bhutan

12. Bosnia and Herzegovina

13. Botswana

14. Bulgaria

15. China

16. Croatia

17. Cuba

18. Cyprus

19. Czech Republic

20. Democratic People's Republic of Korea

21. Denmark

22. Egypt

23. Estonia

24. European Community

25. Finland

26. France

27. Georgia

28. Germany

Note:For up-to-date information, visit website at the following url: www.wipo.int/madrid/en/members/

29. Ghana

30. Greece

31. Hungary

32. Iceland

33. Iran (Islamic Republic of Iran )

34. Ireland

35. Italy

36. Japan

37. Kazakhstan

38. Kenya39. Kyrgyzstan

40. Latvia

41. Lesotho

42. Liberia

43. Liechtenstein

44. Lithuania

45. Luxembourg

46. Madagascar

47. Moldova

48. Monaco

49. Mongolia

50. Montenegro

51. Morocco

52. Mozambique

53. Namibia

54. Netherlands

55. Norway

56. Oman

NOTE:For further information on the other business-oriented content and publications onintellectual property rights please visit WIPO's SME website atwww.wipo.int/sme/en/.In addition, you may also subscribe to the free electronic monthly newsletter of the SMEsDivision of WIPO, available at www.wipo.int/sme/en/documents/wipo_sme_newsletter.htmlRecent activities on IP matters by SMEDA are available atwww.smeda.org/services/Intellectual-Property-for-Bussines-Success.html

57. Poland

58. Portugal

59. Republic of Korea

60. Romania

61. Russian Federation

62. San Marino

63. Sao Tome and Principe

64. Serbia

65. Sierra Leone

66. Singapore67. Slovakia

68. Slovenia

69. Spain

70. Sudan

71. Swaziland

72. Sweden

73. Switzerland

74. Syrian Arab Republic

75. Tajikistan

76. The former Yugoslav

Republic of Macedonia

77. Turkey

78. Turkmenistan

79. Ukraine

80. United Kingdom81. United States of America

82. Uzbekistan

83. Viet Nam

84. Zambia


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or its SMEs Division at:34, chemin des ColombettesP.O. Box 18

CH-1211 Geneva 20SwitzerlandFax: +41 22 338 87 60e-mail: [email protected] page: www.wipo.int/sme

For more information contact

Small and Medium Enterprises Development Authority (SMEDA)SMEDA Head Office:6th Floor, L.D.A Plaza, Egerton Road, Lahore-54792Tel: 111-111-456Fax: (042) 6304926Website: www.smeda.org.pk

Intellectual Property Organization of Pakistan (IPO Pakistan)IPO Pakistan Headquarter:House No. 23, Street 87, Ataturk Avenue (West), Sector G-6/3, IslamabadTel: +92-51-9208146 Fax: +92-51-9208157

Website: www.ipo.gov.pk Email: [email protected]

World Intellectual Property Organization (WIPO)34, Chemin des ColombettesP.O. Box 18CH-1211 Geneva 20SwitzerlandTelephone: +41 22 338 91 11Fax: +41 22 733 54 28e-mail: [email protected]

or its New York Coordination Office at:2, United Nations PlazaSuite 2525

New York, N.Y. 10017United States of AmericaTelephone: +1 212 963 6813Fax: +1 212 963 4801e-mail: [email protected] the WIPO website at: www.wipo.int

Available at SMEDA Head Office and downloadable fromwww.smeda.org/services/Intellectual-Property-for-Bussines-Success.htmland the WIPO Electronic Bookshop at www.wipo.int/ebookshop

SMEDA Publication No. IPR-TM(09)March 2009

Documents

Making a Mark Pa