Navigating the Legal Landscape of Trademark Registration and Infringement Law: A Comprehensive Guide
Disclaimer: The information provided is not exhaustive, and users are advised to seek independent professional advice before acting on anything contained herein. City Laws Associates will not take any responsibility for the consequences of errors or omissions.
The Regulatory Framework:
– Q. What is the law that regulates trademarks in Pakistan?
– A. In Pakistan, trademarks are governed by the Trademarks Ordinance, 2001, extending to the entire nation.
Defining Trademarks:
– Q. What is a Trademark?
– A. A trademark is a distinguishing mark used to differentiate goods or services of one business from others. It includes unique words, letters, numerals, drawings, pictures, shapes, colors, logotypes, labels, or combinations.
Trade Name vs. Trademark:
– Q. What is the difference between a trade name and a trademark?
– A. A trade name identifies a business (e.g., “Syed Bhais (Pvt.) Limited”), while a trademark distinguishes the products (e.g., “Syed Bhais” and the logo “SB”).
Protection of Company Name:
– Q. Is a company’s name automatically protected as a trademark by registering with the Securities & Exchange Commission of Pakistan?
– A. No, registering the business and trade name doesn’t protect it as a trademark. Trademarks require a separate registration.
Coined Words and Trademark Ownership:
– Q. What is a Coined Word?
– A. Coined words are invented words without inherent meaning, such as “Bhais” in “Syed Bhais,” offering easy protection due to their uniqueness.
Eligibility for Trademark Application:
– Q. Who is authorized to apply for trademark registration?
– A. Any person, including individuals, firms, companies, or organizations, intending to use a trademark, can apply for registration.
Mandatory Registration for Trademarks:
– Q. Is it compulsory to register a company’s trademark?
– A. It is not mandatory but highly advisable to secure exclusive rights.
Trademark/Brand Name Search:
– Q. What is a trademark/brand name search, and is it necessary?
– A. It is advisable to conduct a search to ensure the intended trademark is not already registered.
Duration of Trademark Protection:
– Q. For how long is a registered trademark protected?
– A. Trademarks are protected for ten years from the filing date and can be renewed every ten years.
Understanding Service Marks:
– Q. What are service marks?
– A. Service marks distinguish services and cover a wide range of industries according to the Trademarks Ordinance 2001.
Collective Marks and Certification Marks:
– Q. What are collective marks and certification marks?
– A. Collective marks distinguish goods/services of association members, while certification marks indicate certified origin, quality, etc.
Registration of Advertising Slogans:
– Q. Can advertising slogans be registered as trademarks?
– A. Yes, advertising slogans can be registered.
Licensing and Selling Trademarks:
– Q. Can trademarks be licensed or sold?
– A. Yes, trademarks can be licensed or sold independently from the business.
Offenses Related to Trademark Misrepresentation:
– Q. Is misrepresenting a trademark’s registration status an offense?
– A. Yes, portraying a false registration status is an offense.
Penalty for False Trade Description:
– Q. What is the penalty for applying a false trade description?
– A. Penalties include imprisonment or fines, with subsequent convictions leading to enhanced penalties.
Commencement of Trademark Use:
– Q. Should I wait for registration to use a trademark?
– A. You can start using a mark irrespective of filing or registration.
Rights for Unregistered Marks:
– Q. If I’ve been using a mark for years but not registered, do I have rights?
– A. Unregistered marks have rights of passing off but registering provides legal certainty.
Understanding Trademark Infringement:
– Q. What is trademark infringement?
– A. Infringement occurs when someone uses an identical mark for identical goods or services without authorization.
Exceptions to Trademark Infringement:
– Q. When is a trademark not infringed?
– A. A trademark is not infringed when used in good faith, and disclaimed parts aren’t used.
Remedies for Trademark Infringement:
– Q. What actions are available for trademark infringement?
– A. Civil and criminal remedies include damages, injunctions, and other available property rights.
Importation of Infringing Goods:
– Q. What remedies are available for importing infringing goods?
– A. Infringing goods can be treated as prohibited, and the Customs authorities can be notified.
Rights for Unregistered Marks:
– Q. Do unregistered marks have any rights?
– A. Unregistered marks have rights of passing off but can’t file an action for infringement.
Cancellation of Trademark on Non-Use:
– Q. Can a trademark be canceled for non-use?
– A. Yes, trademarks can be canceled on non-use.
International Trademark Treaties:
– Q. Which international trademark treaties is Pakistan a signatory to?
– A. Pakistan is a signatory to the Paris Convention and Agreement on TRIPS.
City Laws Associates Services:
– A. City Laws Associates provides services for trademark registration, brand name registration, logo registration, trademark search, litigation services, passing-off cases, and drafting trademark license and franchise agreements.
