Trademark

PAKISTAN TRADEMARK / BRAND NAME /LOGO SEARCH, APPLICATION & REGISTRATION
Before understanding Trademark Registration process in Pakistan, it is important to understand what a trademark actually is and what rights it bestows? A trademark or trade mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities. As per the rest of the world in Pakistan, trademark is a type of intellectual property and thus register-able, and typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. Therefore trademark registration is an important step towards safeguarding your Brand name. The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark . Service Trademarks are also register-able in Pakistan. The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, such that a trademark, properly called, indicates source or serves as a badge of origin. In other words, trademarks serve to identify a particular business as the source of goods or services. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark, which can be enforced by way of an action for trademark infringement, while unregistered trademark rights may be enforced pursuant to the common law tort of passing off. It should be noted that trademark rights generally arise out of the use or to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other trademark objections.

CLASSIFICATION OF  TRADEMARKS IN THE WORLD AND PAKISTAN

Different goods and services have been classified by the International (Nice) Classification of Goods and Services into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services) also known as the Geneva classification. Pakistan follows this system of Trademark Classification as it is also a signatory to this Trademark related Geneva Accord. The idea of this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world. Registeration of Trademark in any member state of geneva convention also gives priority registration rights to the trademark applicant.

TRADEMARK LAW AND LEGISLATION REGULATING PAKISTAN TRADEMARK REGISTRY AND PROTECTION

Trade Marks Registry is working under the administrative control of Intellectual Property Organisation of Pakistan. The main function of the Registry is to grant protection of trade marks relating to both goods and services through registration under the Trade Marks Ordinance 2001 and Trade Mark Rules 2004. The Trade Marks Registry works like a Civil Court. The Registrar of Trade Marks hears and decides the cases relating to registration, post registration, opposition and rectification matters.

THE STEPS/PROCESS FOR TRADEMARK REGISTRATION IN PAKISTAN
1. Pakistan Search before filing of Trademark Application.
2. Filing of Trademark Application in Pakistan’s IPO.
3. Preliminary Examination by Registrar of Trademarks Pakistan.
4. Hearing of the applicant/lawyer against objections of Registrar.
5. Final order for Publication in Trademark Journal of Pakistan.
6. Printing in Trademarks Journal of Pakistan.
7. Opposition Procedure. Request to Oppose Trademark Application in Pakistan.
8. Hearings of Opposition and Decision by Registrar of Trademarks Pakistan.
9. Issuance of Registration Certificate by Registrar of Trademarks Pakistan.

Other matters concerning Trademarks.
1. Renewal of the Trademark Registration.
2. Post Registration matters which may include Trademark Litigation in Pakistan Courts or Possible Trademark Infringements.
3. Pakistan Rectification Procedure in case of error/change in Trademark Logo.

Copyright Registration in Pakistan

Before we explain, the procedure and requirements for copyright registration in Pakistan, it is essential to understand what a copyright actually is? Copyright is literally, the right to copy, though in legal terms “the right to control copying” is more accurate. Copyrights are exclusive statutory rights to exercise control over copying and other exploitation of the works for a specific period of time. Your exclusive packaging design or main page of your website may also be copyrightable in addition to trademark registration.

Copyright initially only granted the exclusive right to copy a book, allowing anybody to use the book to, for example, make a translation, adaptation or public performance. At the time print on paper was the only format in which most text based copyrighted works were distributed. Therefore, while the language of book contracts was typically very broad, the only exclusive rights that had any significant economic value were rights to distribute the work in print. The exclusive rights granted by copyright law to copyright owners have been gradually expanded over time and now uses of the work such as dramatization, translations, and derivative works such as adaptations and transformations, fall within the scope of copyright.

Copyrights are a form of protection provided to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works.

WHAT CAN BE REGISTERED AS A COPYRIGHT?

As defined by Pakistan’s Copyright Law, Copyright is a form of protection provided to the authors of “original works of authorship,” including:

• literary
• dramatic
• musical
• artistic
• Calligraphy
• Product Packaging
• and certain other intellectual works.

This protection is available to both published and unpublished works.

WHAT RIGHTS DOES A COPYRIGHT OWNER EARN AFTER COPYRIGHT REGISTRATION IN PAKISTAN?

The copyright owner is given two sets of rights, a positive one and a negative one:

1. POSITIVE RIGHT

An exclusive, positive right to copy and exploit the copyrighted work, or license others to do so,

2. NEGATIVE RIGHT

Negative right is to prevent anyone else from doing so without consent, with the possibility of legal remedies if they do.

In general the owner of copyrights has the exclusive right to do and to authorize others to do the following:

• To reproduce the copyrighted work in copies or phonorecords;
• To prepare derivative works based upon the copyrighted work;
• To distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
• To perform the copyrighted work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works;
• To display the copyrighted work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and
• In the case of sound recordings*, to perform the work publicly by means of a digital audio transmission.

HOW IS COPYRIGHTS ENFORCED AND WHAT IS ANTI INFRINGEMENT MECHANISM?

Copyrights are generally enforced by the holder in a civil law court, but there are also criminal infringement statutes.

An unskippable anti-piracy film included on movie DVDs equates copyright infringement with theft. Copyright infringement, or copyright violation, is the unauthorized use of works covered by copyright law, in a way that violates one of the copyright owner’s exclusive rights, such as the right to reproduce or perform the copyrighted work, or to make derivative works.

For electronic and audio-visual media, unauthorized reproduction and distribution is also commonly referred to as piracy.

WHO CAN CLAIM COPYRIGHTS?

Copyrights protection subsists from the time the work is created in fixed form. The copyrights in the work of authorship immediately becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyrights.

In the case of a work prepared by an employee within the scope of his or her employment; the employer and not the employee is considered to be the author, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

The authors of a joint work are co-owners of the copyrights in the work, unless there is an agreement to the contrary.

Note:   Mere ownership of a book, manuscript, painting, or any other copy or phonorecord does not give the possessor the copyrights. The transfer of ownership of any material object that embodies a protected work does not.