Trade Mark Brief by Hasib H.

Baig Advocate High

Court.
A Trademark is a word, phrase, symbol, and/or design that identifies and
distinguishes the source of the goods of one party from those of others.
A service mark is a word, phrase, symbol, and / or design that identifies and
distinguishes the source of a service rather than goods.

Trademark Registration Procedure

The procedure for trademark registration is as follows.

1) The applicant applies for a Trademark Search by filling out TM Form

55 and giving the required Trademark. A search is then made by TMR Office
to check if a trademark similar to the one being sought already exists.

✓ If a similar trademark doesn’t exist, the applicant can move on

to the next step.

✓ If a similar trademark is already registered, applicant can give

another Trademark for search by filling out another form.

✓ This trademark search is not mandatory, but is recommended by

TMR office to avoid any disputes in the future with matching
trademarks.
2)After the search is made and does not result in finding a similar
Trademark, applicant fills out the Application Form (TM Form 1) for the
registration. Goods and services for which a trademark can be obtained are
divided into several categories known as Classes.

Check List to Fill TM-1 Form for Applying

Registration of Trademarks

✓ An application to register a trademark shall be made on

Form TM-1
✓ TM-1 in duplicate along with six additional
representations affixed on a durable paper of 13x8 inch
should be filed.
✓ Application should be made for specification of goods or
services in any one class i.e., separate applications for
separate classes. Schedule IV of Trade Marks Rules, 2004,
for classification of goods and services.
✓ Insert Full name, Description and Nationality of the
applicant.
✓ In the case of a firm, the full name and nationality of every
partner should be stated.
✓ Add the full trade or business address of the applicant.
✓ If the mark is in the form, of series, then indicate the
number of series.
✓ Indicate domain name is in respect of goods or services.
 ✓ If the mark is in color, then color may be claimed. In this
case, the applicant shall have right to use only the claimed
colors in his/her mark.
✓ If no color is claimed, mark may be used in any color.
✓ Signature of applicant is required with his/her
designation.
• If the mark is owned by an individual, he must sign it.
• If owned by a partnership firm, by the managing partner,
• If the applicant is a limited company, by the managing
director or Director.

3. Where the application is being filed through an attorney, a power of

attorney on Form TM48, duly stamped, must accompany this application.

4. If the applicant is foreign national, he should file application through their

duly authorized attorney or advocate in Pakistan.

5. If the mark is in a language other than English or Urdu, it's translation and
transliteration inthe form of an affidavit from the applicant must accompany
this application.

6. An acknowledgment report is sent to the applicant within 15 days of

application submission. The applicant is further notified regarding the
application via an Examination Report within 3 months of application
submission. If there is any objection regarding the Trademark, applicant is
notified with a Show Cause notice to which the applicant must respond
within 2 months and clarify all objections or the request will be cancelled.

7. If there are no objections at this stage, the trademark is published in a

monthly digital Journal which is available on IPO’s website.

✓ The journal is available publicly, and anyone can view the

trademarks which have been applied for registration.

✓ If some party has any objection against a trademark published in

the journal, they can seek IPO’s action against it by filling
out Form TM-5 or Form TM-8 (whichever applies to the case) to
request the launch of an investigation.

✓ An applicant can submit their defence against opposition notice

by filling out Forms TM-6 or TM-9 (whichever applies)

8. If no objection is raised within 2 months of the journal publication, the

applicant’s request for trademark registration is accepted, and they are
instructed via a Demand Notice to pay the registration fee alongside TM
Form 11 in order to receive a registration certificate.

9. Registration certificate is issued once the final payment is made by the

applicant.
10. Applicant is responsible for the renewal of trademark every 10 years.
Trademarks can be renewed by filling out TM Form 12 alongside making
prescribed fee.

A registered Trademark is a personal property of the applicant. The person

having a registered Trademark has exclusive rights which are infringed by
use of mark in Pakistan without his consent. The rights are vested to the
applicant right form the date of registration. An infringement of a registered
trademark shall be actionable by the proprietor of the trademark. The
proprietor of the trade mark has the following relief available against the
infringement of the trademark:

• Damages.

• Injunctions.

• Accounts.