The Trade Marks Ordinance, 2001 governs trademarks in Pakistan, administered by the Trade Marks Registry under the Intellectual Property Organization of Pakistan. What you can do about someone using your brand depends almost entirely on one fact: whether your mark is registered.
If your mark is registered
Registration gives the exclusive right to use the mark in relation to the goods or services it is registered for, and the right to sue for infringement. Infringement is established by showing:
- Use of a mark identical or deceptively similar to yours
- In relation to the same or similar goods or services
- In the course of trade, without your consent
Where the marks and the goods are identical, likelihood of confusion is presumed and you do not have to prove reputation, damage or anything about your business. That evidential shortcut is the whole value of registration.
For a mark that is well known, protection extends beyond the registered classes, and Pakistan's obligations under the Paris Convention and TRIPS support that.
If your mark is not registered
The remedy is passing off - a common law action preserved by the Ordinance. You must establish three things, and all of them require evidence:
- Goodwill or reputation attaching to your mark in Pakistan, in the minds of the purchasing public
- A misrepresentation by the defendant leading, or likely to lead, the public to believe their goods are yours
- Damage, or the likelihood of it
Proving goodwill means sales figures, advertising spend, market presence, press coverage and length of use. It is a substantially heavier burden than infringement, and it is why registering early is worth far more than it costs.
Opposition: stopping a registration before it happens
When an application is accepted, it is published in the Trade Marks Journal. Any person may file a notice of opposition within the prescribed period from publication - the period is short, so it depends on someone watching.
Grounds for opposition include that the mark is identical or similar to an earlier mark, that it is descriptive or non-distinctive, that it is deceptive, or that the application was made in bad faith.
Opposing is considerably cheaper and faster than cancelling a registered mark afterwards. Any brand owner should either subscribe to a watch service or have their agent monitor the Journal for their classes.
Rectification: removing a mark already registered
Where a conflicting mark is already on the register, the remedy is an application for rectification or cancellation - on grounds including that it was registered without sufficient cause, that it is confusingly similar to an earlier right, that it was obtained by bad faith, or that it has not been used for a continuous period, which makes it vulnerable to removal for non-use.
The enforcement routes
- Cease and desist letter. Identify the registration number, the infringing use, and a deadline. Many disputes end here, particularly with smaller traders who did not check the register.
- Civil suit for infringement or passing off, with a temporary injunction application filed at the same time. The injunction is the point; the suit will take years. Ask also for delivery up and destruction of infringing goods and packaging.
- Criminal complaint - the Ordinance and the Penal Code provisions on counterfeit marks apply, and the FIA's IPR enforcement can raid and seize counterfeit stock. This is the effective route against organised counterfeiting.
- Customs recordation - record your registration with Pakistan Customs so that infringing imports can be detained at the border.
- Online - platform brand-protection programmes, domain dispute procedures for cybersquatting, and PTA complaints for infringing content.
Building the evidence before you sue
- Obtain a certified copy of your registration certificate and confirm the renewals are current. A lapsed registration is a fatal surprise at the injunction hearing.
- Purchase the infringing product and keep it, with the invoice - a documented sale is the cleanest proof of use in the course of trade.
- Take dated photographs of shopfronts, packaging, signage and online listings.
- Assemble proof of your own use: first invoices, advertising, packaging over the years.
- Consider a market survey where confusion is contested, though it is expensive.
If you have received a notice
Do not simply stop and abandon a brand you have built. Check whether their registration actually covers the goods you sell, whether it is current, whether you have prior use - which is a genuine defence and can support your own rectification application - and whether the marks are actually confusingly similar rather than merely in the same field. Reply within the deadline; silence invites an ex parte injunction.
This article describes the general position under the Trade Marks Ordinance, 2001. It is not advice on any specific mark or dispute; consult an advocate, and note that opposition periods are short.