A Trademark generally refers to a “brand” or “logo”. Trademark registration can also be obtained for a business name, distinctive catch phrases, taglines or captions. Properly used and promoted, a Trademark may become the most valuable asset of a business. Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an indication of origin of the goods as well as an indication of quality.
It is also essential to obtain trademark registration for the business name/trade name under the Trademarks Act. Registration of a company or business name under the Companies Act does not in itself give protection against others who might commence using identical or similar marks.
Trademark Registration Procedure
The procedure for trademark registration is as follows.
- 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.
- After the search is made and does not result in finding a similar Trademark, applicant fills out the Application Form (TM Form 1 or TM Form 2, whichever applies) for the registration. Goods and services for which a trademark can be obtained are divided into several categories known as Classes, The application must contain:
- Prescribed Application Form (TM Form 1 or TM Form 2),
- 8 copies of clear reproduction of the Trademark (Word, Symbol, Logo, 3D features etc.),
- A list of goods and services for which the Trademark is being sought,
- Payment to the respective administrator (usually the Director General, IPO – Pakistan).
- 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.
- If there are no objections at this stage, the trademark is published in a monthly digital Journal
- 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).
- 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.
- Registration certificate is issued once the final payment is made by the applicant.
- 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.
For further assistance, contact Raza & Associates (IP & Corporate Law Attorneys)