Trade Mark

At ULC we realize that Brands are crucial to the success of most modern business. Therefore, apart from undertaking conflict searches, filing and prosecution of the trade mark applications, ULC also provides a watch service. We not only help our clients register their marks but also help police them. We promptly advise our clients of any attempts by third parties to use and/or register similar/same/confusingly similar trade marks and assist in putting an end to such use or registration.

We send out Cease and Desist letters to anyone found infringing our client’s trade marks asking the infringers to cease and desist from the use of marks identical or similar to our client’s marks.

We regularly send updated status reports of all the trade marks held by the clients to ensure that the clients stay regularly informed of the current status of their trade marks. We also provide comprehensive anti counterfeiting options to our clients. We obtain court orders (search & seizure); liaise with the police or official receiver and even participate in the raids that are conducted, be it civil or criminal.

We conduct due diligence in connection with mergers, asset purchases and the assignment of trade mark rights.

Additionally, ULC regularly advices, negotiates and prepare license, assignment, franchising and co-existence agreements on behalf of our clients.

In Pakistan, Trade Marks legislation is chiefly embodied in the Trade Marks Ordinance 2001 and Trade Mark Rules 2004. The dispensation of work is steered by the Trade Mark Registry which works under the administrative control of Intellectual Property Organization of Pakistan. The Registrar of Trade Marks hears and decides the cases relating to registration, post registration, opposition and rectification matters.

Steps for Registration:

Search before filing of Application.

Filing of Application.

Preliminary Examination.

Final order for Publication.

Printing in Trademarks Journal.

Opposition Procedure.

Issuance of Registration Certificate.

Renewal of the Registration.

Post Registration matters.

Rectification Procedure.

The salient features of the Trademarks Law in Pakistan include:

“Domain names” may be registered as trademarks for goods and services in those cases where the “domain name” is used for offering goods and services via the internet and is not merely a directional reference.

Claiming priority under the Paris Convention within six months from the date of the first corresponding filing in a Paris Convention member country is possible.

Protection against “unfair competition”.

Provisions regarding “comparative advertising”

Provisions regarding protection of “well-known” marks, “collective marks”, “certification marks” and “domain names”.

Service marks filing is now possible (Pakistan is following the 7th Edition of NICE Classification (classes 1 to 42)

Term of renewal has been reduced to 10 years.

The initial registration of a trademark is for a period of seven years after which it can be renewed for periods of fifteen years at a time. A new trademark law is under consideration of the government which in addition to modernizing the law implements the provisions of TRIPs and the Trademark Law Treaty.

ULC in close coordination with its affiliates assist clients in filing Trademark as well as Copyright Patent and Design applications in Pakistan and all over the world. Under the Pakistani Trademark Act, which uses International Class of Goods and Services, it is essential to file a trademark application for registration in proper class(es) using acceptable description of goods/services to obtain registration quickly. Due to the large volume of applications filed at the Pakistani Trade Mark Registry, the delay caused by an office action is substantial. Accordingly, a proper strategy in terms of filing and prosecuting trademark applications remains critical in maintaining an effective trademark portfolio. We provide competent, quality services in preparing and filing trademark applications and written responses to Examiner's preliminary objections.

We are specialized in developing, obtaining, commercializing, maintaining, and litigating trademarks in Pakistan and abroad. When a client is desirous to use and/or register a trademark or a company name in Pakistan, we assist them to evaluate the registrability of the mark and the potential risk in using that mark. We also provide trademark and company name search service, as well as offer professional opinion on other relevant issues.

We assist clients in anti-counterfeit programs designed to identify and eliminate piracy and counterfeiting activities. Our services in this area include obtaining Search and Seize orders, conducting and defending actions for infringement of trademarks, obtaining injunctions, criminal and civil suits in close co-operation with professional litigators.

Practice Spotlight:

IP Litigation

Trademark Registration

pplications and Prosecution

Infringement and Passing-off action

Registration Renewal of trade/service marks,

Applications and Prosecution

Assignment

Licensing

Availability Searches and Opinions

Domain Name Disputes and Registration and Maintenance

Licensing and Permitted use Agreements