WIPO National Workshop on Trademarks and Madrid System 4-5 December 2006

Trade Marks system in Pakistan and policy considerations in joining the Madrid

system Muhammad Anwar KhanIP-Expert IPO-Pakistan

Outline

National System of Trade Marks Salient Features of Trade Marks Ordinance 2001 Trade Marks Administration Pakistan's integration in global economy Importance of TM Registration at home and

abroad Considerations for joining Madrid System

National System

Trade Marks Ordinance 2001 Trade Marks, Service Marks, Collective Marks,

Certification Marks, Well Known Marks, Domain Names , Geographical Indications, unfair competition etc

Trade Marks Rules 2004 Trade Mark Administration - IPO-Pakistan - Trade Marks Registry Karachi and - Regional Office at Lahore

Salient Features of Trade Marks Ordinance 2001

“Mark" includes, in particular, a device, brand, heading, label, ticket, name including personal name, signature, word, letter, numeral, shape of goods or their packaging, figurative element, color, sound, scent or any combination thereof

Salient Features (Contd)

“Trade Mark" means any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

Salient Features (Contd)

Classification of goods and services.- A Trade Mark may be registered in respect of-

– goods; – services; or – both goods and services,

Comprised in the prescribed classification of goods or services in accordance with the international classification of goods and services.

Any question arising as to the class within which any goods or services fall shall be determined by the Registrar

Salient Features (Contd)

Absolute grounds for refusal of registration Devoid of any distinctive character Designate the kind, quality, quantity, intended

purpose, value,--------- Shape –nature, technical result, substantial value Scandalous , deceptive , Exceptions- Well known marks , distinctiveness by

use Use of names of chemical compounds barred

Salient Features (Contd)

Relative grounds for refusal identical or similar to earlier mark

Likelihood of confusion, unfair advantage , law of passing off , law of copyrights, law of designs.

Consent of owner of earlier mark May refuse to register any of them until their rights

have been determined by the Court of law.

Salient Features (Contd)

Application for registration Request Statement of goods and services Classification Agent • Being used in Pakistan or to or to be used Fee Date of filing.

Salient Features (Contd)

temporary protection during exhibition-6 months

Salient Features (Contd)

Examination as to the prescribed requirements . a search of earlier trade marks Opportunity to make representation or

to amend the application. Acceptance and publication Notice of opposition, counterstatements

Salient Features (Contd)

Grounds of opposition

Same on which registration may be rejected except the ground that the trade mark cannot be represented graphically.

applicant does not intend to use or assign or he is not t the owner the application, or a document filed in support of the application, was

amended contrary to the provisions of the Law false evidence substantially identical with, or deceptively similar to, a well known

mark, or a trade mark Geographical indication: Indication of Origin the pre-acceptance advertisement of the application under exceptional

circumstances was without sufficient cause or reason

Salient Features (Contd)

Divisional Application Duration of Trade Mark 10 years from date of

filing Renewal 10 years

For renewal –Registrar may require evidence of use

Salient Features (Contd)

Effect of Registration Trade mark is like any other personal property. exclusive rights in the trade mark which are infringed

by use without consent of the owner. right to obtain relief The rights of the proprietor shall have effect from the

date of actual registration: No infringement proceedings before the date on

which the trade mark is in fact registered

Salient Features (Contd) Infringement

Infringement of registered trade mark.- likelihood of confusion. trade name or part of trade name. domain name or part of his domain name Alleged Infringer- a person who sells or offers or

exposes goods for sale, or puts them on the market or has in possession for sale or any purpose of trade or manufacture any goods bearing a mark which infringes a registered trade mark shall be treated as a party to infringement of a registered trade mark

Salient Features (Contd) Infringement proceedings

District Court infringement actionable by the proprietor of

the trade mark. damages, injunctions, accounts or otherwise

available in respect of the infringement of any other property right.

passing off goods delivery up of infringing goods Importation of infringing goods

Salient Features (Contd)

Unfair Competition as defined in Paris Convention

Grounds of Revocation- Grounds for invalidity of registration special provisions for textile goods Offenses and penalties

Establishment of IPO-Pakistanin 2005

Integrated Management of IP Autonomous Status IP Registries – Patent office , Trade Marks

Registry and Copy Right Office are part of IPO-Pakistan. They were earlier administered by three different Ministries.

Trade Marks Registry

Established in 1948 at Karachi Branch Office at Lahore in 1974 Posts Registrar 1 Deputy Registrars 2 Assistant Registrars 4 Examiners 16 Support Staff 69 Total 88

Filing , Registration and backlog

Year Filing Registration 01-02 6572 2238 02=03 7799 2065 03-04 11311 3368 04-05 13097 3586 05-06 13129 2833 Fee US dollars Filing 16.67

Renewal 83.33 Collection of fee in 05-06 = Rs 46 Million

Automation

WIPO assisted automation of business processes in TMR.It included digital archiving of manual records

US CLDP Program

Pakistan's membership of International Treaties relating to Marks

Paris Convention on protection of Industrial property

Marrakech Agreement Establishing WTO which includes an Agreement on TRIPS

Pakistan is not member of Madrid Agreement or Protocol or any other registration or facilitation treaty

Pakistan's increasing integration in Global Economy

2004-05 2005-06 FDI Growth 60.5% 232 % ( 1524.2 m US$) ( 3521 m US$)

Growth in Trade - Imports 32% 43.2%

- Exports 17% 18.1%

Liberalized trade and investment regime

Composition of Exports

Over 16 billion USD in 2005-06 Primary products 11 percent

Semi –Manufactured 10 percent Manufactured 79 percent

Integration (Contd) Major Buyers of exports

USA U.A.E. CHINA INCL.HONG KONG. UNITED KINGDOM AFGHANISTAN GERMANY ITALY FRANCE SAUDI ARABIA NETHERLANDS SPAIN BELGIUM INDIA TURKEY BANGLADESH SOUTH AFRICA CANADA SOUTH KOREA / REP OF. JAPAN SRI LANKA

Pakistan Investment Inflows1990-2006

246 335 306 354 442

1102

682 601 472 470 322485

798 950

1524

3521

0

500

1000

1500

2000

2500

3000

3500

4000

1990-91

1991-92

1992-93

1993-94

1994-95

1995-96

1996-97

1997-98

1998-99

1999-00

2000-01

2001-02

2002-03

2003-04

2004-05

2005-06

Mill

ion

US

$

Integration (Contd): Major Sources of Foreign Direct Investment

USA U.K UAE Germany France Hong Kong Italy Japan Saudi Arabia Canada Netherlands Korea Switzerland

Sector wise FDI in Pakistan (2005-06)

Communication (IT&T), 1937.7,

55%

Financial

Business,

329.2, 9%

Power, 320.6,

9%

Oil & Gas

Exploration,

312.7, 9%

Others, 413.3,

12%

Construction,

89.5, 3%Trade, 118.0,

3%

Sector, Value in Million US $, Percentage

FDI Inflows (2005-06)

Source Million $ Leading Sectors Million $

U.A.E. 1424.5 Communication 1937.7

USA 516.7 Financial Business 329.2

Saudi Arabia 277.8 Power 320.6

Norway 252.6 Oil & Gas Exploration 312.7

U.K 244 Trade 118.0

Others 805.4 Others 502.8

Total 3521 Total 3521.0

Source: Board of Investment

Importance of registering a Trade Mark

Positioning and identifying companies identifying the niche in the market for a new entrant: developing the customer base as a focus for all stakeholders in the company, including

employees and suppliers; improving the management of the company source of collateral for borrowing funds potential source of revenues through licensing and franchising providing residual incomes on sale at cessation of trading.

Importance (Contd)

Most countries have laws that enable registration of trade marks

Registration - higher degree of protection branded goods perceived better Menace of counterfeiting

Madrid System for international registration

Madrid Agreement and Madrid protocol It provides a system for registration of trade

mark or service mark in several countries by writing single application at the national office

Overview and procedures –presentations to be made by WIPO Experts. Therefore I should not go into details

Considerations in joining the Madrid System

Government has an established policy to encourage registration of trade marks abroad . For the purpose, government ( Trade Development Authority ) subsidizes 50 percent of costs on registration

Commitment to join Madrid under Third Generation Agreement with EU

Considerations

Eliminating or reducing certain costs on filing multiple national applications Convenience Time bound a designated office have 12 months to reject international

application Maintenance , renewal and management becomes easy Major trading partners and sources of investment are already members of the

system Facilitating foreigners in establishing business Does not affect the substantive provisions of the law It is choice in addition to the national system No costs on accession No negative financial impact on revenues of TMR A positive signal to the business community around the world.

Costs

Trade Marks Registry Awareness of businessmen Training of the staff Further automation as required Amendments in TMO2001 and rules Training of the staff WIPO Assistance EU is also committed to provide assistance under

Third Generation Agreement

Thank you

IPO-Pakistan website: www.ipo.gov.pk Email: info@ipo.gov.pk