Changes to a Trademark in Pakistan: What You Can and Cannot Alter

Brands change. Pakistani registrations largely do not. The rule in section 37 is close to absolute, and the exception is narrower than most people expect — which makes the practical question not “how do I update the mark?” but “what has to be refiled, and what can simply be recorded?”.

Quick reference

The alteration rule

Section 37 starts from a prohibition: a registered mark shall not be altered in the register, during the period of registration or on renewal.

The exception is a single, narrow one. The Registrar may, at the proprietor’s request, allow alteration where:

• the mark includes the proprietor’s name or address; and
• the alteration is limited to altering that name or address; and
• it does not substantially affect the identity of the mark.

All three conditions, together. The power exists for the firm whose registered mark contains its own trading name or address and whose name or address has changed. It is not a general refresh power.

So a modernised logo, a changed typeface, a dropped tagline, a new colourway — none of these is an alteration. They are a new mark, needing a new application, with a new filing date and a fresh exposure to objections and opposition.

That is worth saying before a rebrand rather than after. If the old mark is still in use anywhere, it should usually be kept on the register alongside the new one, because the new application starts its priority and its own five-year non-use clock from scratch.

Alteration is published and can be opposed

Where an alteration is allowed, it does not happen quietly.

Section 37(3) requires the Registrar to publish the alteration, together with objections from any person claiming to be affected by it. The request itself is made on the prescribed form, and the Registrar may require evidence by statutory declaration, affidavit or otherwise as to the circumstances. The proprietor supplies copies of the mark as it will appear once altered, and material for advertising it in the Journal.

Any person claiming to be affected by the alteration may then, within three months of the date of publication, file a notice of opposition in duplicate with a statement of the grounds. The opposition procedure that applies to an application for registration applies to that opposition too.

Three months is longer than the two-month window for opposing an application, which is a reminder of how the alteration power is viewed: as something that can affect third parties, and therefore something they get a proper opportunity to object to.

Changes of name, address and address for service

These are the routine recordals, and they are the ones most often neglected.

On a request made on the prescribed form by the proprietor of a registered mark, a licensee, or a person having an interest in or a charge on the mark, the Registrar enters any change in their name or address as recorded in the register. Section 96 carries the same power for the proprietor or a licensee.

The address for service can also be changed, on request, by any person who has furnished one, where that address is recorded in the register.

Keeping these current is not cosmetic. The register address is where the Registry writes, and the one notice that must not go to a stale address is the renewal reminder — which the Registrar sends no earlier than six months and no later than one month before expiry. A missed reminder because a firm moved office is a recoverable problem only until it is not.

For a company that has changed its name, there is a second reason. On a transaction or a dispute the register should show the right proprietor. A chain of unrecorded name changes is the kind of thing that stalls a closing.

Narrowing the specification: surrender

There is no mechanism to add goods or services to a registration; that is a new application. There is one to give some up.

Section 38 allows a registered mark to be surrendered by the proprietor in respect of some or all of the goods or services for which it is registered. The Rules provide separate forms for a surrender of the whole and for a surrender limited to specified goods or services.

A surrender is subject to a protection for third parties, and it is a real condition rather than a formality. The notice is of no effect unless the proprietor:

• gives the name and address of any person having a registered interest in the mark by virtue of a registrable transaction; and
• certifies that each such person has been given not less than three months’ notice of the intention to surrender, or is not affected, or consents.

So a mark with a recorded licence or security interest cannot be surrendered on a short timetable. Once the surrender takes effect the Registrar makes the entry and publishes it.

Partial surrender has a defensive use. Where a registration covers goods that have never been used and a non-use attack is plausible, giving up the unused goods on your own terms is sometimes better than losing them on someone else’s — and it removes the material an opponent would have used.

Changing a pending application

Before registration there is more room, but still not much.

The tribunal may, at any time before or after acceptance, correct an error in the application or permit an amendment on such terms as it thinks fit, where it is fair and reasonable to do so. The two provisos are the boundary: no amendment may substantially affect the identity of the mark, and none may extend the goods or services covered by the application.

Where an amendment is permitted after advertisement, the amendment is itself published.

There are also specific amendment routes for collective, certification and domain name applications where the Registrar requires the mark to carry an indication of what it is.

For splitting rather than amending, the divisional route under section 32 lets a pending application be divided — for part of the mark, or for some of the goods — while keeping the original filing date. See types of trademark application.

Re-classification

Where the classification is amended or substituted internationally, a proprietor may apply to convert an existing specification into line with the current schedule. The Registrar notifies a proposal showing the form the amendment should take, that proposal is advertised, and it can be opposed within two months of the advertisement, extendable to no more than two months in aggregate.

The power cannot be used to extend the rights the registration confers, except in the narrow case where insisting on that would involve undue complexity and the extension would be insubstantial and harmless. And the Registrar can require a proprietor to file a proposal for amendment, and may refuse to renew the registration if it is not filed.

A short checklist for a rebrand

• New logo or wordmark — new applications, one per class. Do not assume the old registration stretches.
• Keep the old registrations while the old mark is still in use anywhere, including on stock and packaging.
• Name or address inside the mark changed — the section 37 route may be open; expect publication and a three-month opposition window.
• Company renamed — record the change against every registration, not just the flagship one.
• Moved offices — update the address and the address for service, so the renewal reminder arrives.
• Dropping product lines — consider partial surrender of goods you will never use again.

Frequently asked questions

Can I change my registered trademark in Pakistan? Only in one narrow case: where the mark includes the proprietor’s name or address, the alteration is limited to that name or address, and it does not substantially affect the identity of the mark. Anything else requires a new application.

Is an alteration published? Yes. The Registrar publishes the alteration, and a person claiming to be affected may oppose it within three months of publication, using the same procedure as an opposition to an application.

How do I update my company name on the Pakistani register? On a request on the prescribed form by the proprietor, a licensee or a person with an interest in or a charge on the mark. The Registrar then enters the change of name or address.

Can I add goods to an existing registration? No. There is no mechanism for extending a registration’s specification, and amendments to a pending application may not extend the goods or services either. Additional goods need a new application.

Can I give up part of a registration? Yes, by surrender in respect of some of the goods or services. The surrender has no effect unless anyone with a registered interest in the mark has been given at least three months’ notice, is unaffected, or consents.

I am rebranding. Do I update the registration or file again? File again. A refreshed logo is a new mark in Pakistan, and the old registration should usually be kept while the old mark remains in use.

Useful official resources

• Intellectual Property Organization of Pakistan — forms and the Trade Marks Journal
• Trade Marks Ordinance, 2001 — sections 27, 37, 38, 96, 97
• Trade Marks Rules, 2004 — rules 36, 37, 54, 55, 70, 71

See our related notes on trademark assignment in Pakistan, renewal and restoration and types of trademark application.

Rebranding, or carrying a register that no longer matches the company? Talk to us.