Refusals in Pakistan divide into two kinds, and the difference decides what you can do about them. Absolute grounds are about the mark itself. Relative grounds are about somebody else’s rights. Some of each can be answered with evidence or consent; several cannot be answered at all.
Quick reference
| Ground | Where it sits | Curable? |
|---|---|---|
| Not capable of being represented graphically or of distinguishing | Section 14(1)(a) | No |
| Devoid of distinctive character | Section 14(1)(b) | Yes — by acquired distinctiveness or well-known status |
| Descriptive of kind, quality, origin and the like | Section 14(1)(c) | Yes — same route |
| Customary in the trade | Section 14(1)(d) | Yes — same route |
| Functional or value-giving shapes | Section 14(2) | No |
| Scandalous matter, deception, religious susceptibilities, contrary to law or morality | Section 14(3) | No |
| Bad faith | Section 14(4) | No |
| Chemical element or compound names, and INNs | Section 16 | No, for the relevant substances |
| Identical or similar earlier mark | Section 17 | Sometimes — consent, honest concurrent use |
| Earlier unregistered rights, copyright, designs | Section 17(4) | By consent |
| National flags and emblems, international organisations’ emblems | Sections 87–89 | Only with authorisation |
Absolute grounds
Section 14 is the main gate.
No distinctive character, descriptive, or customary. Marks devoid of any distinctive character, marks consisting exclusively of indications that may serve in trade to designate kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics, and marks that have become customary in the current language or in the established practices of the trade are all refused.
All three come with the same escape route. The proviso to section 14(1) saves a mark that, before the date of application, had in fact acquired a distinctive character as a result of the use made of it, or is a well-known trade mark.
The timing in that proviso matters. The distinctiveness has to exist before you apply. Use built up after filing, while the objection is being argued, does not retrospectively qualify the mark.
Shapes. Section 14(2) refuses a mark consisting exclusively of a shape that results from the nature of the goods, is necessary to obtain a technical result, or gives substantial value to the goods. There is no proviso here. These are permanent, and evidence of recognition does not touch them.
Scandalous, deceptive, religious and unlawful matter. Section 14(3) bars a mark, or any part of it, that consists of or contains scandalous design, or matter whose use would be likely to deceive or cause confusion or otherwise be disentitled to protection, would be likely to hurt the religious susceptibilities of any class of the citizens of Pakistan, or would be contrary to law or morality.
The religious susceptibilities limb is the one foreign applicants most often fail to anticipate, and it is read in context — the Ordinance frames it both in itself and in terms of the goods or services the mark is to be registered for. A name or image that is unremarkable in one market can be a flat refusal here. It is a question to settle before the brand is committed to, not after the objection arrives.
Bad faith. Section 14(4) refuses a mark to the extent the application is made in bad faith. It also has a sting elsewhere: where a registration is revoked or declared invalid on the ground that it was secured in bad faith, the applicant is barred from applying for the same or a similar mark for two years.
Chemical names and INNs
Section 16 is specific and easy to miss.
No word that is the commonly used and accepted name of a single chemical element or single chemical compound — as distinguished from a mixture — may be registered for a chemical substance or preparation. The same applies to a name declared by the World Health Organization as an international non-proprietary name and notified by the Registrar.
A registration made in breach is treated as an entry made without sufficient cause or wrongly remaining on the register. The section does not catch a word used only to denote the brand or make of the element or compound as produced by the proprietor, used alongside a suitable name or description open to public use.
For pharmaceutical filings this is the first thing to check. A brand built too close to the INN stem is a registration that may not survive.
Relative grounds
Section 17 is about conflict with earlier rights.
- Identical mark, identical goods or services — refused outright.
- Identical or similar mark, identical or similar goods or services, where there is a likelihood of confusion.
- Identical or similar mark, dissimilar goods, where the earlier mark has a reputation in Pakistan and use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.
- Earlier rights that are not registrations. Section 17(4) refuses a mark whose use in Pakistan is liable to be prevented by the law of passing off protecting an unregistered mark, or by an earlier right such as copyright, design right or a registered design.
That last limb is why a clear register search is not clearance. See trademark search in Pakistan.
Two routes through a relative objection. Section 17(5) allows registration where the proprietor of the earlier mark or right consents. And section 19 allows the Registrar to permit registration in case of honest concurrent use, where the mark would otherwise be refused on relative grounds.
Section 17(6) adds a practical wrinkle: where different people file identical or nearly resembling marks for the same goods, the Registrar may refuse to register any of them until their rights have been determined by the court.
Protected emblems
Sections 87 to 89 implement the Paris Convention protections.
A mark consisting of or containing the flag of a Convention country cannot be registered without the authorisation of that country’s competent authorities, unless the Registrar considers that the proposed use is permitted without it. The same approach applies to armorial bearings and other state emblems, and to the emblems, abbreviations and names of international organisations.
For a brand using a flag device, a crest or something that reads as an official emblem, this is a gate to clear before filing rather than a formality.
Disclaimers and limitations
Not every weak element means refusal. Section 21 allows the tribunal, as a condition of the mark staying on the register, to require the proprietor to disclaim exclusive rights in a part of the mark that is not separately registered, or in matter common to the trade or otherwise non-distinctive.
A disclaimer narrows what you own without losing the registration. It only affects rights arising out of that registration, so it is often the sensible resolution of an objection to a descriptive element inside an otherwise distinctive mark. Section 15 does the same work for colour.
Textile marks have extra bars
For textile goods the Rules add their own restrictions, principally on marks made up of numerals and letters — single digits, overlong combinations, fractions outside set limits, and numerals or letters representing cloth dimensions are not registrable, and there are detailed requirements on how far a numeral mark must differ from one already registered in another name. Acquired distinctiveness before the application date saves a mark from some of these.
What to do with an objection
An objection raised in examination is communicated in writing, and the applicant has two months to amend the application, respond, or ask to be heard — extendable by up to three months in aggregate. The route through depends on which ground you are facing.
- Distinctiveness or descriptiveness — evidence of acquired distinctiveness before the application date, or an amendment or disclaimer that narrows the mark to what is genuinely distinctive.
- An earlier mark — consent, honest concurrent use, a narrowed specification, or an attack on the cited mark where it is vulnerable to revocation for non-use.
- Shape, religious or scandalous matter, bad faith, protected emblems — these are not argued away. The answer is usually a different mark.
Knowing which category you are in before you spend on a response is most of the value.
Frequently asked questions
Can a descriptive mark be registered in Pakistan? Only if, before the date of the application, it had acquired a distinctive character through the use made of it, or is a well-known mark. Use built up after filing does not help.
What is the religious susceptibilities ground? Section 14(3) refuses a mark whose use would be likely to hurt the religious susceptibilities of any class of citizens of Pakistan. It is assessed both in itself and against the goods or services applied for, and it is not curable by evidence.
Can a functional shape ever be registered? No. A shape resulting from the nature of the goods, necessary to obtain a technical result, or giving substantial value to the goods is excluded absolutely, with no saving for acquired distinctiveness.
My mark was cited against an earlier registration. What are my options? Consent from the earlier proprietor, honest concurrent use under section 19, narrowing the specification so the conflict falls away, or challenging the cited mark if it is vulnerable to revocation for non-use.
Can I register a brand name that is close to a drug’s generic name? Not for the relevant chemical substance or preparation. Section 16 bars the commonly accepted name of a single chemical element or compound, and names declared by the World Health Organization as international non-proprietary names.
What does a disclaimer do? It removes exclusive rights in a non-distinctive part of the mark while leaving the registration standing. It affects only the rights arising out of that registration.
Useful official resources
- Intellectual Property Organization of Pakistan — forms and practice information
- Trade Marks Ordinance, 2001 — sections 14, 15, 16, 17, 19, 21, 87, 88, 89
- Trade Marks Rules, 2004 — rules 27, 80, 99, 100
See our related notes on examination and objections, types of trademarks and trademark search in Pakistan.
Holding an objection you are not sure is worth answering? Talk to us.