A brand owner with no Pakistani registration is not without a remedy, and a brand owner planning a Pakistani launch should know that someone else’s unregistered rights can stop them.
Pakistan keeps the common law action for passing off and adds a statutory provision on unfair competition that is broader than the tort and, unusually, sits inside the trade marks legislation itself.
Quick reference
| Is passing off preserved? | Yes — section 46(3) expressly saves it |
| Does it affect registration? | Yes — section 17(4) refuses a mark whose use is liable to be prevented by passing off |
| Statutory alternative | Section 67, unfair competition — any act of competition contrary to honest business practices |
| What section 67 covers | Confusion, discrediting a competitor, misleading indications, trade secrets, false statements, misleading advertising, fraudulent registration |
| Status of such acts | Any act of unfair competition is unlawful |
| Where to sue | A District Court of competent jurisdiction, subject to the Intellectual Property Tribunals |
| Registration needed? | No |
Passing off survives the Ordinance
Section 46 deals with infringement of a registered mark, and then says plainly in subsection (3) that nothing in the Ordinance affects rights of action against any person for passing off goods as the goods of another person, or services as services provided by another person, or the remedies for it.
So the statutory scheme and the common law action run side by side. A registered proprietor can plead both; an unregistered owner pleads passing off alone.
The elements are the familiar ones in common law jurisdictions: goodwill or reputation attaching to the claimant’s goods or services; a misrepresentation by the defendant likely to lead the public to believe that what is offered is the claimant’s; and damage, or the likelihood of it.
The practical weight sits almost entirely on the first element. Goodwill has to be proved, and proving it is an evidential exercise — sales, advertising, press, distribution, how long and how visibly the mark has been used in Pakistan. A registration spares you that work. That is, in the end, the strongest argument for registering.
Unregistered rights block later registrations
This is the limb that matters even to brand owners who never intend to sue.
Section 17(4) says a mark shall not be registered if, or to the extent that, its use in Pakistan is liable to be prevented by virtue of any law — in particular the law of passing off protecting an unregistered mark or other mark used in the course of trade — or by virtue of an earlier right such as copyright, design right or a registered design.
Two consequences.
For the owner of an unregistered mark, this is a ground of opposition and a ground for a later declaration of invalidity. It does not require a registration of your own.
For an applicant, it is the reason a clear register search is not clearance. Nothing in section 17(4) appears on the register. See trademark search in Pakistan.
Section 17(5) provides the resolution: registration is permitted where the proprietor of the earlier mark or right consents.
The statutory unfair competition provision
Section 67 is the part of Pakistani law that has no direct equivalent in several neighbouring systems, and it is broader than passing off.
It defines unfair competition as any act of competition contrary to honest business practices in industrial or commercial matters, and then lists acts that may be included:
- acts of any nature creating confusion with a competitor’s establishment, goods, services or activities;
- false allegations in the course of trade of a nature to discredit a competitor’s establishment, goods, services or activities;
- indications or allegations liable to mislead the public as to the nature, manufacturing process, characteristics, constituents, quality or suitability of goods or services;
- the disclosure, acquisition or use of secret information of commercial value, kept secret by reasonable steps, in a manner contrary to honest commercial practice;
- making false or deceptive statements in the course of trade;
- misleading advertising; and
- fraudulently registering or applying to register a trade mark.
Section 67(2) then states that any act of unfair competition is unlawful, and section 67(3) says an action against unfair competition may be brought before a District Court of competent jurisdiction.
Several things follow.
It is not limited to confusion. Discrediting a competitor and misleading advertising are actionable in their own right. A campaign that denigrates a rival’s product without using anyone’s mark falls inside section 67 and outside classical passing off.
It carries trade secret protection. The Explanation treats breach of contract, breach of confidence and inducement to breach as practices contrary to honest commercial practice, and extends to third parties who acquired the information knowing — or being grossly negligent in not knowing — that it was acquired improperly. For a jurisdiction with no standalone trade secrets statute, this is where that protection lives.
Fraudulent filing is itself an act of unfair competition. Where a distributor or local partner has registered your mark in their own name, that conduct is listed in section 67 as well as being a ground of invalidity for bad faith.
Comparative advertising
Section 68 deals with comparative and misleading advertisement, and sets conditions on when comparison is lawful.
The practical point for a brand entering Pakistan is that comparative advertising is regulated rather than simply permitted, and advertising copy prepared for another market should be reviewed before it runs. A comparison that fails the conditions is exposed under section 68 and potentially under section 67 as a misleading indication or a false allegation discrediting a competitor.
Where these claims are brought
Section 67(3) points to a District Court of competent jurisdiction, and section 117 provides that no suit for infringement of a trade mark, or otherwise relating to a right in a trade mark, may be instituted in any court inferior to a District Court.
Overlaying that, the Intellectual Property Organization of Pakistan Act, 2012 established Intellectual Property Tribunals, and provides that all suits and other civil proceedings regarding infringement of intellectual property laws are to be instituted and tried in the Tribunal, with no other court exercising that jurisdiction. An appeal lies to the High Court within thirty days of the Tribunal’s final judgment or order.
So the forum question in a current matter is decided by the Tribunal arrangements in place for the relevant territory, and it is worth settling before drafting rather than after.
Threats cut both ways
Section 52 makes groundless threats of infringement proceedings actionable. A person aggrieved by threats can seek relief, and the person making the threats has to justify them.
That shapes how a passing-off matter opens. A strongly worded demand letter sent from a weak evidential position is not a free move. Where the goodwill is thin or the evidence is not yet assembled, the correspondence needs to be written with the threats provision in mind.
Passing off or registration?
Passing off is a remedy, not a strategy. It works, and in Pakistan it is reinforced by a statutory provision that reaches further than the tort. But every passing-off claim starts by proving goodwill, and that proof is slow, expensive and contestable in a way a registration certificate is not.
The sensible position is to register the marks that matter and keep passing off and section 67 for what they are good at: the gap before registration completes, the conduct that no registration would have caught, and the local partner who filed first.
Frequently asked questions
Can I sue for trademark infringement in Pakistan without a registration? Not for infringement, which requires a registered mark. You can sue for passing off, which section 46(3) expressly preserves, and you can rely on the statutory unfair competition provision in section 67.
What do I have to prove in a passing-off claim? Goodwill or reputation in Pakistan attaching to your goods or services, a misrepresentation likely to deceive the public, and damage or the likelihood of it. The goodwill element is where most of the evidence goes.
Can an unregistered mark stop someone else registering? Yes. Section 17(4) refuses registration where use of the mark in Pakistan is liable to be prevented by passing off, or by an earlier right such as copyright or a registered design.
What is section 67 unfair competition? A statutory tort covering acts contrary to honest business practices — confusion, discrediting a competitor, misleading indications, misuse of secret information, false statements, misleading advertising and fraudulent trademark filings. Any such act is unlawful.
Does Pakistan protect trade secrets? Yes, through the unfair competition provision. Information that is secret, has commercial value because it is secret, and has been subject to reasonable steps to keep it secret is protected against acquisition, disclosure or use contrary to honest commercial practice.
Where is a passing-off claim brought? Not below a District Court, and in practice through the Intellectual Property Tribunal arrangements under the 2012 Act, with an appeal to the High Court within thirty days of a final judgment or order.
Useful official resources
- Intellectual Property Organization of Pakistan — the Organization and the Tribunals
- Trade Marks Ordinance, 2001 — sections 17, 46, 52, 67, 68, 117
- Intellectual Property Organization of Pakistan Act, 2012 — sections 18, 19
See our related notes on infringement and enforcement, well-known trademarks in Pakistan and trademark search.
Holding goodwill in Pakistan without a registration, or facing a claim from someone who does? Talk to us.