A Pakistani trademark is personal property and can be sold, inherited or transferred like other property. What distinguishes the Pakistani position is how much of the work happens after the deal: recording the transaction, and in some cases obtaining the Registrar’s directions before the title can be entered at all.
Quick reference
| Transferable | By assignment, testamentary disposition or operation of law |
| With goodwill? | Either — with the goodwill of a business, or independently of it |
| Partial assignment | Allowed, by goods or services, or by manner or locality of use |
| Formality | Must be in writing, signed by or on behalf of the assignor |
| Recording | Registrable transaction; the prescribed particulars are entered in the Register |
| If not recorded | Ineffective against a person acquiring a conflicting interest in ignorance of it |
| Unregistered marks | Assignable as part of the goodwill of a business |
| Pending applications | The same provisions apply, with modifications |
What can be transferred, and how
Section 69 treats a registered mark as transmissible by assignment, testamentary disposition or operation of law, in the same way as other personal or movable property — and transmissible either in connection with the goodwill of a business or independently.
An assignment may also be partial, limited so as to apply:
- to some but not all of the goods or services for which the mark is registered; or
- to use of the mark in a particular manner or a particular locality.
The formality is short but mandatory: an assignment, or an assent relating to a registered mark, is not effective unless it is in writing signed by or on behalf of the assignor — or, as the case may be, the personal representative. The same applies to an assignment by way of security.
A registered mark can also be charged in the same way as other personal property, and nothing in the Ordinance affects the assignment of an unregistered mark as part of the goodwill of a business.
Recording, and what happens if you do not
Section 70 lists the registrable transactions: an assignment of a registered mark or any right in it; the grant of a licence; the granting of a security interest, fixed or floating; an assent by personal representatives; and an order of a court or other competent authority transferring the mark or a right in it.
A person claiming an interest by virtue of a registrable transaction, or anyone claiming to be affected by it, applies to the Registrar and the prescribed particulars are entered in the Register.
Section 70(3) sets out the consequence of not doing so, and it is the reason recordal is not administrative housekeeping. Until an application has been made to record the particulars:
- the transaction is ineffective against a person acquiring a conflicting interest in, or under, the registered mark in ignorance of it; and
- a person claiming to be a licensee by virtue of the transaction does not have the protections the Ordinance would otherwise give them.
So an unrecorded assignee holds something they cannot assert against a later good-faith acquirer, and an unrecorded licensee has no standing to act. In a group reorganisation where marks move and nobody updates the register, that exposure sits quietly for years and surfaces on due diligence.
Section 71 applies the same framework, with necessary modifications, to pending applications — with particulars given by notice to the Registrar rather than entered in the Register.
Making the application
The application to register the title of a person who becomes entitled by assignment or transmission is made on the prescribed form, by that person alone or jointly with the registered proprietor.
It has to contain full particulars of the instrument under which the applicant claims, and the instrument or a duly certified copy must be produced at the Trade Marks Registry for inspection. The Registrar may require and retain an attested copy as proof of title, and that copy is not open to public inspection.
Where the applicant cannot establish the claim by a document capable in itself of proving title, they must state a case setting out the full particulars of the facts relied on, verified by affidavit if the Registrar requires. The Registrar may call for further proof of title in any event.
Where a division and separation of goods, services or markets results in different people being registered separately under the same registration number, each resulting registration is deemed a separate registration for all purposes.
Assignments without goodwill need extra steps
This is the part that adds time to a Pakistani closing, and it is often discovered late.
Where registration of an assignment or transmission without the goodwill of the business is sought, the Rules require an application for the Registrar’s directions as to advertisement of the assignment. The application states the date the assignment was made, gives particulars of the registration, and — where an unregistered mark has been assigned along with it — shows that mark and gives particulars including its use. The Registrar may call for evidence and then issues written directions about advertising the assignment.
The application for entry of the assignment must then state whether the mark has been used in the business for those goods or services, and whether the assignment was made otherwise than in connection with the goodwill of that business. Where both are the case, a copy of the directions and proof that they have been complied with — copies of the advertisement, or whatever else the Registrar requires — must be left at the Registry. If the Registrar is not satisfied the directions have been fulfilled, the application does not proceed.
An extension of the period for applying for directions can be requested, but the Rules cap it at three months.
For certain assignments the Rules also require the Registrar’s approval or certificate in advance, on a statement of case in duplicate setting out the circumstances with a copy of the instrument or proposed instrument. The Registrar may call for evidence, hear the applicant and anyone else considered interested, and then issues a certificate or a written notification of approval or disapproval.
The planning point is simple: an assignment without goodwill is not a same-week recordal. Build the advertisement step into the transaction timetable.
Money leaving Pakistan
The Rules add a condition that catches cross-border deals. Where a law regulating the transmission of money outside Pakistan is in force, the Registrar shall not register the title of a person who becomes entitled to a mark by an assignment involving such transmission except on production of the permission of the authority specified in that law.
So an assignment with consideration paid out of Pakistan can require an exchange control clearance before the register will move. That is a condition to establish at the outset, not at recordal.
Assignment to a company to be formed
Where a mark was applied for on the basis that a company about to be formed would use it, the Rules set the period within which that company may be registered as the subsequent proprietor: six months from the date of advertisement in the Journal of the registration of the mark, extendable by a further period of up to six months on application made before or during the period.
Every class is a separate transfer
Because Pakistan registers one class per application, a brand held in four classes is four registrations. An assignment of the brand is four recordals, each with its own form, fee and particulars.
This is the most common practical error in regional portfolio transfers — a schedule to a global assignment lists “the Pakistani registration” in the singular, and one class is left behind. The schedule should list registration numbers, not brands.
Frequently asked questions
Does a trademark assignment have to be in writing in Pakistan? Yes. An assignment, or an assent relating to a registered mark, is not effective unless it is in writing signed by or on behalf of the assignor or the personal representative.
Can a Pakistani trademark be assigned without the business? Yes, section 69 allows transmission independently of goodwill — but the Rules then require an application for the Registrar’s directions as to advertisement of the assignment, and proof that those directions have been complied with before the entry is made.
What happens if I do not record an assignment? The transaction is ineffective against a person who acquires a conflicting interest in the mark in ignorance of it, and an unrecorded licensee loses the protections the Ordinance would otherwise give.
Can I assign a trademark for only some goods? Yes. An assignment may be partial — limited to some of the goods or services, or to use of the mark in a particular manner or locality.
Is approval needed where the purchase price is paid outside Pakistan? Where a law regulating transmission of money outside Pakistan applies, the Registrar will not register the title except on production of the permission of the authority specified in that law.
If my brand is registered in four classes, is that one assignment? One agreement can cover all four, but each class is a separate registration and needs its own recordal. Transfer schedules should list registration numbers rather than brand names.
Useful official resources
- Intellectual Property Organization of Pakistan — recordal forms and fees
- Trade Marks Ordinance, 2001 — sections 69, 70, 71
- Trade Marks Rules, 2004 — rules 56 to 62
See our related notes on trademark licensing in Pakistan, changes to a trademark and trademark classes.
Moving a Pakistani portfolio as part of a transaction or a group reorganisation? Talk to us.