Pakistan gives a trademark owner the familiar pair of actions — infringement for a registered mark, passing off for an unregistered one — and sends both to a specialist forum. The tribunals are the part worth knowing about before a dispute starts.
Quick reference
| Registered mark | Infringement under the Trade Marks Ordinance, 2001 |
| Unregistered mark | Passing off, the common law action, preserved by the Ordinance |
| Forum | Intellectual Property Tribunals, which have exclusive jurisdiction |
| Civil relief | Damages, injunctions, accounts “or otherwise” — as for any other property right |
| Appeal | To the High Court, within thirty days of the Tribunal’s final order |
| Criminal | Offences including false trade description and falsifying entries in the register |
| Border | Notice to the Collector of Customs; infringing goods treated as prohibited |
The IP Tribunals
Pakistan established specialist Intellectual Property Tribunals under the Intellectual Property Organization of Pakistan Act, 2012. All suits and civil proceedings concerning infringement of the intellectual property laws go to them rather than to the ordinary civil courts, and an appeal from a final order lies to the High Court within thirty days.
This is a genuine advantage over the alternative. The tribunals see intellectual property regularly, which shortens the distance between filing and a judge who understands what a trademark is for. It also means forum choice is largely settled before the case begins.
What infringement covers
A registration gives the proprietor the exclusive right to use the mark for the goods or services registered, and the right to stop others using an identical or confusingly similar mark on the same or similar goods or services where confusion is likely.
The familiar features apply. Identity of mark and goods makes the case straightforward. Similarity on either axis turns on likelihood of confusion, judged through the eyes of the ordinary purchaser, with imperfect recollection and the circumstances of trade taken into account. Marks with a strong reputation get wider protection than weak descriptive ones.
Passing off
Where the mark is unregistered, or registered in a different class, the passing-off action remains available. It is not displaced by the Ordinance — it sits alongside it.
Passing off requires the three familiar elements: goodwill in Pakistan attaching to the mark or get-up, a misrepresentation by the defendant likely to deceive, and damage or likely damage to that goodwill. The burden is heavier than infringement because goodwill has to be proved rather than presumed from a certificate, which is the practical argument for registering.
Civil relief
The Ordinance puts it broadly: in an action for infringement, all such relief by way of damages, injunctions, accounts or otherwise is available to the proprietor as is available in respect of the infringement of any other property right. In practice that means interim and permanent injunctions, damages or an account of profits, and orders dealing with the infringing goods.
As elsewhere in the region, the interim injunction is where most of the commercial outcome is decided. A case that takes years to final judgment is resolved in practice by whether the defendant is restrained in the meantime, which means the evidence has to be ready when the suit is filed rather than assembled afterwards.
Damages and accounts are alternatives, not cumulative — the proprietor elects between compensation for its own loss and disgorgement of the defendant’s profit.
Criminal and customs routes
The Ordinance creates offences alongside the civil remedies, including applying a false trade description, falsely representing a mark as registered, and falsifying entries in the register. For counterfeiting, criminal process brings search and seizure, which removes stock from the market faster than a civil timetable does.
At the border, the proprietor of a registered mark may give written notice to the Collector of Customs to treat infringing goods, material or articles as prohibited goods, on which Customs may seize them. For a brand with a counterfeit import problem, this is often the highest-return step available, because it catches goods while they are concentrated in one consignment with an identifiable importer.
In a serious counterfeiting matter the three routes run together rather than as alternatives.
Before you act
The same groundwork decides most cases. Is the registration in force and in the right class — remembering that Pakistan registers one class per application, so a mark may be protected for some goods and not others. Is the evidence of use in order, given the requirement that arrives at second renewal. And has the infringement been documented — purchases, invoices, dated photographs — before the other side knows anyone is looking.
Frequently asked questions
Which court hears trademark cases in Pakistan? The Intellectual Property Tribunals established under the Intellectual Property Organization of Pakistan Act, 2012, which take all suits and civil proceedings on infringement of the IP laws. An appeal from a final order lies to the High Court within thirty days.
Can I sue on an unregistered mark in Pakistan? Yes, through passing off, which the Ordinance preserves. You must prove goodwill in Pakistan, a misrepresentation likely to deceive, and damage — a heavier burden than infringement of a registration.
What remedies are available for trademark infringement in Pakistan? The Ordinance makes available all relief by way of damages, injunctions, accounts or otherwise, as for infringement of any other property right — in practice interim and permanent injunctions, damages or an account of profits, and orders dealing with the infringing goods.
Are there criminal remedies for counterfeiting in Pakistan? Yes. The Ordinance creates offences including applying a false trade description, falsely representing a mark as registered and falsifying register entries, and criminal process brings search and seizure.
Can counterfeits be stopped at the Pakistani border? Yes. The proprietor of a registered mark can give written notice to the Collector of Customs to treat infringing goods as prohibited goods, after which they may be seized.
Does my registration cover all classes? No. Pakistan registers one class per application, so protection runs only to the goods or services of the classes actually registered.
Useful official resources
- Intellectual Property Organization of Pakistan — the Ordinance, the Rules and the Register
See our related notes on trademark protection in Pakistan, opposition and renewal and restoration.
Counterfeit goods in the Pakistani market, or a tribunal claim to answer? Talk to us.