Trademark Rectification and Cancellation in Pakistan

Pakistani law gives three separate routes for attacking an entry on the register, and they are not interchangeable. Revocation says the registration was valid but should no longer stand. Invalidity says it should never have been granted. Rectification fixes an error without touching validity at all.

Choosing the wrong one wastes the application. The consequences also differ, and that difference can be worth more than the removal itself.

Quick reference

Revocation

Section 73 sets out four grounds.

Non-use for five years after registration. The mark has not been put to bona fide use in Pakistan by the proprietor or an authorised user, for the goods or services registered, within five years following the date of completion of the registration procedure, and there are no proper reasons for the non-use.

Suspended use for five years. Bona fide use has been suspended for an uninterrupted period of five years, with no proper reasons.

The mark has become generic. In consequence of the proprietor’s acts or inactivity, it has become the common name in the trade for the product or service.

The mark has become misleading. In consequence of the use made of it by the proprietor or with their consent, it is liable to mislead the public — particularly as to the nature, quality or geographical origin of the goods or services.

Two refinements on the non-use grounds. Use in a form differing in elements that do not alter the distinctive character of the registered mark counts as use. And a registration is not revoked for non-use if use is commenced or resumed after the five years but before the application for revocation is made — subject to a proviso that discounts use started in the three months before the application if preparations began only after the proprietor became aware the application was coming.

That three-month window is the anti-gaming rule, and it is the reason a non-use attack is usually prepared quietly rather than announced in correspondence.

Partial revocation is available: where the grounds exist for only some of the goods or services, revocation relates to those only. Because Pakistan registers one class per application, partial revocation inside a class is still a real outcome worth pleading for.

Effect. The proprietor’s rights are deemed to have ceased from the date of the application for revocation — or from an earlier date, if the tribunal is satisfied the grounds existed earlier. Asking for the earlier date matters where there is a parallel infringement claim.

Invalidity

Section 80 attacks the grant itself.

A registration may be declared invalid on the ground that the mark was registered in breach of section 14 — the absolute grounds. Where the breach was of the distinctiveness, descriptiveness or customary-use limbs, the registration is saved if, in consequence of the use made of it, the mark has after registration acquired a distinctive character.

It may also be declared invalid on the ground that there is an earlier trade mark meeting the conditions in section 17(1), (2) or (3), or an earlier right under section 17(4) — unless the proprietor of that earlier mark or right consented to the registration.

Effect. This is the significant difference. Where a registration is declared invalid, it is deemed never to have been made — though this does not affect transactions past and closed. A defendant facing an infringement suit who succeeds on invalidity removes the foundation of the claim, rather than merely ending it going forward.

Bad faith. Where a registration is secured in bad faith, the Registrar may apply to the court for a declaration of invalidity. And where a registration is revoked or declared invalid on that ground, the applicant is barred from applying for the same or a similar mark for two years.

Rectification

Section 96 is narrower than it sounds and is routinely misused.

Any person with a sufficient interest may apply for rectification of an error or omission in the register — but the section expressly says that an application for rectification may not be made in respect of a matter affecting the validity of the registration.

So rectification is the route for correcting what the register says, not for arguing that it should not say it at all. Where rectification is ordered, the error or omission is deemed never to have been made.

Section 96 also carries the mechanism for entering a change of name or address on the application of the proprietor or a licensee.

Where to bring it

All three can be brought before the Registrar, with two qualifications that apply to each.

If proceedings concerning the mark are already pending in the High Court or a District Court, the application must be made to that court instead. And where an application is made to the Registrar, the Registrar may at any stage refer it to the High Court or a District Court.

That referral power is worth factoring in. A matter started at the Registry for cost reasons can end up in court anyway, and a party planning around Registry timetables should allow for it.

The procedure, and the rule that decides non-use cases

An application for revocation, invalidity or rectification is made on Form TM-26 with a statement of the grounds. Where it is made by someone other than the proprietor, the application and statement are filed in duplicate and the Registrar transmits the duplicate to the registered proprietor.

The opposition procedure then applies to the further steps. But there is an important asymmetry built into the Rules.

The Registrar will not rectify the register merely because the proprietor has not filed a counter-statement — except in the case of an application for revocation on the grounds of non-use, where the application shall be granted if no counter-statement is filed.

That single sentence decides a great many non-use cases. For a proprietor, it means an unanswered non-use application removes the registration without any assessment of the merits. For an applicant, it means a well-founded non-use attack against a dormant, badly docketed registration is a far more direct route than it appears.

Third parties with an interest in the registration may apply for leave to intervene on Form TM-27, stating the nature of their interest. A licensee whose rights depend on the registration should be watching for this rather than relying on the proprietor to defend.

Acquiescence closes the door

Section 81 is the limitation rule, and it runs against challengers.

Where the owner of an earlier mark or other earlier right has acquiesced for a continuous period of five years from the date of registration in the use of a later registered mark in Pakistan, being aware of that use, the entitlement to apply for a declaration that the later registration is invalid, or to oppose the use of the later mark, ceases — unless the later mark was applied for or used in bad faith.

The symmetry: where that applies, the proprietor of the later mark is likewise not entitled to oppose use of the earlier mark or the exploitation of the earlier right.

Two things follow. Knowledge matters — the five years runs from awareness of the use, not from registration in the abstract. And a brand owner who sees a conflicting registration and decides to deal with it “when there is budget” may find there is nothing left to deal with it with.

Which route to use

• The mark is not being used — revocation, and prepare it before you correspond.
• The mark should never have been registered — invalidity, for the retrospective effect.
• Both arguments are available — plead invalidity for the effect, and revocation as the fallback that does not depend on proving the position at the date of registration.
• The register has an error in it — rectification, and nothing else.
• You are defending an infringement claim — invalidity is the counter-attack, and it belongs in the same forum as the suit.

Frequently asked questions

How long must a trademark be unused before it can be revoked in Pakistan? Five years — either five years following completion of the registration procedure without bona fide use, or an uninterrupted five-year suspension of use. Use in a form that does not alter the distinctive character of the mark counts.

What happens if the owner ignores a non-use revocation application? It is granted. The Rules expressly provide that where no counter-statement is filed on a non-use application, the application shall be granted — unlike other rectification applications, which are not granted by default.

What is the difference between revocation and invalidity? Revocation ends the rights from the date of the application, or an earlier date if the grounds existed earlier. A declaration of invalidity means the registration is deemed never to have been made.

Can I use rectification to cancel a registration? No. Section 96 is for errors and omissions, and expressly does not extend to matters affecting the validity of the registration.

Where do I file an application to cancel a Pakistani registration? With the Registrar, unless proceedings about the mark are already pending in court, in which case it goes to that court. The Registrar may also refer an application to court at any stage.

Can I be too late to challenge a registration? Yes. Where the owner of an earlier right has knowingly acquiesced in the use of a later registered mark for five continuous years from registration, the right to seek a declaration of invalidity or to oppose that use is lost, unless the later mark was applied for or used in bad faith.

Useful official resources

• Intellectual Property Organization of Pakistan — forms and the Trade Marks Journal
• Trade Marks Ordinance, 2001 — sections 73, 80, 81, 96
• Trade Marks Rules, 2004 — rules 68, 69

See our related notes on infringement and enforcement, trademark opposition and renewal and restoration.

Facing a cancellation action, or holding a registration that is blocking you? Talk to us.