Pakistan does not have one trademark application form; it has a family of them, and the right one depends on what you are filing and where you are filing it from. Choosing wrongly is usually recoverable. Missing a priority deadline is not.
Quick reference
| Route | Form | The condition that matters |
|---|---|---|
| Ordinary application | TM-1 | One class only |
| Convention (priority) | TM-2 | Filed within six months of the first Convention filing |
| Exhibition protection | TM-2 | Filed within six months of first exhibition |
| Collective mark | TM-3 | Regulations governing use must be approved |
| Certification mark | TM-4 | The proprietor must not trade in the goods certified |
| Textile mark | TM-53 | One item of the Fifth Schedule per application |
| Divisional application | TM-14 | The parent application must still be pending |
| Series of marks | TM-1 | Marks must differ only in permitted respects |
| Madrid designation | — | Available since 24 May 2021 |
The ordinary application
Form TM-1, for goods or services in one class. It is signed by the applicant or an agent, and it carries the application fee.
Two requirements of the Pakistani application are worth flagging because they are not universal.
A statement of use. Rule 16 requires the application to state the period during which, and the person by whom, the mark has been used for the goods or services applied for. The Registrar may go further and require an affidavit testifying to that use, with exhibits showing the mark as used. An application for a mark not yet launched is made on a proposed-use basis, but the statement is part of the form rather than an optional extra.
An authorisation of agent. Where the application is filed through a legal practitioner or a registered trade mark agent, the authorisation is executed on Form TM-48. A foreign applicant without a place of business in Pakistan files through an agent, so this travels with the application.
Convention applications and priority
If the mark was first filed in a Convention country, section 25 allows a Pakistani application claiming that earlier date — provided the Pakistani application is filed within six months of the first Convention filing. The form is TM-2.
The effect is that the earlier filing date governs which rights take precedence, and the registrability of the mark is not affected by any use of it in Pakistan between the priority date and the Pakistani filing.
The administrative deadline sits in rule 15. Particulars of the claim go in the application itself, and unless the certificate is filed with the application, a certificate from the registering authority of the Convention country — verifying the filing date, the authority, the representation of the mark and the goods or services covered — must be filed within three months of filing the Pakistani application.
Two further points. The application relied on must be the applicant’s first application in a Convention country for the same mark and the same goods or services. And a right of priority can be assigned or transmitted separately from the application itself.
Six months is short, and in a regional filing programme it tends to be the deadline that slips while the budget is being settled. If Pakistan is in scope at all, it needs to be in scope at the start.
Exhibition protection
Less used, and useful when it applies. Section 26 covers an applicant who has exhibited goods bearing the mark, or rendered services under it, at an official or officially recognised exhibition.
File within six months of the day the goods were first exhibited or the services first rendered, and on request the application is deemed to have been made on that day. The proof is a certificate from the competent authorities of the exhibition, stating the date the mark was first used in connection with the exhibited goods or services.
The protection does not stack: section 26 expressly does not extend any other priority right in respect of the same mark. The form is TM-2.
Collective and certification marks
A collective mark is filed on TM-3 (or TM-51 where convention priority is claimed) and a certification mark on TM-4 (or TM-52). Each is for one class.
Both carry an extra requirement that drives the timetable: regulations governing use of the mark have to be filed and approved by the Registrar, published, and kept open to public inspection. For a certification mark there is also the independence condition — it cannot be registered if the proprietor carries on a business supplying goods or services of the kind certified.
The regulations are the work. Drafting them is a substantive exercise about who may use the mark, on what terms and with what controls, and an application that arrives with thin regulations stalls there.
Textile marks
Textile goods have their own route. A textile mark consisting exclusively of numerals or letters, for goods in one item of the Fifth Schedule, is filed on TM-53, or TM-54 where convention priority is claimed. A separate application is required for each item of the Schedule.
Divisional applications
Section 32 allows an applicant who has already filed to make a divisional application — either for registration of part only of the mark, or for registration of the mark for some only of the goods or services covered by the parent application. The form is TM-14, with a statement of the grounds.
Two conditions. The parent application must still be pending. And the divisional application is taken to have been filed on the day the parent was filed, so the original date is preserved.
The practical use is to rescue the uncontested part of an application. Where examination or an opposition is holding up some goods but not others, dividing lets the clear goods proceed to registration while the argument continues on the rest.
Series applications
A series of marks is filed as a single application. Section 20(3) sets out what may differ between them — statements as to the goods or services, statements as to number, price, quality or place names, other non-distinctive matter not substantially affecting identity, and colour. Representations of each mark in the series accompany the application.
A series is not a way to cover variants that differ in their distinctive elements. Those are separate marks and need separate applications.
Designating Pakistan through Madrid
Since 24 May 2021 Pakistan has been a member of the Madrid Protocol, so a Pakistani designation can be made in an international application instead of a national filing. The conditions attached to that route — an 18-month refusal period, an individual fee, and a required declaration of intention to use — are covered in the Madrid Protocol and Pakistan.
Madrid does not remove the one-class rule’s effect on cost in the way it might appear to. An international registration designating Pakistan still produces protection that the Pakistani office administers under its own law.
Choosing the route
For most foreign brand owners the question is narrow: is there a Convention priority date still available, and is Pakistan going in through Madrid or directly?
If the six months is still open, use it — it is free protection against anything filed in the gap. If it has passed, an ordinary national application is the straightforward route, and nothing is lost except the earlier date. Collective, certification and textile routes are chosen by what the mark is, not by preference.
Frequently asked questions
Which form do I use for a trademark application in Pakistan? Form TM-1 for an ordinary single-class application, TM-2 where Convention priority or exhibition protection is claimed, TM-3 for a collective mark, TM-4 for a certification mark, and TM-53 for a textile mark.
How long do I have to claim priority in Pakistan? Six months from the first Convention filing. The priority certificate from the originating authority must be filed with the application or within three months of filing it.
Do I have to state use when I apply? Yes. The Rules require the application to state the period of use and by whom, and the Registrar can require an affidavit with exhibits showing the mark as used.
What is a divisional application used for? To split a pending application so that uncontested goods or services can proceed while an objection or opposition continues on the rest. It keeps the original filing date.
Can I file one application for several versions of my logo? Only as a series, and only where the versions differ in the limited respects the Ordinance allows — including colour. Versions that differ in their distinctive elements are separate marks.
Can I designate Pakistan in a Madrid application? Yes, since 24 May 2021. Pakistan takes 18 months to notify a provisional refusal, charges an individual fee, and requires a declaration of intention to use.
Useful official resources
- Intellectual Property Organization of Pakistan — forms and the current fee schedule
- Trade Marks Ordinance, 2001 — sections 20, 22, 25, 26, 32, 82, 83
- Trade Marks Rules, 2004 — rules 12, 15, 16, 21, 49
See our related notes on filing a trademark in Pakistan, trademark classes and the Madrid Protocol and Pakistan.
Working out whether a Pakistani priority claim is still open? Talk to us.