The Ordinance defines a trade mark broadly and then carves out several special categories, each with its own conditions. One of them — the domain name as a registrable mark, with a five-year term — has no real equivalent in the other jurisdictions in the region.
Quick reference
| The definition | Any mark capable of being represented graphically and capable of distinguishing one undertaking’s goods or services from another’s |
| Shapes | Registrable, but not if the shape results from the nature of the goods, is necessary for a technical result, or gives substantial value |
| Colour | A mark may be limited to colours; without a limitation it is registered for all colours |
| Series | Several closely resembling marks may be registered as a series in one registration |
| Collective marks | For members of an association, under the First Schedule |
| Certification marks | Indicating certified characteristics, under the Second Schedule |
| Domain names | Registrable as marks, under the Third Schedule — five-year term |
| Textile marks | A separate regime with its own classification and restrictions |
The basic definition
Section 2 defines a trade mark as any mark capable of being represented graphically which is capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Two requirements, and both do work.
Graphical representation is the gate that non-conventional marks have to get through. A mark that cannot be put on paper in a way that defines what is protected is hard to file, which is why sounds, scents and gestures are not a practical route in Pakistan in the way they have become elsewhere. There is a related point in section 5: where a mark consists of a combination of letters, words, names or numerals, an aural representation of it counts as use of the mark.
Capable of distinguishing is the substantive test, and it is where most refusals happen. A mark that is devoid of distinctive character, or that consists only of indications describing the kind, quality, quantity, purpose, value, geographical origin or other characteristics of the goods, is caught by section 14 — unless it has in fact acquired a distinctive character through use before the application date, or is a well-known mark. See marks that cannot be registered.
Words, logos and devices
The ordinary categories work as you would expect. A word mark protects the word in any ordinary typeface. A device or logo protects the thing as drawn. A composite mark of words and a device protects the combination, and the words alone only to the extent they are themselves distinctive.
Where a mark contains words in characters other than Roman, a transliteration has to be endorsed on the application and the representations, stating the language and signed by the applicant. Where it contains words in a language other than English, the Registrar can ask for an exact translation and the name of the language.
For a brand entering Pakistan with an Urdu or Arabic-script version of its name, that is a filing requirement to prepare for rather than discover.
Shapes
Shapes are registrable in principle, but section 14(2) excludes a mark consisting exclusively of:
- the shape which results from the nature of the goods themselves;
- the shape of goods which is necessary to obtain a technical result; or
- the shape which gives substantial value to the goods.
These are absolute. Unlike the distinctiveness objections, they cannot be cured by showing that the shape has become recognised through use. A functional shape stays unregistrable however famous it becomes.
Colour
Section 15 handles colour simply, and the default surprises people.
A mark may be limited wholly or in part to specified colours, and any such limitation is taken into account in deciding whether the mark is distinctive. But so far as a mark is registered without a colour limitation, it is deemed to be registered for all colours.
So filing a logo in black and white generally gives broader coverage than filing it in the brand palette. Filing in colour narrows the registration to that colour, which is occasionally what you want — where the colour is doing the distinguishing — and usually not.
Series marks
Where a person claims to own several marks for the same goods or services which resemble each other in their material particulars but differ only in limited respects, they may be registered as a series in one registration.
The permitted differences are specific: statements or representations as to the goods or services; statements as to number, price, quality or names of places; other non-distinctive matter that does not substantially affect the identity of the mark; and the colour of any part of the mark.
That last one is the useful case — a logo in several colourways registered as one series rather than as separate applications. What a series will not do is cover marks that differ in their distinctive elements. Related marks that look like a family but are genuinely different marks need separate applications.
Section 20 also lets a proprietor who claims exclusive rights in a part of a mark apply to register the whole and the part as separate marks, each standing on its own.
Collective marks
A collective mark distinguishes the goods or services of members of the association that owns it from those of other undertakings. The detail sits in the First Schedule to the Ordinance.
The distinguishing features: the mark is owned by the association, not by the members; regulations governing its use have to be filed and approved by the Registrar, and once registered they are published and open to public inspection; amendments to the regulations are themselves regulated; and there are additional grounds of revocation beyond the ordinary ones, tied to the way the mark and the regulations are actually operated.
A collective mark may also, despite the ordinary bar on geographical indications, consist of marks or signs indicating geographical origin — though the proprietor cannot then stop honest use of the geographical name by someone entitled to use it.
Certification marks
A certification mark indicates that goods or services are certified as to origin, material, mode of manufacture, quality, accuracy or other characteristics. The Second Schedule governs it.
The structural point is in the Schedule: a certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified. The certifier has to be independent of the trade it certifies. Regulations governing use are filed, approved, published and open to inspection, and assignment of a registered certification mark requires consent.
Domain names
This is Pakistan’s genuine oddity, and it is worth knowing about.
Section 84 says a domain name is a mark which is a user-friendly substitute for an internet address, and the Third Schedule applies the Ordinance to it with modifications. The result is a registrable category in its own right.
The conditions are specific:
- A domain name used as a source identifier may be registered as a trade mark for the relevant goods or services.
- The applicant must show that they offer goods or services over the internet using the domain name, with a specimen showing use as a source identifier. Use as a mere directional reference — in the way a telephone number or a street address is used — does not count.
- The Registrar may require the mark to include some indication that it is a domain name, so the public is not misled about what it is.
- The term is five years from registration, renewable for further five-year periods as long as the domain name is in actual use on the internet — not the ten-year term that applies to ordinary marks.
- The revocation provisions in section 73 do not apply to domain names.
Acceptance, opposition and registration otherwise follow the ordinary procedure.
For a brand whose business genuinely runs through its domain, this is a protection route that does not exist in most neighbouring countries. It is not a substitute for registering the brand as an ordinary mark, and the shorter term and the continuing-use condition mean it needs its own diary entry.
Textile marks
Textile goods are dealt with separately under Chapter XI of the Ordinance, with their own classification in the Fifth Schedule to the Rules, their own forms, and detailed restrictions on marks made up of numerals and letters — including rules on how far a numeral mark must differ from one already registered in another name.
If you are filing for fabric, yarn or made-up textiles, the ordinary assumptions about what can be registered do not carry across. See trademark classes in Pakistan.
Well-known marks
A mark entitled to protection as well known under section 86 occupies a category of its own, because the protection does not depend on registration in Pakistan or on sales there. It is covered separately in well-known trademarks in Pakistan.
Frequently asked questions
What counts as a trademark in Pakistan? Any mark capable of being represented graphically and capable of distinguishing one undertaking’s goods or services from another’s. Both parts of that definition are tested — representation on filing, distinctiveness on examination.
Can I register a sound or a smell as a trademark in Pakistan? The graphical representation requirement makes non-conventional marks difficult in practice. Pakistan has not developed the filing practice for them that some other jurisdictions have.
Should I file my logo in colour or in black and white? Usually black and white. A mark registered without a colour limitation is deemed registered for all colours, so limiting it to the brand palette narrows the protection rather than strengthening it.
Can a shape be registered as a trademark in Pakistan? Yes, unless it consists exclusively of a shape resulting from the nature of the goods, necessary to obtain a technical result, or giving substantial value to the goods. Those exclusions cannot be overcome by evidence of use.
What is a series of trademarks? Several marks for the same goods that resemble each other in their material particulars and differ only in limited respects — including colour — registered together in one registration.
Can a domain name be registered as a trademark in Pakistan? Yes, under the Third Schedule, if it is used as a source identifier rather than as a mere directional reference and the applicant shows goods or services offered over the internet under it. The term is five years, renewable while the domain name remains in actual use.
Useful official resources
- Intellectual Property Organization of Pakistan — forms and the Trade Marks Journal
- Trade Marks Ordinance, 2001 — sections 2, 5, 14, 15, 20, 82, 83, 84, 86, and the First, Second and Third Schedules
- Trade Marks Rules, 2004 — rules 21, 22, 23, and the Fourth and Fifth Schedules
See our related notes on trademark protection in Pakistan, marks that cannot be registered and types of trademark application.
Not sure which form of protection fits the mark you are launching in Pakistan? Talk to us.