For a brand that is famous elsewhere but has not yet traded in Pakistan, section 86 is the most useful provision in the Ordinance. It protects a well-known mark without requiring registration in Pakistan, and without requiring sales there — and it does so with a list of factors that expressly includes worldwide recognition.
Quick reference
| Section | 86 |
| Registration in Pakistan required? | No |
| Actual use or sales in Pakistan required? | No |
| Goodwill or business in Pakistan required? | No |
| Who qualifies | A mark well known in Pakistan belonging to a national of, or person domiciled or established in, a Convention country |
| Remedy | An injunction restraining use in Pakistan |
| Covers | Confusion on identical or similar goods or services, and dilution |
| Limit | Subject to acquiescence under section 81, and to bona fide use begun before the Ordinance commenced |
| Is there an official list? | No — status is established case by case on the statutory factors |
Who the protection is for
Section 86(1) defines the category by reference to the Paris Convention. A mark entitled to protection as a well-known mark is one so entitled under the Convention and well known in Pakistan as being the mark of a person who is either a national of a Convention country, or domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country.
And then the clause that does the work: this applies whether or not that person carries on business, or has any goodwill, in Pakistan.
That removes the obstacle that defeats most unregistered claims. A passing-off claim starts by proving goodwill in Pakistan. A section 86 claim does not have to.
The seven factors
Section 86(2) tells the tribunal what to consider, and begins by stating that it does so without having to require registration or actual use in the form of sales of goods or services under the mark in Pakistan. The relevant criteria are:
- the amount of Pakistan or worldwide recognition of the mark;
- the degree of inherent or acquired distinctiveness of the mark;
- the Pakistan or worldwide duration of use and advertising;
- the Pakistan or worldwide commercial value attributed to the mark;
- the Pakistan or worldwide geographical scope of the use and advertising;
- the Pakistan or worldwide quality and image the mark has acquired; and
- the Pakistan or worldwide exclusivity of use and registration attained, and the presence or absence of identical or deceptively similar third-party marks validly registered or used for identical or similar goods and services.
The phrase “Pakistan or worldwide” runs through almost every factor, and it is drafted as a genuine alternative. A mark can qualify on its worldwide position.
That said, the opening words of section 86(1) still require the mark to be well known in Pakistan. The worldwide material is how you prove that — the recognition, advertising reach and reputation that have travelled into the market — rather than a substitute for it. In practice a claim is built from registrations across other countries, advertising and spill-over media reaching Pakistan, international rankings and valuations, and evidence that the mark has been kept exclusive.
Factor seven cuts both ways and is the one claimants under-prepare. A mark that has tolerated identical or similar third-party marks on similar goods is weaker, and the absence of such marks is positive evidence. Enforcement history is part of the case.
What the protection gives you
Section 86(3) gives the owner of a mark entitled to protection under the Paris Convention as well known the right to restrain by injunction the use in Pakistan of a mark which, or an essential part of which, is identical or deceptively similar to the well-known mark:
- in relation to identical or similar goods or services, where the use is likely to cause confusion; or
- where the use causes dilution of the distinctive quality of the well-known mark.
The dilution limb is the broad one. It is not tied to similar goods and it does not require confusion. It is the provision that reaches the unrelated business trading under a famous name, where ordinary infringement and passing-off analysis struggles.
Note what the subsection gives: an injunction. It is framed as a right to restrain use, rather than as a general damages provision.
Well-known status elsewhere in the Ordinance
Section 86 is not the only place the status does work.
It cures a distinctiveness objection. The proviso to section 14(1) saves a mark from refusal for lack of distinctive character, descriptiveness or customary use if it has acquired distinctiveness through use or is a well-known trade mark. See marks that cannot be registered.
It preserves the benefit of use. Section 74 provides that where a tribunal decides who gets the benefit of use of a mark, it passes to the registered proprietor, or to the owner of a mark entitled to protection under the Paris Convention as a well known trade mark.
It supports opposition and invalidity. Because well-known status underpins objections under sections 14 and 17, it is available both in opposing an application and in seeking a declaration of invalidity afterwards. See rectification and cancellation.
The limits
Three, and the first is the serious one.
Acquiescence. Section 86(4) makes the rights under section 86(3) subject to section 81. So where the owner of the earlier right has knowingly acquiesced for a continuous period of five years from the date of registration in the use of a later registered mark in Pakistan, the entitlement to challenge that registration or oppose that use ceases — unless the later mark was applied for or used in bad faith.
A famous brand that learns of a local registration of its name and decides to deal with it later can run out of time. Fame does not stop that clock.
Pre-existing bona fide use. Section 86(4) also preserves the continuation of any bona fide use of a mark begun before the commencement of the Ordinance.
No official list. Pakistan does not maintain a register or published list of well-known marks of the kind some jurisdictions operate. Status is established in the proceedings where it is relied on, on the section 86 factors, which means the evidence has to be assembled for each matter rather than drawn from a determination made once.
Building the case
Because status is proved rather than declared, the evidence file is the asset. For a brand that may need to rely on section 86 in Pakistan, what is worth keeping is:
- Registrations worldwide, with dates — this feeds factors one, five and seven.
- Advertising and media reaching Pakistan, including regional and online material.
- Valuations and rankings that support the commercial value factor.
- Enforcement history — actions taken against similar marks, which is factor seven.
- Any Pakistani exposure at all, even without sales: enquiries, distributor approaches, press coverage, website traffic.
Assembled before a dispute, this is a file. Assembled during one, it is a scramble.
Frequently asked questions
Do I need a Pakistani registration to rely on well-known status? No. Section 86 applies whether or not the owner carries on business or has goodwill in Pakistan, and the tribunal determines well-known status without requiring registration or actual sales there.
Does my brand have to be sold in Pakistan? No. The factors are expressly framed as “Pakistan or worldwide”, and the section says status can be determined without actual use in the form of sales in Pakistan. The mark must still be well known in Pakistan, which is what the worldwide material is used to prove.
What can I stop under section 86? Use in Pakistan of an identical or deceptively similar mark, or of an essential part of one, where it is likely to cause confusion on identical or similar goods or services, or where it causes dilution of the distinctive quality of the well-known mark. The remedy framed in the section is an injunction.
Does Pakistan publish a list of well-known marks? No. Status is established case by case on the statutory factors, so the evidence has to be prepared for each matter.
Can I lose the protection by waiting? Yes. Section 86 is expressly subject to the acquiescence rule in section 81, so five years of knowing acquiescence in the use of a later registered mark can end the entitlement to challenge it, absent bad faith.
Does well-known status help with a distinctiveness objection? Yes. The proviso to section 14(1) saves a well-known mark from refusal for lack of distinctive character, descriptiveness or having become customary in the trade.
Useful official resources
- Intellectual Property Organization of Pakistan — forms and the Trade Marks Journal
- Trade Marks Ordinance, 2001 — sections 14, 74, 81, 85, 86
- WIPO Paris Convention
See our related notes on passing off in Pakistan, infringement and enforcement and rectification and cancellation.
Facing a local filing of a brand that is well known everywhere but Pakistan? Talk to us.