Trade Mark

TRADE MARK 1. 1. The History Of Trademark Law The marking of goods for various purposes, including identifying them from those of other traders, dates back to ancient times. In the same way, the existence of rules governing the use of such marks goes back to the medieval craft guilds. A â€Å"trademark for commercial goods† necessarily requires commercial goods; in societies based on the barter system, therefore, there was no basis for â€Å"trademarks for goods. † Trademarks not only identify goods, but create a distinction between goods from various sources.Consequently, a competitive relationship exists, and an overly simplistic mark is insufficient to be a trademark. The trade of goods came into practice long ago, and the use of trademarks is thought to have evolved from that. The origin of trademarks can be traced back as far as the beginning of the circulation of goods. The history of marks is nearly as old as the histories of mankind and religion. Scientists have come across excavated artifacts from places such as ancient Egypt with various symbols carved thereon for religious and superstitious reasons. Potters marks† appeared in relics left from the Greek and Roman periods and were used to identify the maker (potter) of a particular vessel). Among those who specialize in researching the cultural heritage of marks, the studies surrounding â€Å"potters marks† are famous. It would be difficult, however, to say that these marks are trademarks in the sense of the modern meaning. Over time, different methods of identification and distinction developed. Loved ones and pets were given names. â€Å"Proprietary marks† (in the form of a name or symbol) were affixed to goods to enable one person to distinguish their own possessions from those of others.Craftsmen applied their names, unique drawings, or simple inscriptions to identify goods they created. Even though these marks surely helped in distinguishing goods, it is difficult to say that these marks were trademarks with distinctiveness in the modern sense of the word. Symbols on goods used in ancient Rome and other countries near the Mediterranean sea had similar characteristics to the trademarks of today. Because this ancient region is considered to be the first to actively circulate goods, it is widely thought that trademarks evolved in response to the emergence of a society in which goods circulate in commerce.However, even in those days, a trademark system based on property rights did not yet exist. Around the 10th century, a mark called a â€Å"merchants mark,† appeared, and symbols among traders and merchants increased significantly. These marks, which can be considered one kind of â€Å"proprietary mark,† essentially were used to prove ownership rights of goods whose owners were missing due to shipwrecks, pirates, and other disasters. Even now, in every part of the world, horses, sheep, and other animals are still branded with a mar k identifying the owner.In Japan, a symbol is affixed to lumber that is tied onto a raft and sent down a river to its mouth. These types of marks are reminiscent of the â€Å"merchant's mark† of the past. In guilds of the middle ages, craftsmen and merchants affixed marks to goods in order to distinguish their work from the makers of low quality goods and to maintain trust in the guilds. These marks, known as â€Å"production marks,† served to punish the manufacturers of low quality goods for not meeting the guild's standards and to maintain monopolies by the guild's members.These production marks helped consumers to identify and assign responsibility for inferior products, such as, goods short in weight, goods comprised of poor quality materials, and goods made with inferior craftsmanship. Because these marks were affixed out of compulsion or obligation, rather than one's own self-interest, they also became known as â€Å"police marks† (polizeizeichen) or †Å"responsibility marks† (pflichtzeichen). They acted not only to distinguish between sources of goods, but to serve as an indicator of quality as well.While modern marks work to ensure the quality and superiority of certain goods, the obligatory marks served to uncover defective goods. â€Å"Responsibility marks† were more burdensome than real property, and could not be changed easily once the mark had been adopted. Furthermore, it is thought that this type of mark did no more than simply guarantee minimum quality. Finally, these symbols were different from modern marks in that they emerged to benefit the guilds, and were not for the benefit of the production mark owner.From the Middle Ages, through â€Å"police marks† and â€Å"responsibility marks,† modern trademarks slowly developed as the Industrial Revolution sparked the advent of what is now modern-day capitalism. Gradually, the guild systems disintegrated, and free business was established. Marks be gan to actively identify the source of goods rather than obligatory guild membership. About this time, special criminal laws protecting trademarks were also developed out of early forgery, counterfeiting, and fraud laws.Civil protection was gradually and systematically established against those who would use another's mark with out permission (â€Å"infringers†). In France, the â€Å"Factory, Manufacture and Workplace Act† of April 20, 1803, (Article 16) is internationally noted for establishing a system which made it a crime to pass off another's seal as one's own. Further, the Criminal Acts of 1810 (Article 142) and 1824 (Article 433) made it a punishable crime to abuse the name of others or wrongly use the names of production areas.Under the English common law system, fraud and the improper use of marks known as â€Å"passing off† an action for which remedies were contemplated that continue today. A trademark equity law was added eventually to supplement comm on law protection, but England did not establish a comprehensive system for trademark protection until 1905, nearly 50 years after the establishment behind France. Prior to the 1905 Act, â€Å"The Merchandise Marks Act,† which focused on provisions dealing with deceptive indications, was passed on August 7, 1862. The â€Å"Trade Mark Registration Act† was also passed in 1875.The 1905 Act was amended in 1919 and 1937, until a new Act was passed in 1938. This Act fundamentally changed the system in many ways, permitting registration based on intent-to-use, creating an examination-based process, and creating an application publication system. It equipped the English system with advances that surpassed the trademark law of France at that time. Consequently, U. S. and Japanese trademark laws were greatly influenced by the 1938 Act. American trademark law was initially influenced strongly by English trademark law. In the U. S. various avenues are available for seeking a reme dy. The state courts will adjudicate based on state registration or common law right; the federal courts will adjudicate based on federal registration. The trademarks in the U. S. that are owned by Japanese companies are primarily federally registered trademarks. On July 8, 1870, the Federal Trade Mark Act was enacted as the first U. S. federal law to protect trademarks. In 1879, however, the U. S. Supreme Court held the law was unconstitutional due to a conflict with the provision on patents in the U. S. Constitution. It was therefore abolished.In its place, a trademark law was enacted on March 3, 1881 that targeted trademarks used in interstate commerce (and in the commerce with Indian tribes) based on the interstate commerce clause in the U. S. Constitution (art. 1, sec. 8, cl. 3). This law, however, was unable to accommodate the development of the American economy and underwent a major amendment in 1905. It underwent further partial revisions occasionally during subsequent years . Upon the enactment of the Lanham Act on July 5, 1946, American trademark law came to rank equally with English or German trademark laws.The Act was named after a congressman who had devoted himself to its creation in. The first trademark law in Pakistan was passed in 1940 and was known as the Trade Marks Act, 1940. Thereafter in order to comply with its international obligations, the Government of Pakistan decided to amend and consolidate the law relating to trademarks and unfair competition to provide for registration, better protection of trademarks, and the prevention of infringement. Therefore, the President of Pakistan passed the Trade Marks Ordinance, 2001.Trademark law in Pakistan is presently governed by the Trade Marks Ordinance, 2001 and the Trade Marks Rules, 2004. 2. 1. What is a trademark? A trademark is a sign that is used to identify certain goods and services as those produced or provided by a specific person or enterprise. Hence, it helps to distinguish those good s and services from similar ones provided by another. For example, â€Å"DELL† is a trademark that identifies goods (computers and computer related objects). â€Å"CITY BANK† is a trademark that relates to services (banking and financial services).A trademark is any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A sign can include a letter, word, name including personal name, signature, figurative element, numeral, device, brand, heading, label, ticket, aspect of packing, shape, color, sound or any combination of these features. Figure: famous trademark logos 2. 2. Kind of signs can be used as trademarks * Trademarks may consist of a word (e. g. Kodak) or a combination of words (Coca-Cola), letters and abbreviations (e. . EMI, MGM, AOL, BMW, IBM), numerals (e. g. 7/11) and names (e. g. Ford, or Dior) or abbreviations of names (e. g. YSL, for Yves St-Laurent). * They may consist of drawings (like the logo of the Shell oil company, or the Penguin drawing for Penguin books), or three-dimensional signs such as the shape and packaging of goods (e. g. the shape of the Coca-Cola bottle or the packaging for the Toblerone chocolate). * They may also consist of a combination of colors or single colors (e. g. the orange color used for ORANGE telephone company).Even non visible signs, such as music and fragrances, may constitute trademarks. 2. 2. 1. The Trademark Must Be Distinctive it must be capable of distinguishing the goods or services with which it is used. A name which is purely descriptive of the nature of the goods and services that are offered may not constitute a valid trademark. For example, Apple may serve as a trademark for computers but not for actual apples. However, a given trademark may not be distinctive from the outset, but may have acquired distinctive character or â€Å"secondary meaning† through long and extensive use.Figure . Proposed matrix of trademark types inspired by Weckerle (1968) original taxonomy. 2. 3. Types Of Trademark Exist In addition to trademarks identifying the commercial source of goods or services, several other categories of marks exist. 1. Collective marks are marks used to distinguish goods or services produced or provided by members of an association. Collective marks are marks used to identify the services provided by members of an organization (e. g. UAW for United Auto Workers). 2.Certification marks are marks used to distinguish goods or services that comply with a set of standards and have been certified as such (e. g. The Woolmark symbol to show that products are made from 100% wool and comply with performance specifications set down by the Wool mark Company. It is registered in 140 countries and is licensed to manufacturers who are able to meet these quality standards in 67 countries). Figure . Examples of trademarks designed or altered for specific population segments. 3. 4. What function does a trademark perform?Trademarks may perform different functions. In particular they * help consumers identify and distinguish products or services; * enable companies to differentiate between their products; * are a marketing tool and the basis for building a brand image and reputation; * may be licensed and provide a direct source of revenue through royalties; * are a crucial component of business assets; * encourage companies to invest in maintaining or improving quality products; and * may be useful for obtaining finance. . 5. How is a trademark protected? The most common and efficient way of protecting a trademark is to have it registered. 3. 6. 1. Requirements for Trademark Protection 3. 6. 2. 1. Inherent Distinctiveness This requirement is fundamental to the nature of trademark. Anything claiming protection under trademark principles must be capable of identifying the particular goods and services with which it is used, and distinguishing those goods and services from the goods and services of others in the marketplace.Categories (Distinctiveness Spectrum) of marks of generally increasing distinctiveness are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary and fanciful marks. 3. 6. 2. 2. Acquired secondary meaning Provides for trademark protection of marks that are not inherently distinctive, descriptive marks usually rely upon special proof of distinctiveness before protection be afforded by common law and statute.Descriptive marks must be shown to have acquired customer recognition (secondary meaning), which serves primarily to identify the source of the products or services, and not merely to describe their nature, quality, characteristics, ingredients, or geographic origins. Generic marks constitute the very product and, therefore, cannot be registered or appropriated exclusively to one manufacturer’s use, even upon a showing of secondary meaning, because competition would be unjustifiably impaired. 3. 6. 2 . 3.Non functionality Trademark protection is granted to symbols or features that are not functional, protection of functional features would deprive producers of the right to use those features necessary to make a product work. Doctrine of functionality: if a feature is required to perform a particular utilitarian function, and if there are insufficient commercially viable alternatives to perform the same function equally well, no single producer will be allowed to claim exclusive rights in the feature. 3. 6.Trademarks are territorial rights This means that they must be registered separately in each country in which protection is desired. Note that, unless a given trademark is protected in a specific country, it can be freely used by third parties. Moreover, trademark protection is in general always limited to specific goods and services (unless the trademark in question is a well-known or famous trademark). This means that the same trademark can be used by different companies as l ong as it is used for dissimilar goods or services. . 7. Registration of Trademarks, at the appropriate trademark office Registration is not, however, the only way of protecting a trademark: unregistered trade marks are also protected in some countries, but in a less reliable form. Figure:The logo for the Wikipedia website, which is a registered trademark of Wikimedia Foundation, Inc. 3. 8. Kind of protection provided by a trademark A trademark owner is given the exclusive rights: ) to use the trademark to identify his goods or services; 2) to prevent others from using and marketing the same or a similar trademark for the same or similar goods or services; 3) to authorize others to use the trademark, (e. g. by franchising or licensing agreements) and in return for payment. 3. 9. How is a trademark registered? First, an application for registration of a trademark must be filed with the appropriate national or regional trademark office. The application must contain a clear reproductio n of the sign filed for registration, including any colors, forms, or three-dimensional features.The application must also contain a list of goods or services to which the sign would apply. The sign must fulfill certain conditions in order to be protected as a trademark or another type of mark: * it must be distinctive, so that consumers can distinguish it as identifying a particular product, as well as from other trademarks identifying other products; * it must not be deceptive, that is, it should not be likely to mislead the consumers as to the nature or quality of the product; * it should not be contrary to public order or morality; it should not be identical or confusingly similar to an existing trademark. This may be determined through search and examination by the national office, or by the opposition of third parties who claim similar or identical rights. 3. 10. How long is a registered trademark protected for? The period of protection varies (it is usually 10 years), but a t rademark can be renewed indefinitely on payment of the corresponding fees. 3. 11. How extensive is trademark protection? Almost all countries in the world register and protect trademarks.Each national or regional office maintains a Register of Trademarks which contains full application information on all registrations and renewals, thereby facilitating examination, search, and potential opposition by third parties. The effects of such a registration are, however, limited to the country (or, in the case of a regional registration, countries) concerned. In order to avoid the need to register separately with each national or regional office, WIPO administers a system of international registration of marks. This system is governed by two treaties, the Madrid Agreement Concerning the International 3. 2. Registration of Marks, and the Madrid Protocol A person who has a link (through nationality, domicile, or establishment) with a country party to one or both of these treaties may, on the basis of a registration or application with the trademark office of that country, obtain an international registration having effect in some, or all of the Countries of the Madrid Union: 2. 12. 1. What are well-known marks and how are they protected? Well- known marks are marks that are considered to be well-known by the relevant sector of the public in the country in which protection is sought.Well-known marks benefit from stronger protection than marks in general. * they may be protected even if they are not registered in a given territory,and * they may be protected against confusingly similar marks that are used on dissimilar goods or services, whereas marks are generally protected against confusingly similar marks if used for identical or similar products. For example, let us consider a trademark such as Mercedes Benz. Normally the company that owns the trademark would be protected against unauthorized use of the mark by third parties with respect to the products for which the mark has been registered.To the extent that Mercedes Benz is a well-known trademark, protection would also be available for unrelated goods. So that if another company decides to use the trademark in relation to other goods such as, say, men’s underwear, it may be prevented from doing so. 3. 13. Sale , Transfer and licensing In various jurisdictions a trademark may be sold with or without the underlying goodwill which subsists in the business associated with the mark. However, this is not the case in the United States, where the courts have held that this would â€Å"be a fraud upon the public†. In the U. S. trademark registration can therefore only be sold and assigned if accompanied by the sale of an underlying asset. Examples of assets whose sale would ordinarily support the assignment of a mark include the sale of the machinery used to produce the goods that bear the mark, or the sale of the corporation (or subsidiary) that produces the trademarked goods. Most juri sdictions provide for the use of trademarks to be licensed to third parties. The licensor (usually the trademark owner) must monitor the quality of the goods being produced by the licensee to avoid the risk of trademark being deemed abandoned by the courts.A trademark license should therefore include appropriate provisions dealing with quality control, whereby the licensee provides warranties as to quality and the licensor has rights to inspection and monitoring. 3. 14. Domain name and it relation to trademarks Domain names are Internet addresses, and are commonly used to find websites. For example, the domain name â€Å"wipo. int† is used to locate the WIPO website at www. wipo. int. Domain names may be made up, sometimes, of a trademark.In such case, it may happen that the person who has registered the domain name has done it in bad faith, as he is not the owner of the trademark under which the domain name has been registered. This activity is referred to as Cyber squatting . It is important to know that many national laws, or courts, treat as trademark infringement the registration of the trademark of another company or person as a domain name. If this happens, the person who has chosen the trademark of another as a domain name may not only have to transfer or cancel the domain name, but may also have to pay damages or a heavy fine.It may be interesting for you to know that if the trademark of your company is being used as a domain name by another individual or company, you may take action to stop such misuse of the rights of your company. In such a case, an option would be to use WIPO’s online procedure for domain name dispute resolution at: arbiter. wipo. int/domains. This WIPO website includes a model complaint as well as legal index to the thousands of WIPO domain name cases that have already been decided. 3. 15. Why protect trademarks?The basic rationale for protecting trademarks, whether through registration or not, is two fold. * First, it provides business people with a remedy against unfair practices of competitors, which aim at causing confusion in the consumers’ minds by leading them to believe that they are acquiring the goods or services of the legitimate owner of the trademark, whereas in fact they are acquiring an imitated product, which furthermore may be of lesser quality. The legitimate owner may hence suffer from loss of potential customers, as well as harm to his own reputation. The second rationale flows from the first, namely to protect consumers from those unfair and misleading business practices. In addition to those two arguments, a further one is gaining more and more prominence. This is that a trademark is often the only tangible asset that represents the investments made in the building of a brand. Where, for example, a business is sold, or companies merge, the question of brand evaluation becomes an important issue. The value of companies may depend to a large extent on the value of the ir trademarks 3. 16. When has a trade mark been infringed?Figure: Trademark Infringement A registered trade mark is infringed by the unauthorized use of that mark, or a mark that is substantially identical or deceptively similar to it, A registered trademark is said to be infringed in the following circumstances: A registered trademark is said to be infringed in the following circumstances: * If a third party uses a trademark in the course of the trade which is identical with the registered trademark and in relation to goods or services which are identical with those for which it is registered.For example, in Wrangler Apparel Corporation v. Axfor Garments, Wrangler had filed a suit requesting that Axfor Garments be restrained from using the trademark â€Å"Wrangler† and the â€Å"W† stitch logo on its clothing including jeans, jackets, shirts and belts. Wrangler had registered its trademarks in Pakistan. The Court passed an order of injunction against the Defendant and restrained them from using Wrangler? s trademarks on any of its products. If a third party uses, in the course of trade, a mark which is identical with the registered trademark and is used in relation to goods or services similar to the goods or services for which the trademark is registered or the mark is deceptively similar to the registered trademark and is used in relation to goods or services identical with or similar to the goods or services for which the trademark is registered or if there exists a likelihood of confusion on the part of public, which includes the likelihood of association with the trademark; * If a third party uses in the course of trade, a mark which is identical or deceptively similar to, the trademark in relation to goods or services of the same description as that of goods or services in respect of which the trademark is registered, services that are closely related to goods in respect of which trademark is registered or goods that are closely related to services in respect of which the trademark is registered; * If a third party uses in the course of trade, a mark which is identical or deceptively similar to, the trademark in relation to goods or services of the same description as that of goods or ervices in respect of which the trademark is registered, services that are closely related to goods in respect of which trademark is registered or goods that are closely related to services in respect of which the trademark is registered; If the third party uses the registered trademark as his domain name or part of his domain name or obtains such domain name without consent of the proprietor of the registered trademark and with the intention of selling such domain name to another person including the proprietor of the registered trademark; 3. 1. International Trend Of Trademark Law It is important to note that although there are systems which facilitate the filing, registration or enforcement of trademark rights in more than one jurisd iction on a regional or global basis (e. g. he Madrid and CTM systems), it is currently not possible to file and obtain a single trademark registration which will automatically apply around the world. Like any national law, trademark laws apply only in their applicable country or jurisdiction, a quality which is sometimes known as â€Å"territoriality† 3. 1. 1. Paris Convention (relating to the protection of industrial property) The Paris Convention for the Protection of Industrial Property (â€Å"Paris Convention† or just â€Å"Convention†) is one of the first, and arguably most important, of the various multilateral treaties protecting intellectual property. The treaty will not be discussed exhaustively here; commentaries on the treaty should be consulted to obtain additional information.The following, however, is a list of the major relevant articles of the treaty: * member states protect the trademark rights and other industrial property rights of other memb er states (art. 2); * each member state must maintain the fundamental principle that citizens of other member states receive the same protection as its own citizens (art. 2); and * member states must recognize the assertion of priority rights (art. 4). The articles that are particularly relevant to the trademark law include: * remedies for cases in which registered trademarks are not used, including sanctions (art. 5); * independent status of the trademark law (art. 6); * of well-known trademarks (art. 6, sec. 2); adjustment regulations on the transfer of trademark rights (art. 6, sec. 4); * regulations on trademarks registered in a foreign country (art. 6, sec. 5, the so called â€Å"telle quelle† trademark system) * protection of service marks (art. 6, sec, 6); * regulations controlling applications for trademark registration made by an agent, among others, without permission of the applicant (art. 6, sec. 7); * removal of trademark registration limitations based on the dis position of the goods (art. 7); * of collective trademarks (art. 7, sec. 2); * control of the importation of counterfeit goods (art. 9); * control of fraudulent indications of country origin (art. 0); * prohibition of acts of unfair competition (art. 10, sec. 2); * legal measures to prevent counterfeit goods and others (art. 10, sec. 3); and * temporary protection of goods exhibited in international expos (art. 11)11. There are 151 member states as of January 15, 1999 (WIPO, Industrial Property and Copyright, January 1999), demonstrating that most major countries in the world have joined the treaty. 3. 1. 2. Madrid system for the international registration of marks Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989).It is administered by the International Bureau of WIPO located in Geneva, Switzerland. The Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office. An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that Office.The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step 3. 1. 3. WTO Agreement on Trade-Related Aspects of Intellectual Property Rights The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement) is the Uruguay Round agreement covering the protection and enforcement of intellectual property rights. Intellectual property r ights were a key area of concern for the United States during the Uruguay Round negotiations. From the perspective of the United States, the TRIPs Agreement was a major achievement of the Uruguay Round.The TRIPs Agreement incorporates by reference most of the substantive provisions of two earlier multilateral IPR conventions: the Paris Convention for the Protection of Industrial Property (1967)(covering patents, trademarks, trade names, utility models, industrial designs and unfair competition) and the Berne Convention for the Protection of Literary and Artistic Works (1971) (covering copyrights). 3. 1. 3. 1. TRIPs Agreement and Trademarks TRIPs Agreement incorporates the substantive obligations of Articles 1 through 12 and Article 19 of the Paris Convention for the Protection of Industrial Property (1967). The TRIPs Agreement mandates protection for both trademarks and service marks. * Trademarks and service marks must have a minimum term of seven years and must be renewable indefi nitely. Article 18) * Restrictions on cancellation of trademark registrations for non-use: â€Å"If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. Circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognized as valid reasons for non-use. † (Article 19. ) * The TRIPs Agreement states that the owner of a registered trademark has the â€Å"exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the tradem ark is registered where such use would result in a likelihood of confusion. † (Article 16. 1) * Parallel importation (unauthorized importation of genuine trademarked products): * Except with respect to the National Treatment and Most Favored Nations obligations in Articles 3 and 4, parallel importation (â€Å"exhaustion of intellectual roperty rights†) is not subject to dispute resolution under the TRIPs Agreement (TRIPs Article 6). * Enhanced Protection for â€Å"well-known† marks: â€Å"In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark. † (Article 16. 2) * Under the Paris Convention (which is generally incorporated by reference into the TRIPs Agreement), well-known marks are entitled to protection in all Paris Convention/TRIPs Members, regardles s of whether the mark is registered. For an interesting discussion of the general issue of when an unregistered well-known mark must be protected see the decision by the Supreme Court of Sout Africa, Appellate Division, in McDonald’s Corporation v. Joburgers Drive-Inn Restaurant (PTY) Limited, Case No. 547/95, August 27, 1996. ) 3. 1. 4. Trademark Law Treaty The Trademark Law Treaty establishes a system pursuant to which member jurisdictions agree to standardize procedural aspects of the trademark registration process. It is not necessarily respective of rules within individual countries. 4. 1. Trademark Law In Pakistan The first trademark law in Pakistan was passed in 1940 and was known as the Trade Marks Act, 1940.Thereafter in order to comply with its international obligations, the Government of Pakistan decided to amend and consolidate the law relating to trademarks and unfair competition to provide for registration, better protection of trademarks, and the prevention of infringement. Therefore, the President of Pakistan passed the Trade Marks Ordinance, 2001. Trademark law in Pakistan is presently governed by the Trade Marks Ordinance, 2001 and the Trade Marks Rules, 2004. The trademark law in Pakistan requires no evidence of prior use of the mark in commerce for filing. A trademark application can be filed on a „proposed to be used? or „intent-to-use? basis or based on use of the mark in commerce.The Trade Marks Registry, which is under the administrative control of Intellectual Property Organization of Pakistan, is the office that is in charge of registering trademarks in Pakistan. A trademark registration in Pakistan gives exclusive proprietary rights to the rights holder for protection of their trademark in Pakistan. However because the Pakistani legal system is a common law system, even an unregistered trademark is entitled to protection and the rights holder of the unregistered trademark can initiate action against a third party u nder the „law of passing off. 4. 1. 1. Internationalisation Of Trade Marks In Pakistan Pakistani trademark law protects both domestic and foreign trademarks. Over the past several years, many foreign entities have been able to protect their trademarks in Pakistan.The first milestone observation recognizing internationalisation of trade mark came in 1979 from the Honourable Sindh High Court in a case where the court, while protecting an international trademark, observed, â€Å"The conduct of the respondent in appropriating trade marks of foreign owners is not proper†¦Ã¢â‚¬ ¦ It is common knowledge that trade in French perfumery is of international character. With the revival of International Trade and international publicity, the rights of owners of foreign Trade Marks ought to receive some safeguard unless it is clear from the evidence that the foreign owners have abandoned their intention of marketing their products under the mark in this country. The above trend was fo rtified when Honorable Supreme Court of Pakistan in the case of Alpha Sewing Machine approved the following observation of Honourable Lahore High Court, â€Å"With the proliferation of means of communication media the names and products of world renowned big companies are catching the eyes and ears of the public at large in all civilized countries of the world and Pakistan is no exception. Extensive traveling abroad in the recent past has made it possible for the people of Pakistan to have knowledge of the internationally renowned companies and their products†. It was held in Morphy Richards case â€Å"an enactment on Trade Marks is essentially an international statute, catering to national and international sensibilities†¦Ã¢â‚¬ ¦Ã¢â‚¬ ¦. We are living in an information age where the Earth has veritably become a global village†.In a case the High Court of Karachi granted an interim injunction restraining the Defendant from using the internationally well-known mark MARS on soft drinks. This injunction was granted despite the fact that Pakistan Mineral Water Bottling Plant (Pvt. ) Ltd. had registered the trademark MARS with the Trade Marks Registry. While the Courts in Pakistan had given due regard and recognition to internationalization of trade, they were quick to prevent the abuses by unscrupulous persons attempting to take advantage of globalization and the absence of specific statutory provisions at the relevant time. This was the result of judicial interpretation of relevant provisions relating to Intellectual Property laws and the general concept of civil law.Thus in 1988, the Honourable High Court of Sindh in the Sulemanji case, rejected an argument that an infringing product manufactured in Pakistan but to be sold in a foreign country would not violate the local law and no injunction could be issued. The Court, while rejecting this argument held at â€Å"†¦the product of the plaintiffs as well as of the defendants is exported to Middle East and Arabian Gulf countries. The deception would be caused upon the ultimate purchasers in the market and retail shops in the foreign countries. Admittedly the wrappers of the defendants are printed in Pakistan and, after the goods of the defendants are packed in such wrappers, such goods are exported for sale in foreign countries†¦Ã¢â‚¬ ¦ The action for injunction restraining the defendants from using the said mark is, therefore apparently maintainable in this Court. Similar was the Select Sports case, where Honourable Lahore High Court held, â€Å"The goods of the appellant company are sold in the International Market and if due to any reason goods of substandard quality are supplied to the International Market by any other user of the similar design, it would ultimately adversely affect the goodwill and the business of the appellant company. On the other hand, in the case of imports into Pakistan of infringing products, a Division Bench of the Honourable High Co urt of Sindh in the case Glaxo Vs. Evron, held, â€Å"If a person, in making a product overseas uses processes which would be infringing processes here, those processes being a principal part of the manufacture and then imports the article into this country, he is guilty of an infringement. The reason is because, by using those processes overseas and bringing the product here to sell, he deprives the Pakistani Patentee of the benefit of the invention. Globalization thrives on honesty of business practices. Judgments delivered by the Pakistani courts on intellectual property rights, particularly relating to adoption of marks, marketing of novel (inventive) products or copyrighted subject matter show that considerations for honesty of intention have been pivotal to such judgments. Thus in the case the Honourable Supreme Court of Pakistan held: â€Å"†¦. although the appellant has not been selling its products in Pakistan because of import restrictions, this does not entitle the respondent to copy the appellant’s trade mark, because by doing so it is deceiving the public into thinking that its products are products of the appellant. In the same case, the Honourable Supreme Court approved the following findings by the High Court: â€Å"Clearly, if the adoption of a trade mark by an appellant is proved to be dishonest, no amount of user of the trade mark by him can justify registration †¦Ã¢â‚¬ ¦Ã¢â‚¬ ¦ † The above judgments by Pakistani Courts came at times when International community was debating consensus on the issues affecting global intellectual property rights, which culminated in the TRIPs Agreement only in 1994. This is reflective of the consistent pragmatic and futuristic approach of the Pakistani Courts in matters relating to intellectual property rights. Licensing Of Trade MarksOne of the oldest ways of globalizing Intellectual Property Rights is through licensing of Intellectual Property. This is also the most commonly used wa y of commercializing Intellectual Property on the global scene. Unless the countries an effective platform enabling the licensing contracts to be entered into and worked out, as well as ensure that the termination of such contracts can be done without difficulty, no productive growth of global commercialization of products incorporating one or more forms of Intellectual Property Rights is possible. As far as licensing of Intellectual Property Rights is concerned, Pakistani courts have so far adopted a rational, pro-active and confidence building approach in adjudicating the rights.Thus in the cases of Bolan Beverages the Honourable Supreme Court, upheld the rights of the owners of trademarks to terminate license agreements. , while in the cases of Concentrate Mfg. Co. , vs. Seven-up Bottling and Roomi Enterprises vs. Stafford Miller, the Honourable High Courts also upheld the rights of the owners of trademarks to terminate license agreements. 4. 2. Market Entry Planning Though Pakis tan has passed laws protecting the intellectual property rights (IPR) of rights holders, its enforcement and implementation of these laws remains a matter of grave concern for rights holders. It is therefore imperative that businesses develop a comprehensive strategy for protecting their IPR and take steps to safeguard their rights before they enter the Pakistani market.Registration of trademarks is an important step that businesses should pursue in Pakistan. Many foreign and domestic rights holders have been able to successfully register their marks in Pakistan. 4. 3. 1. Who can apply and what can be registered Under the Trade Marks Ordinance, 2001, a person who is the proprietor of the trademark can apply for the registration of their marks for goods as well as services. Any word, signature, name, logo, label, numerals or combination of colors used by one enterprise on goods or services can be registered as a trademark in Pakistan. Under the Pakistani trademark law the following a re the types of trademarks that can be registered: * Product mark: a mark that is affixed to identify goods. Mark: a mark used to identify the services of an entity, such as the trademark for a broadcasting service, retail outlet, etc. They are used in advertising the services. * Certification mark: a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, mode of manufacture of goods or performance of services, quality, accuracy, or other characteristics. * Collective mark: a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings. * Geographical indications can also be protected in Pakistan as certification or collective trademarks. 4. 3. 2. What cannot be registered?The following are the types of marks that cannot be registered in Pakistan: * Which are not capable of being represented graphically and are unab le to distinguish goods or services of one undertaking from those of other undertakings; * Which are devoid of any distinctive character; * Which consist exclusively of marks or indications which designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; * Which consist exclusively of marks or indications which have become customary in the language or in the established practices of the trade; * Which consist exclusively of the shape which results from the nature of the goods themselves, the shape of oods which is necessary to obtain a technical result or the shape which gives substantial value to the goods; * Which consists of, or contains, any scandalous design, or any matter the use of which would be disentitled to protection in the High Courts or District Courts by reasons of it being likely to deceive or to cause confusion, is likely to hurt the religious sensibilities of any class of citizens of Pakistan, or is contrary to any prevailing law or morality; * The application for registration of which has been made in bad faith; * A word that is a commonly used and accepted name of any single chemical element or any single chemical compound in respect of a chemical substance or preparation or which is declared by the World Health Organization and notified in the prescribed manner by the Registrar from time to time, as an international non-proprietary name or which is deceptively similar to such name; * The national flag or any other State Emblem of a country which is a signatory to the Paris Convention (hereinafter known as „Convention country? shall not be registered without the authorization of the competent authorities of that country, unless it appears to the Registrar that use of the flag in the manner proposed is permitted without such authorization; * Which consists of, or contains, official mark or hallmark adopt ed by a Convention country shall not be registered in relation to goods or services of the same or a similar kind as those in relation to which it indicates control and warranty; * Which consists of or contains such emblem, abbreviations or name of an international organization that is protected under the Paris Convention. 4. 3. 3. Registration Procedure In case of an identical trademark being filed by two different applicants where the date of use in commerce is identical or if applications for the registration of both marks have been filed on an „intent-to-use? asis, the Applicant who files the trademark application first with the Pakistan Trade Marks Registry will have priority. It is therefore important to apply for registration of your mark as soon as possible. The registration of a trademark in Pakistan typically takes about two to three years, assuming that the trademark is not opposed by a third party. The Trade Marks Registry is the appropriate office for filing a tra demark application in Pakistan. Trademark applications can be filed either at the Karachi office or at the branch office of the Trade Marks Registry in Lahore. The different steps that are involved in the registration process in Pakistan are as follows: * Select a trademark agent/attorney in Pakistan, The trademark law in Pakistan allows the proprietor to file a trademark application only if they have a place of business in Pakistan. Should that not be the case, the rights holder will be required to file an application through a trademark agent/attorney. The trademark agent/attorney can do trademark searches and prepare, file, and prosecute applications, * To determine if the mark is eligible and available for registration, * The trademark agent will determine if the trademark is eligible for registration and also conduct clearance searches to determine if there is any deceptively similar mark that already exists on the Register of Trade Marks.It is advisable to conduct a common law search to ascertain if there are any third parties that might already be using the trademark, * Completing the application form and filing, The trademark agent can complete and sign the application form, provided that the rights holder has issued a signed power of attorney appointing them as the trademark agent. The details which must be mentioned in the trademark application are the full name and address of the Applicant, a statement of goods or services in relation to which it is sought to register the trademark, the international classification of goods or services, a representation of the trademark and the full name, address and contact details of the agent, in case the application. The application should also mention if the trademark is being used by the Applicant, or with his consent, in relation to goods or services, or if he has a good faith intention that it will be used. After the application has been filed, the Trade Marks Registry reviews it to ensure that it is complet e in all respects and thereafter allots an application number to the applications. If the trademark is registered, the application number becomes the registration number. * During the process of examination, the Trade Marks Registry determines if the trademark is barred from registration either under absolute grounds for refusal and/or relative grounds (prior trademark rights) as prescribed in the Trade Marks Ordinance, 2001. The Trade Marks Registry will issue an examination report and the Applicant must respond to any objections that have been raised in the examination report within the prescribed period.Thereafter and based on the response to the examination report that has been filed by the Applicant, the Registrar of Trade Marks determines if the application should be refused, accepted for advertisement, accepted subject to certain limitations or put up for a â€Å"show cause† hearing, during which the application might be accepted, rejected, or accepted subject to certa in limitations. Advertised before acceptance under section 28 (1) Ordinance 2001. | Registration of this trade mark shall give no right to the exclusive use of word made in Pakistan. | 273130 – 25 Footwear including shoes, boots, slippers ; sandals. Kashif Mahmood Tarar, Trading as, KIRAN TRADING CORPORATION Proprietor Pakistani, 4 Tape Road, Opp. University of Vaternary Sciences, Lahore,PK 06/10/2009.Shahs Registration Law Chamber 15- Edward (Mauj Darya) Road, Saleemi Chambers, Lahore-54000. | 4. 3. 4. Issuance Of Registration Certificte Within two months of the publication of the trademark in the Trade Marks Journal, should the trademark not be opposed by a third party, it will be accepted. Thereafter a Demand Notice is issued to the Applicant requesting him to pay the requisite registration fee. After the Applicant has paid the relevant registration fee, the registration certificate is issued. Below is the chart depicting the complete procedure for registration as is follo wed by the Trade Marks Registry in Pakistan. 4. 3. 5. Term of Trademark RegistrationTrademark protection in Pakistan is perpetual, subject to renewal of the registration every 10 years. The application for the renewal of a trademark can be filed 6 months before the expiration of the term of registration. 5. 1. Infringement ; Enforcement Remedies The Trade Marks Ordinance, 2001 provides for both civil and criminal remedies 5. 1. 1. Civil Litigation: A suit can be initiated either under the â€Å"law of passing off† or infringement under the Trade Marks Ordinance, 2001 depending on whether the trademark is unregistered, pending registration, or registered. The suit can be filed either at the High Court or at the District Court.The complaint filed by the rights holder should demonstrate that the alleged infringing act involves a mark that is identical or similar to a trademark of the rights holder. It should also specify that the representation of the trademark that is being use d in connection with goods or services might confuse the public regarding the origin of the infringing goods/services and that the this act of the infringer has interfered with the trademark holder's rights of exclusive use or has caused the rights holder economic loss. The rights holder can request the Court to grant an order of injunction, damages and delivery of infringing goods, materials or articles.Moreover, where a person is found to have infringed a registered trademark, the Court may make an order to cause the offending trademark to be erased, removed or obliterated from any infringing goods, materials or articles in his possession, custody or control or to secure the destruction of the infringing goods, materials or articles if it is not reasonably practicable for the offending mark to be erased, removed or obliterated. The Sindh High Court in a case confirmed an order of interim injunction against the Defendants and restrained them from using the trademark SHAN as it was a colorable imitation of the Plaintiff? s trademark AALI SHAN and stated that â€Å"the registration of trademark is not meant for the benefit of the trader only but also protects the public-at-large and its main object is to secure free enjoyment of the right of manufacturing and marketing of one? products and also to save general public from being deceived by the acts of unscrupulous manufacturers and sellers of goods bearing the fake trademark of others. For maintaining the purity of the trademark and for safeguarding the interest of the public, it is the duty of the Court to put restraint on use of another? s trademark by a person like the defendant; who is not entitled to use it. 5. 1. 2. Criminal Litigation The trademark law in Pakistan provides for criminal remedies in case of violation of a rights holder? s trademark. A criminal action can be initiated by filing a written complaint in the police station within whose jurisdiction infringement has taken place.After the procee dings have been initiated, the court may pass search and seizure warrants under which the premises of the infringer can be raided and the infringing goods seized. Should an infringer be found guilty of violating the rights holder? s trademark, he may be liable for imprisonment or fine or both. An infringer can be imprisoned for a maximum of three years with a maximum fine of PKR 50,000 (approximately $630 USD) under the Trade Marks Ordinance, 2001. In addition, the court has the authority to order the seizure, forfeiture, and destruction of infringing goods. Though provisions for criminal sentences exist in the Pakistani trademark law, such sentences are rare. 6. 1.International Trademark Treaties to which Pakistan is a Signatory * The World Trade Organization (WTO)Agreement, since 1995 * Paris Convention for the Protection of Industrial Property * Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) 7. 1. Conclusion The subject of a trademark right may be desc ribed as an intellectual product or intangible property. However, its purpose is not for cultural advancement, as is a copyright. It is a kind of â€Å"industrial property† and its contribution is for â€Å"industrial purposes† (protection of users). The protection of industrial property focuses on patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition. (Paris Convention, Article 1, Paragraph 2). A trademark right is one of the â€Å"industrial properties. The term, â€Å"industrial properties†, is usually used narrowly and indicates the rights covered by the four main laws; namely, the Patent Law, the Utility Model Law, the Design Law and the Trademark Law. A broad definition of â€Å"industrial properties includes various rights covered by the trade name provisions in the Commercial Code and the Unfair Competition Prevention Law. Trade Mark s are important aspects of legal practice under the of Intellectual Property Law. It is important for legal practitioners to acquaint themselves with this aspect since it is clear that for a very long time to come, trademarks will continue to play an important role in our society.New companies and business enterprises shall be formed and new products and services will be brought into the market by such new companies or by the existing companies; the legal has to position him self or herself to tap into this growing area. As it is now, there are still many business enterprises especially the local ones who have yet to grasp the importance of protecting their trademarks and service marks. Most institutions including universities, colleges4, hospitals, schools and many others have their own identity, badges or motto. This needs to be protected so that in the event of infringement, one may have recourse by bringing a claim on infringement against anyone who makes profits from where he h as not sown.Pakistan is a member of the World Trade Organization (WTO) and a signatory to the TRIPs Agreement. The regime of intellectual property laws in Pakistan is well established and goes back to the early twentieth century. The legal system in the country provides for adequate protection to the trade mark and design owners and those owners who pursue the legal remedies aggressively and pro-actively are able to control the menace of counterfeiting by due process of law. www. worldtrademarklawreport. com ABBREVIATIONS FTA Free Trade Area HIV/AIDS Human Immune Virus ILO International Labour Organisation IMF International Monetary Fund IPRs Intellectual Property Rights LDC Least Developed CountryOECD Organisation for Economic Co-operation and Development SADC Southern African Development Community SAP Structural Adjustment Programmes TRIPs Trade Related Intellectual Property Rights UNCTAD United Nations Conference for Trade and Development WB World Bank WTO World Trade Organisatio n ——————————————– [ 2 ]. Hereinafter, â€Å"trademark for goods† will be referred to as â€Å"trademarks,† and â€Å"trademark of services† will be referred to as â€Å"service marks† [ 3 ]. Schechter, The Historical Foundations of the Law Relating to Trade-Marks (New York: Columbia, 1925). [ 4 ]. Merchants marks were simple and formed merely linear designs, for example [ 5 ].Schechter, The Historical Foundations of the Law Relating to Trade-Marks (New York: Columbia, 1925). [ 6 ]. The U. S. federal government has the power to regulate the military, foreign affairs, and postal services, among others. However, art. 1, section 8, clause 8 of the U. S. Constitution states only that patents and copyrights fall under the federal power, and does not mention trademarks. Thus, the Supreme Court argued that the federal government did not have the power to regul ate trademarks. [ 7 ]. http://www. ipo. org(accessed on 24/11/2012) [ 8 ]. http://www. wipo. int/about-wipo(accessed on 24/11/2012) [ 9 ]. Trade Marks Ordinance, 2001 [ 10 ].Trademarks designed by Chermayeff & Geismar (Chermayeff, Geismar,& Geissbuhler, 2000) [ 11 ]. Katherine L. Spencer,Evaluating Trademark Design,P. 08 [ 12 ]. http://www. wipo. int/about-wipo(accessed on 28/11/2012) [ 13 ]. Katherine L. Spencer,Evaluating Trademark Design,P. 09 [ 14 ]. http://cyber. law. harvard. edu/metaschool/fisher/domain/tm. htm:article, Overview of Trademark Law [ 15 ]. ibid [ 16 ]. http://en. wikipedia. org/wiki/Wikimedia_Foundation(accessed on 25/11/2012) [ 17 ]. www. wipo. int-wipo(accessed on 28/11/2012) [ 18 ]. ibid [ 19 ]. www. wipo. int-wipo ( accessed on 28/11/2012) [ 20 ]. www. madridprotocol. info/internationaltrademarkprotection. html(accessed on 30/11/2012) [ 21 ]. html http://cyber. law. arvard. edu/metaschool/fisher/domain/tm. htm:article, Overview of Trademark Law [ 22 ]. ibid [ 23 ]. ibid [ 24 ]. ibid [ 25 ]. www. wipo. int(accessed on 30/11/2012) [ 26 ]. http://blogs-images. forbes. com/davidvinjamuri/files/2012/09/Dr-Publix-287Ãâ€"3001. jpg (accessed on 28/11/2012) [ 27 ]. Wrangler Apparel Corporation v. Axfor Garments {2008 C L D (70)}, [ 28 ]. Commentary On The Paris Convention For The Protection Of Industrial Property, Seth M. ReissLex-IP. com Honolulu, Hawaii, United States [ 29 ]. http://www. wipo. int/treaties/en/ip/paris/trtdocs_wo020. html(accessed on 28/11/2012) [ 30 ]. www. wto. org/english/tratop_e/trips_e/t_agm0_e. tm(accessed on 01/12/2012) [ 31 ]. World Trade Organisation Web-site: http://www. wto. org [ 32 ]. www. worldtrademarklawreport. com(accessed on 18/11/2012) [ 33 ]. Societe De Fabrication v. Deputy Registrar of Trademarks and another, PLD 1979 Kar 83 [ 34 ]. Alpha Sewing Machine v. Registrar of Trademarks and another, PLD 1990 SC 1074 [ 35 ]. Morphy Richards Ltd v. Registrar of Trademark and another, 1992 MLD 2506 [ 36 ]. Mars I ncorporated v. Pakistan Mineral Water Bottling Plant (Pvt. ) Ltd. {2001 M L D 39} [ 37 ]. PLD 1988 Kar 569 [ 38 ]. Ibid581 [ 39 ]. PLD 1998 Lah 69 [ 40 ]. Glaxo Vs. Evron,1992 CLC 2382 [ 41 ]. Cooper’s Incorporated Vs.Pakistan General Stores, 1981 SCMR 1039 [ 42 ]. Ibid 1044 [ 43 ]. Bolan Beverages vs. Pepsico Inc. , (2004 CLD 1530 [ 44 ]. Concentrate Mfg. Co. , vs. Seven-up Bottling (2002 CLD 77) [ 45 ]. Roomi Enterprises vs. Stafford Miller (2005 CLD 1805 (DB)) [ 46 ]. www. ipo. gov. pk(accessed on 12/12/2021) [ 47 ]. ibid [ 48 ]. http://www. ipo. gov. pk/Trademark/TrademarkForms. aspx(accessed on 12/12/2012) [ 49 ]. The Trade Marks Journal (No. 734 March 1, 2012 [ 50 ]. ibid [ 51 ]. http://www. ipo. gov. pk/Trademark/Downloads/TM-rules%202004. pdf(accessed on 28/11/2012) [ 52 ]. http://www. ipo. gov. pk(accessed on 12/12/2012) [ 53 ]. Sikander Sultan v. Masih Ahmed Shaikh{2003 C L D (26)}