Procedure of trademarks registration International marketing SUBMITTED by Ali Ammad Ahmed M Haroon javed Mubahshir Hanif Rohail iftekhar MBA1-SP08-01 MBA1-SP08-10 MBA1-SP08-11 MBA1-SP08-12 COMSATS INSTITUTE OF INFORMATION TECHNOLOGY TRADEMARKS A trademark is a sign that individualizes the goods of a given enterprise and distinguishes them from the goods of others. It can be in the form of words, designs, letters, numerals or packaging, slogans, devices, symbols, etc. 1: Functions: Trade Marks Registry is working under the administrative control of Intellectual Property Organisation of Pakistan. The main function of the Registry is to grant protection of trade marks relating to both goods and services through registration under the Trade Marks Ordinance 2001 and Trade Mark Rules 2004. The Trade Marks Registry works like a Civil Court. The Registrar of Trade Marks hears and decides the cases relating to registration, post registration, opposition and rectification matters. 2: Steps for Registration: 1. Search before filing of Application. 2. Filing of Application. 3. Preliminary Examination. 4. Final order for Publication. 5. Printing in Trademarks Journal. 6. Opposition Procedure. 7. Issuance of Registration Certificate. 8. Renewal of the Registration. 9. Post Registration matters. 10. Rectification Procedure. 3: Chart of the Department: Hierarchical Chart Registrar is BPS-19 officer appointed under provisions of Trade Mark Act 1940 by Federal Government. who works as Head of the Departments and also as a tribunal equivalent to District Court. Deputy Registrar BPS-18 officer is also tribunal of the same status 4: Trademarks Registry - A Service Oriented Organisation: As a service oriented department, the major objective of the Trade Marks Registry is to facilitate the general public and trade marks owner/applicant in trade mark registration. A help desk is separately working along with the reception where every one can get briefing/guidance on registration procedure and information related to any of the function of Trade Marks Registry. All the officers including Registrar of Trade Marks are easily accessible during the official working hours for any query or advice. Trade Marks Agents/Advocates have also been provided with a separate waiting room. A library with all related law books is available to the lawyers and the trade mark officials. The staff is provided with relevant training from time to time to update them on trade mark matters to achieve the best results. 5: Current Engagements: Computerization - Software Development: In order to modernize the working of the department an automation plan has been charted out. Implementation of the plan is being done phase by phase. In the first phase the database of the trade marks has been created and Index, Search, Examination, Journal and Registration departments have been fully automated. Registration of Geographical Indications: Globally Geographical Indications can be legally protected as Collective Marks, Certification Marks or under a Stand-alone Geographical Indications Law. Presently the Trade Marks Ordinance, 2001 provides for the registration of Geographical Indications under the ambit of Collective as well as Certification Marks. However, in order to further strengthen the legal base of protection of National Geographical Indications, consultations are under way with the respective stakeholders both from public and private sectors. IPO-Pakistan have also been seeking valuable advice for experts of the World Intellectual Property organization and other friendly countries. In this regard an international workshop, WIPO National Workshop on Geographical Indications,” was organized by IPO-Pakistan with the assistance of the EU and WIPO in July 2006. International of Trademarks: To facilitate international registration of Trade Marks of Pakistani exporters in the destination countries as well as registration of foreign Trade Marks in Pakistan, an International Workshop, “WIPO National Workshop on Trade Marks and the Madrid System,” was organized in December 2006 with the assistance of EU and WIPO. Speakers, local as well as foreign, shed light on the needs and requirement of international registration of trade mark under Madrid Agreement/Protocol. Seminars and Workshops: In its first year IPO-Pakistan arranged 3 training workshops, 2 high-level Roundtables and 1 conference on IP Judiciary with the assistance of WIPO, EU and the USPTO. Apart from organizing these events, IPOPakistan has also lend assistance to various organizations in arranging seminars, workshops, conferences, training sessions etc relating to Intellectual Property. 6: Staff Position: Designations Number of Sanctioned Posts BPS Vacant Registrar BPS-19 1 -- Deputy Registrar BPS-18 2 2 Assistant Registrar BPS-17 4 4 Administrative Officer BPS-16 1 -- Examiners BPS-16 12 -- Stenographer BPS-15 2 -- Superintendent BPS-14 1 -- Stenotypist BPS-12 2 -- Assistant Examiner BPS-11 6 -- U.D.Cs. BPS-7 12 -- L.D.C.s. BPS-5 20 -- Driver. BPS-4 1 -- Record Sorter and Duftary BPS-2 5 -- Naib Qasid, Farash and Chowkidar BPS-1 16 -- 85 6 7: Procedure for Registration: 1. It is advisable that a search may be made of the Trademarks Register to ensure whether there are any similar or identical marks on the Register. Search request can be filed on Form TM-55 with a Pay Order / Bank Draft of Rs. 500 for search of one mark in one class only. 2. After the search of the Register, application is made on Form TM1/TM-2 for one mark in one class with pay order / Bank Draft of Rs.1000/3. Acknowledgement Receipt by the Trade Mark Registry is issued to the applicant within 10-15 days. 4. Examination Report is generated after 3 months. If there are any objections on the applied trademark, they are communicated to the applicant immediately in the form of Show Cause Notice. The applicant is required to submit a reply within two months of the issue of Show Cause Notice. 5. If there are no objections application is published in the Trade Mark Journal. If no oppositions are filed to the published application within two months of the publication date of the relevant Trademark Journal, the application stands accepted, and s Demand Notice is then issued to the applicant requesting him/her to submit registration fee so that the registration Certificate may be issued. 6. On the receipt of the Registration fee, the Registration Certificate is issued. Trademarks: Forms S.No Form Description Fee Rs. 1 TM Form 01 TM Form 02 TM Form 03 On application not otherwise charged to register a trade mark for a specification of goods or services included in one class (section 22). On application to register a trade marks for a specification, of goods or services included in one class from convention country under section 25. On application under section 82, read will the first schedule to the ordinance, to register a collective mark for a specification of goods or services included in one class. On application under section 83 read with the second schedule to the ordinance, to register a certification trade mark for a specification of goods or services included in one class. On notice of opposition under section 28(2), for each application opposed. 1000.00 On a counter-statement in answer to a notice of opposition under section 28(4) for each application opposed or in answer to all application under any of section73, 80 and 96 in respect of each trade mark; or in answer to a notice of opposition under section 37 or 97, for each application or conversion opposed. On notice of intention to attend hearing under any of sections 28, 37, 73, 80, 96 and 97 by each party to the proceeding concerned On notice of opposition to application for registration of collective mark or certification trade mark under the first schedule (section 82) and the second schedule (section 83). On a counter- statement in answer to as notice of opposition under the first schedule (section 82) and the second schedule (section 83 for registration of collective mark or certification trade mark. Registration of a collective/certification trade mark Notice of intention to attend hearing of an apposition to an application for registration of a collective mark or a certification trade mark. (rule 40& 43). For one registration of a trade mark not otherwise charged, in respect of an application 500.00 2 3 4 TM Form 04 5 TM Form 05 TM Form 06 6 7 8 TM Form 07 TM Form 08 9 TM Form 09 10 TM Form 10 11 TM Form 1000.00 1000.00 1000.00 3000.00 200.00 3000.00 500.00 200.00 3000.00 11 12 TM Form 12 13 TM Form 13 TM Form 14 TM Form 15 TM Form 16 TM Form 17 14 15 16 17 18 19 20 TM Form 19 TM Form 20 TM Form 21 for a specification of good or services including series of trade marks, collective mark, certification mark and textile mark, including in one class. For each addition to the registered entry of a trade mark of a note that the mark is associated with a newly registered mark. (Fee is 100/- only). For renewal under section 35 of the registration of a trade mark at the expiration of the last registration, not otherwise charge including renewal of series of trade marks, collective mark, certification marks and textile mark. Additional fee under rule 52(1) for late payment of renewal. (Fee is 300/- only). On request for restoration under section 35(6) of a trade mark removed from the register. 5000.00 1000.00 On application under section 32(4) to divide pending trade mark application. 300.00 On a request under section 27(6) to state grounds of decision. 500.00 On request not otherwise charged, for correction of clerical error or for permission to amend application. Section 27(7). On application for certificate of the registrar under section 69(3). For each mark proposed to be assigned. For every additional mark proposed to be assigned.(Fee is 100/- only). 200.00 On the application for approval of the registrar section 69(3). For first mark. 300.00 For every additional mark. 100.00 On the application under section 69(2) for directions of the Registrar for advertisement of assignment of trade marks in use,with out good will.For the first mark assigned. 200.00 For every additional mark. 100.00 300.00 On the application for extension of time for applying for directions under section 69(2) for advertisement of assignment of trade mark in use. With out goodwill, in Respect of one devolution of title. Not exceeding one month. 200.00 Not exceeding two month. 400.00 21 TM Form 22 22 TM Form 23 23 TM Form 24 Not exceeding three months. 600.00 On application under paragraph 12 of the second schedule to the ordinance for consent of the registrar to the assignment or transmission of a certification trade mark. On the application under section 70(2)(a) to register a subsequent proprietor in a case of assignment or transmission of a single trade mark- 200.00 If made with in six month from the date of acquisition of proprietorship. If made after expiration of six month from the date of acquisition of proprietorship. On the application under section 70(2)(a) to register a subsequent proprietor of more than one trade mark registered in the same name, the devolution of title being the same in each case. If made with in six month from the date of acquisition of proprietorship. 2000.00 2500.00 For the first mark. 2000.00 For additional mark. 500.00 If made after expiration of six month from the date of acquisition of proprietorship. 24 25 26 27 TM Form 25 TM Form 26 TM Form 27 TM Form 28 For the first mark. 2500.00 For additional mark. 500.00 On application under section 72(4) for extension of time for registering a company as subsequent proprietor of trade mark on one assignment. Not exceeding two months. 200.00 Not exceeding four months. 400.00 Not exceeding six month. 600.00 On application under any of section 73, 80 and 96 for recertification of the register of trade mark from the register. On application under rule 69 for leave to intervene in proceeding Under any of sections, 73, 80 and 96 for rectification of the register or removal of trade mark from the register. Application for registration of registered licensee. 750.00 For first mark. 1000.00 500.00 For every additional mark. 28 29 TM Form 29 TM Form 30 On application under section 70(4) (a) and rule 64 to vary the entry of a registered licensee. For first mark. 500.00 For every additional mark. 250.00 On application under section 70(4) (b) and rule 65(1) for cancellation of the entry of a registered licensee. For the first mark. 30 TM Form 31 For every additional mark of the same proprietor for which the same registered licensee is registered, included in the application. On application under section 70(4) and rule 65(1) to cancel the entry of a registered licensee. For the first mark. 31 32 33 34 35 TM Form 32 TM Form 33 TM Form 34 TM Form 35 TM Form 36 250.00 For every additional mark of the same proprietor for which the same registered licensee is registered, included in the application. On notice under rule 66 of intention to intervene in one proceeding for the variation or cancellation of entries of a registered licensee of trade marks. On application under section 96(4) to change the name or description of a proprietor or registered user where there has been no change in the proprietorship or in the identity of the registered licensee. 500.00 100.00 500.00 100.00 250.00 For the first mark. 500.00 For every additional mark. 100.00 On application under section 96(4) to alter one or more entries of the trade or business address of a registered proprietor or a registered licensee of a trade mark where the address in each case is the same and is altered in the same way. For the first entry. 200.00 For every additional entry. 50.00 Application by registered proprietor of trade mark for the cancellation of entry thereof in the register. (Section 38). Application by registered proprietor of trade mark to strike out goods from those for which the trade mark is registered. (Section 38). 200.00 200.00 36 37 38 39 40 41 TM Form 37 TM Form 38 TM Form 39 TM Form 40 TM Form 41 TM Form 42 Request by registered proprietor of a trade mark that a disclaimer or memorandum relating thereto may be registered.{rule 34(f) and 34/9} On application under section 37 for leave to add to or alter a registered trade mark. 200.00 For the first registration. 1000.00 For each additional registration. 100.00 On notice of opposition under section 37(2) to an application for leave to add to or alter registered trade mark for each application opposed. On application under section 97(2) for conversion of Specification. 500.00 On notice of opposition under section 97(5) to a conversion of the specification or specifications of registered trade mark or registered trade markFor the first mark. 500.00 For every additional mark. 150.00 On application under paragraph 10 of the First Schedule and paragraph 11 of the Second Schedule to the Ordinance, and rules 40 and 46 alteration of the deposited regulations of a collective mark or a certification trade mark. For the regulations of one registration. 42 TM Form 43 43 TM Form 44 44 TM Form 45 150.00 For the same or substantially same regulations of each additional registration proposed to be altered in the same Way and included in the same application. On application under paragraph 14 of the First Schedule and paragraph 16 of the second schedule to the Ordinance, to expunge or vary the registration of a collective or a certification trade mark or certification trade mark of the same registered proprietor where the regulations are substantially the same. Claim to have the registerabilty of the mark applied for before commencement of the Ordinance, determined in accordance with the provisions of the Ordinance (conversions of application) Para-graph 11 of the Fourth Schedule to the Ordinance. Request (for information about applications and registered marks. (Section 109). 300.00 50.00 600.00 200.00 500.00 45 46 TM Form 46 TM Form 47 47 TM Form 48 48 TM Form 49 49 TM Form 50 50 TM Form 51 51 TM Form 52 52 TM Form 53 53 TM Form 54 On request for certificate of the Registrar under any of section 11 and 12 (2) other than certificate under section 33(1). On request to enter in the Register and advertise a certificate of validity, under rule 112 and rule 86. 500.00 For the first registration certified. 300.00 For every additional registration. 50.00 To be stamped under the stamped Act, 1899. From of authorized of agent in a matter or proceeding under the ordinance (Section 127, Rule 10). Paragraph 5 first schedule, paragraph 6 of second schedual, Rule 39(1) & 43(1) (To be accompanied by a dfuplicate f the draft tregulation and in the case of a textile mark to be accompanied by two duplicates of the draft regulation). On application by registered proprietor or a registered licensee of a trade mark or a person about to be so registered, to enter, alter or substitute an address for service as part of his registration. (Section 126 rules 9 and 70). For the first entry. 100.00 For every additional entry. 50.00 On application under section 82 and the First schedule to the ordinance to register a collective mark for a specification of goods or services in any one class from a convention country under section 25. On application under section 83 and the second schedule to the ordinance to register a certification trade mark for a specification of goods or services in any one class from a convention country under section 25. On application to register a textile mark, other than a collective mark or a certification trade mark, consisting of numerals or letters or any combination thereof in one class for specification of goods or services included in one item of the fifth schedule of the ordinance and under rule 91. On application to register a textile mark (other than collective or a certification mark), consisting exclusively numeral or letters or any combination thereof in one item on the fifth schedule to the ordinance under rule 12 from convention country 1000.00 1000.00 1000.00 1000.00 under section 25. 54 55 56 57 58 59 TM Form 55 TM Form 56 TM Form 57 TMA Form 01 (Act 1940) TMA Form 02 (Act 1940) TMA Form 03 (Act 1940) On request for search under rule 87 In respect of each class. 500.00 On application for extension of time under any of the rule 80. 500.00 On application for restoration of a trade mark abandoned for non-compliance of the requirement of the registry. See section 33(5) and 26(3). On application for registration as a trade mark agent under rule 119. 500.00 On application for restoration of the name of a person to the register of trade mark agents under rule 124. 500.00 On application for an alteration of any entry in the register of trade mark agent under rule125. 200.00 1000.00 Trademarks: Classification of Goods and Services Class Goods 1 Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. 2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. 4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting. 5 Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. 6 Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores. 7 Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs. 8 Hand tools and implements (hand-operated); cutlery; side arms; razors. 9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus. 10 Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials. 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes. 12 Vehicles; apparatus for locomotion by land, air or water. 13 Firearms; ammunition and projectiles; explosives; fireworks. 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments. 15 Musical instruments. 16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks. 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal. 18 Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. 19 Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal. 20 Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics. 21 Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes. 22 Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials. 23 Yarns and threads, for textile use. 24 Textiles and textile goods, not included in other classes; bed and table covers. 25 Clothing, footwear, headgear. 26 Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers. 27 Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile). 28 Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees. 29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats. 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice. 31 Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt. 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. 33 Alcoholic beverages (except beers). 34 Tobacco; smokers' articles; matches. Services 35 Advertising; business management; business administration; office functions. 36 Insurance; financial affairs; monetary affairs; 37 real estate affairs. Building construction; repair; installation services. 38 Telecommunications. 39 Transport; packaging and storage of goods; travel arrangement. 40 Treatment of materials. 41 Education; providing of training; entertainment; sporting and cultural activities. 42 Providing of food and drink, temporary accommodation, medical, hygienic and beauty care, veterinary and agriculture services, legal services, scientific and industrial research, computer programming, services that cannot be classified in other classes. Trademarks: Frequently Asked Questions How to File Trademark Application? Prescribed application form TM1/TM2. 8 clear reproduction of the sign, logo or Trademark, of any color, form or 3-dimentional features. List of goods or services to which the Trademark would apply. Power of Attorney if applied through an advocate / Agent. Pay Order / Bank Draft of Rs.1000/- in the name of Director General, IPO-Pakistan. Validity of Registration? Initially Trademark is registered for 10 (Ten) years from the filing date. The Trademarks registration can be renewed after every 10 (Ten) years. Procedure for Registration? It is advisable that a search may be made of the Trademarks Register to ensure whether there are any similar or identical marks on the Register. Search request can be filed on Form TM-55 with a Pay Order / Bank Draft of Rs. 500 for search of one mark in one class only. After the search of the Register, application is made on Form TM-1/TM-2 for one mark in one class with pay order / Bank Draft of Rs.1000/Acknowledgement Receipt by the Trade Mark Registry is issued to the applicant within 10-15 days. Examination Report is generated after 3 months. If there are any objections on the applied trademark, they are communicated to the applicant immediately in the form of Show Cause Notice. The applicant is required to submit a reply within two months of the issue of Show Cause Notice. If there are no objections application is published in the Trade Mark Journal. If no oppositions are filed to the published application within two months of the publication date of the relevant Trademark Journal, the application stands accepted, and s Demand Notice is then issued to the applicant requesting him/her to submit registration fee so that the registration Certificate may be issued. On the receipt of the Registration fee, the Registration Certificate is issued. Where is the Trademark Registry located? The Trade Marks Registry is located behind KDA Civic Center, Gushan-eIqbal, Karachi. Complete postal address is as follows: Trade Marks Registry, Plot CD-3, Behind KDA Civic Center, Karachi. Telephone numbers are +92221 923 1752, 923 2050, 923 1002. Fax number is +92221 923 1001 and email address is TMR@ipo.gov.pk. Are application forms filed in Karachi only? Trade Mark application can also be filed at Lahore in the IPO-Pakistan Branch Office. At the following address: IPO-Pakistan Branch Office, 3rd, Farid Towers, 19 , Temple Road, Lahore. Tel: +9242 722 4394-5. Fax: is +9242 722 4396. email: Lahore@ipo.gov.pk. In near future, IPO-Pakistan plans to open branch offices in the provincial capitals as well as other cities to facilitate the business community Can we get Trademarks Form from the Internet? All Trademarks forms are available on www.ipo.gov.pk. Can Trade Marks fees be submitted in cash? All payments to the Trade Marks Registry have to be made in the form of Pay Orders or Band Drafts in the name of Director General, IPO-Pakistan. The Trade Marks Registry does not accept CASH.