Trade Marks Registry By, Muhammad Mohsin, Registrar, Trade Marks Registry, IPO-Pakistan Empowering...

Trade Marks Registry

By,

Muhammad Mohsin,

Registrar, Trade Marks Registry,

IPO-Pakistan

Empowering the R&D , Industrial & SME Sector with S&T Information

Organised by PASTIC in collaboration with FPCCI

May 22nd 2007

TRADE MARKS REGISTRY - INTELLECTUAL PROPERTY ORGANISATION OF PAKISTAN

What is Intellectual Property Right?

Ideas and knowledge are an increasingly important part of trade Inventors or creators have the right to protect their inventions, designs or other creations. These rights are known as Intellectual Property Rights (IPR).

– Books, paintings and films come under copyrights;– Inventions can be patented; and– Brand names and product logos can be registered as

TRADEMARKS.


What is Trademark?

A trademark is a distinctive sign, which identifies certain goods or services, produced or provided by a specific person or enterprise.

Trade Marks’s Origin– Its origin dates back to ancient times, when craftsmen

reproduces their signatures, or “marks” on their artistic or utilitarian products.

– Today’s system of trademark registration and protection helps consumers to identify and purchase a product or service because of its nature and quality, as indicated by its unique trademark.


Kinds of Trademark

Trade Marks, limitless, may consist of one word or combinations of words, letters, numerals, drawings, and symbols.

Audible signs such as music or vocal sounds, fragrance, or color used as distinguishing features.

Collective marks, Certification marks

MOST VALUABLE GLOBAL BRANDS

Coca-Cola - $67.5bn (US) Microsoft - $59.9bn (US) IBM - $53.4bn (US) General Electric - $50bn (US) Intel - $35.6bn (US) Nokia - $26.5bn (Finland) Disney - $26.4bn (US) McDonald's - $26bn (US) Toyota - $24.8bn (Japan) Marlboro - $21.1bn (US)

Source: Interbrand


Benefits of Trademark Registration

Trademarks represent goods or services originating from a specific person or entity;

It assures that a producer or proprietor is behind the product or service;

Trademark serves as a sign of consistent quality; Trademark assures that customers/users of the goods and/or

service can communicate their complaints to the entity behind the trademark.

A registered Trademark becomes the property of the registrant which he can sell, assign, license etc to others.

The registrant has the right to use his/her trademark on his/her goods and services without any hindrance from any other party.

Trademark registration acts as the proof of ownership of the registrant.

The registrant can stop other people from using his/her trademark or identical or deceptively similar trademarks.

The registrant is also authorized to use the ® symbol with his/her trademark.

Trademark registration extends to the whole of Pakistan.

The registrant can also prevent goods bearing his / her mark from entering in Pakistan.

Benefits of Trademark Registration


Amended Trade Mark Ordinance under the TRIPS

Famous / Well Known Marks Service Marks Trade Name Domain Names Unfair competition Temporary Protection for Exhibition Border Measures. Geographical Indications (Collective Marks) Comparative Advertisement Convention Trademark Applications False Trade Descriptions Dilution of Trademarks


Types of IPR covered by TRIPS

Trade Marks, including service marks Geographical indications Copyright and related rights Patents Industrial designs Layout-designs (topographies) of integrated circuits Undisclosed information, including trade secrets.


Application Must Contain

Covering Letter

Prescribed application form TM1/TM2

Clear reproduction of the sign, logo or Trademark, of any color, form or 3-dimentional features.

List of goods or services to which the Trademarks would apply.

Remember

Your Trademark must be distinctive.

Your Trademark must neither mislead nor deceive customers or violate public order or morality.

Trademark Database Search

Before filing of an application, applicant can make search of identical or similar Trade Mark from Database of TMR

Submit an application on TM-56 with a pay order / bank draft of Rs. 500

Submit 2 copies of the trademark to be searched

Procedure of Registration

Trademark Database Search (Optional) Filing of Application Issuance of Acknowledgement Receipt (within a

fortnight) Examination of the Application (within 3 months) Issuance of Show Cause Notice if any objection,

otherwise forwarded to the Journal Section for publishing in the Trade Mark Journal

Procedure of Registration (contd.)

Two months opposition period from the date of publishing in the Trade Mark Journal

If opposition filed forwarded to Opposition section for opposition proceedings, otherwise issuance of Demand Notice for payment of prescribed fee for Registration Certificate

Issuance of Registration Certificate after receipt of prescribed fee (within 45 days of receipt of the Registration fee)


Validity of Registration

Under Old Law (1940 Act)– Registration initially for Seven years from the

filing date – Renewal for Fifteen years

Under New Law (Ordinance 2001)– Registration initially for Ten years from the filing

date– Renewal for Ten years


Trade Marks Registry

Established in 1948 Ministry of Commerce Head Office at Karachi Branch Office in Chittagong (now Bangladesh) Established Branch Office in Lahore in 1974 Became part of IPO-Pakistan in April, 2005


Trade Marks Registry: Current Organogram

Registrar of Trade Marks (BPS-19)

Deputy Registrar(BPS-18)

Deputy Registrar(BPS-18)

Assistant Registrar(BPS-17)




Examiner(BPS-16)

Examiner(BPS-16)

Examiner(BPS-16)

Examiner(BPS-16)

Examiner(BPS-16)

Examiner(BPS-16)

Examiner(BPS-16)

Examiner(BPS-16)

Examiner(BPS-16)

Examiner(BPS-16)

Examiner(BPS-16)

Examiner (Lahore)(BPS-16)

Administrative Officer(BPS-16)

Assistant Director IT

Assistant Director Finance

NOTE: Except AD – IT and AD – Finance all officers are Civil Servants.


Sections in Trade Marks Registry

Index Examination Order Journal Opposition (if

applicable) Legal

Registration Post Registration Renewal Record Administration / Accounts IT


13627262%

8272138%

Local

Foreign

Local vs. Foreign (till 31st Dec 2006)

Grand Total: 219422


Foreign Filing Details (till 31st Dec 2006)

19488

15011

9149

6020

4852

3929

2280

2102

1878

1088

1245

633

31472

0

5000

10000

15000

20000

25000

30000

35000


Filing

S.No Country 2001 2002 2003 2004 2005 2006

1 Pakistan 4257 4393 5477 6945 8730 9222

2 USA 413 474 147 514 324 314

3 England 413 494 396 1144 974 1318

4 Germany 219 197 291 594 378 800

5 Switzerland 295 207 296 310 291 275

6 Italy 219 197 291 594 378 800

7 India 41 61 45 54 85 92

8 Netherland 51 42 38 120 84 82

9 China 44 40 72 124 179 234

10 Korea 27 28 37 36 62 30

11 Other 1265 769 1381 3157 1069 0

Total 7244 6902 8471 13592 12554 13167


Examination

Year Received Examined Rate of Examination

2001 5979 5132 85.83

2002 6133 7636 124.51

2003 7090 9841 138.80

2004 10435 12869 123.33

2005 11485 12819 111.62

2006 13167 19292 146.52


Registrations

Applications Grants

Year Residents Foreign Total Residents Foreign Total

2001 4852 2392 7244 533 865 1398

2002 5342 1560 6902 589 1365 1954

2003 6318 2153 8471 767 1742 2509

2004 8421 5171 13592 1136 2423 3559

2005 8789 3765 12554 439 2776 3215

2006 9222 3945 13167 1612 1648 3260


Trade Marks Registry’s Performance

Service Delivery Before coming under the administration of IPO-

Pakistan, Examination Section had a backlog of 30 months, which came down to 12 months in 2004-2005; the same is now for only 3 months as Examination is being carried on for the month of February 2007;

Copyright advertisements are also being published in the TMJ from the issue of November 2006. (Published in February, 2007)

Service Delivery 8 months back TMJ was 15 months late; now

for the first time since 1970 the TMJ is published in the same month.

Registration Certificate in applications where there are no objections and Oppositions can be issued in 15-18 months from July 2007 onwards.

Trade Marks Registry’s Performance (contd.)


Revenue The revenue of the Trade Marks Registry in the current fiscal year

crossed Rs. 42.88 million in the first 10 months, which is a record to date as compared to Rs. 31.6 million in the corresponding period last year (an increase of over 35%).

Public Outreach Program So far seminars on IP awareness have been organized in major

cities like Sialkot, Hyderabad, Faisalabad, Peshawar, Gujrat, Sukkur, Gujranwala and Rawalpindi. Plans for organizing seminar in Multan are in the final stages.



Well-known Trade Marks. The Trade Mark Ordinance is already protecting the Well-known Marks under

section 86 and National Emblems of Convention countries and other international organization under sections 87, 88 and 89 as required under the Paris Convention.

Database of State emblems and logo at the WIPO website is now available to the Examiners, as Internet facility has been provided to them.

Expediting the Process of Trade Mark Application The Registrar Trade Mark can expedite the process of Trade Mark Registration of

a certain application on the basis of valid grounds as per the discretionary powers vested on him by the Trade Mark Ordinance, 2001.

The applications for protection of trademarks in the Asia Cup & Champions Trophy to be held in 2008 may be dealt accordingly.



Initiatives As TMR is already using the Nice Classification for the purposes of classifying

goods and services, it has been initiated that Pakistan should become a member of the Nice Union enabling Pakistan to actively participate in different organs of the Nice Union concerning the amendments and maintenance of the Classification etc.

Proposal has also been initiated for accession to Vienna Agreement and other International Treaties.

Certificates of Registration and Renewal are now being generated from Computer.

The Journal Section is also connected to the TMR software. The section now can print the Journal directly from the software eliminating the need to require films from the applicants saving considerable time of TMR.

Search facility will also be made available in the Lahore office and Islamabad within couple of months.



Future Plans

Training for Industrial Property Application System (IPAS).

Extensive training of TMR staff dealing with Nice and Vienna, GI, Folklore & Traditional Knowledge, Madrid applications (preferably by the WIPO) with emphasis upon

– Formality Checking / Local Search – Correspondence– Opposition in a Designated Country– Registration, Post Registration Changes and Renewal of

International Applications– Protection of Already Registered Trade Marks– Strengthening the Legal Section


Future Plans (Cont.)

Installation of IPAS with the assistance of WIPO under process;

Provision of High Bandwidth Internet Connectivity (Primary & Backup)

Backup Power Generator for Trade Marks

Procurement of Computer Hardware and Accessories


THANKS

www.ipo.gov.pk

[email protected]

Trade Marks Registry By, Muhammad Mohsin, Registrar, Trade Marks Registry, IPO-Pakistan Empowering...

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