Question 1

The process for applying for trademark registration according to the Trade Marks
Ordinance, 2001 involves the following steps:

1. Application Submission:

An application for registration must be made in writing to the Registrar in the prescribed
manner.
The application must include:
A request for the registration of a trademark.
The full name and address of the applicant.
A statement of goods or services for which registration is sought.
International classification of goods or services.
A representation of the trademark.
Full details of the agent (if the application is made by an agent).

2. Declaration of Use:
The applicant must declare that the trademark is being used or will be used in good faith
for the specified goods or services.

3. Payment of Fees:
The application is subject to the payment of a prescribed fee.

4. Date of Filing:
The date of filing is recognized as the date the required documents are submitted to the
Registrar.

5. Examination:

The Registrar examines the application to ensure it meets the requirements.

If deficiencies are found, the Registrar informs the applicant to amend or address the
issues within a specified period.

6. Publication and Opposition:

Once accepted, the application is advertised in the official journal.
Any interested party may oppose the registration within a specified period. The applicant
must respond to any opposition to proceed.

7. Registration:
If there is no opposition, or if opposition is resolved in favor of the applicant, the
trademark is registered.
The applicant must pay any additional registration fees, and the trademark is registered
as of the application date.

As 22 (Application for registration), 27 (Examination of application), 28 (Publication,

opposition proceedings, and observations), and 33 (Registration.
Question 2
Key documents to include:
Application form
: The official trademark application form, properly filled out.
Trademark

representation:
A clear image of your trademark, including logo, wordmark, or design.

Description of goods/services:
A detailed list of the products or services your trademark will be used on.

Applicant details: Personal information of the trademark owner, including name,

address, and proof of identity.

Power of attorney
(if applicable): A legal document authorizing an agent to act on your behalf in the
trademark application process.

Trademark search report:

A document showing the results of a search to check for existing trademarks that could
conflict with yours.

Declaration of Use:
A declaration confirming that the trademark is being used or will be used in good faith for
the specified goods or services.

Payment of Prescribed Fees:

Payment of the application fee as prescribed.

Question 3

What is the role of registrar in trademark registration?

The Role of the Registrar in Trademark Registration

The Registrar plays a crucial role in the trademark registration process under the
Trademark Ordinance, 2001. The Registrar is responsible for examining trademark
applications, ensuring compliance with legal requirements, and maintaining the
trademark register. The Registrar’s duties include:

1. Receiving Applications: The Registrar receives trademark applications submitted by

individuals or entities seeking to register their trademarks.
2. Examining Applications: The Registrar examines the applications to ensure they
meet the necessary legal criteria, such as distinctiveness and non-deceptiveness.

3. Publication: If the application is found to be in order, the Registrar publishes the

trademark in the official journal to allow for public opposition.

4. Handling Oppositions: The Registrar handles any oppositions filed by third parties
against the registration of the trademark.

5. Granting Registration: If no oppositions are filed or if the oppositions are resolved in

favor of the applicant, the Registrar grants the trademark registration.

6. Maintaining the Register: The Registrar maintains the trademark register, which
includes recording all registered trademarks and any changes or renewals.

7. Handling Infringements: The Registrar investigates cases of trademark infringement

and takes necessary actions to protect the rights of trademark owners.

8. Issuing Certificates: The Registrar issues certificates of registration to the trademark

owners, confirming the legal protection of their trademarks.

9. Providing Information: The Registrar provides information and guidance to

applicants and the public regarding trademark registration procedures and
requirements.

10. Ensuring Compliance: The Registrar ensures that all trademark registrations
comply with the provisions of the Trademark Ordinance, 2001, and takes action against
any fraudulent or misleading registrations.

Question 4

What happens if the trademark application is opposed?

Under the Trademark Ordinance, 2001, if a trademark application is opposed, the

following steps take place to resolve the opposition:

1. Filing of Notice of Opposition

- When a trademark application is published in the official gazette, any person who
believes that the registration should not be granted can file a notice of opposition within
the prescribed period (usually 2 months from the date of publication).

- The notice of opposition must clearly state the grounds for opposing the registration.
2. Service of Notice to Applicant

- The Registrar of Trademarks serves a copy of the notice of opposition to the

applicant, informing them of the opposition and the grounds cited.

3. Filing of Counter-Statement

- The applicant must file a counter-statement in response to the notice of opposition

within the prescribed time (usually 2 months from the receipt of the notice).

- The counter-statement should address each ground of opposition and present

arguments and evidence supporting the application.

4. Evidence Submission by Opponent

- The opponent is given an opportunity to file evidence supporting their

opposition, usually in the form of affidavits and relevant documents, within the
prescribed period.

5. Evidence Submission by Applicant

- The applicant is then given an opportunity to file evidence in support of their

application, usually in the form of affidavits and relevant documents, within the
prescribed period.

6. Rebuttal Evidence by Opponent

- The opponent may file rebuttal evidence to counter the evidence submitted by
the applicant.

7. Hearing

- After the completion of evidence submissions, the Registrar may schedule a hearing
where both parties can present their arguments orally.

- Both the opponent and the applicant or their legal representatives will be heard by the
Registrar.

8. Decision by Registrar
- The Registrar reviews the evidence and arguments presented by both parties and
makes a decision regarding the opposition.

- If the opposition is upheld, the trademark application is refused.

- If the opposition is dismissed, the trademark is granted registration.

Question 5

What exclusive rights does a registered trademark owner have?

According to the Trade Marks Ordinance, 2001, the exclusive rights of a registered
trademark owner include:

1. Right to Exclusive Use:

The proprietor of a registered trademark has the exclusive right to use the trademark in
relation to the goods or services for which it is registered.

2. Right to Prevent Unauthorized Use:

The owner can prevent others from using identical or deceptively similar marks without
consent, especially if it causes confusion or association in the public’s mind.

3. Infringement Remedies:

The proprietor has legal recourse if the trademark is infringed. This includes seeking
damages, injunctions, or orders for the destruction of infringing goods.

4. Licensing and Assignment:

The owner can license or assign the rights to the trademark to others, subject to the
terms and conditions specified in the ordinance.

5. Rights from Registration Date:

The rights conferred take effect from the date of registration, even though infringement
proceedings cannot commence before the registration date.

6. Extension to Related Goods and Services:

The exclusive rights extend to goods or services that are similar or closely related to
those specified in the registration, if the use is likely to cause confusion.

7. Protection Against Dilution:

The registered owner can act to prevent the use of their trademark in ways that dilute its
distinctive character or reputation, even if the goods or services are unrelated.

Question 6

What constitutes trademark infringement under the ordinance?

Under the Trademark Ordinance, 2001, trademark infringement occurs when someone
uses a mark that is identical or confusingly similar to a registered trademark without the
owner’s permission. Here are the key elements that constitute trademark infringement:

1. Unauthorized Use: Using a trademark that is identical or deceptively similar to a

registered trademark without the owner’s consent.

2. Goods or Services: The unauthorized use must be in connection with goods or

services that are identical or similar to those for which the trademark is registered.

3. Likelihood of Confusion: The use of the mark must create a likelihood of confusion,
deception, or mistake among the public regarding the origin of the goods or services.

4. Bad Faith: Using the trademark in bad faith, such as attempting to capitalize on the
reputation of the registered trademark.

5. Counterfeiting: Producing or distributing goods that bear a trademark that is

identical or substantially indistinguishable from a registered trademark.

6. Dilution: Using a mark that dilutes the distinctiveness or tarnishes the reputation of
the registered trademark, even if the goods or services are not directly competing.

7. Importation of Counterfeit Goods: Importing goods that bear a counterfeit

trademark into the country.

8. Unauthorized Licensing: Using the trademark without proper authorization from the
trademark owner, including unauthorized sublicensing.

9. False Representation: Representing goods or services as being associated with the

registered trademark when they are not.

Question no 7

What remedies are available in case of trademark infringement?

Under the Trade Marks Ordinance, 2001 of Pakistan, a trademark owner has several
legal remedies available in case of infringement. Here’s a detailed explanation:
 1. Injunction: The trademark owner can seek a court order to prevent the infringer
from continuing the unauthorized use of the trademark. An injunction is a
powerful tool to stop further infringement immediately.

2. Damages: The trademark owner can claim monetary compensation for the
losses suffered due to the infringement. This includes both actual damages and
any additional damages deemed appropriate by the court.

3. Accounting for Profits: The owner can request the court to order the infringer to
account for and pay over any profits made from the unauthorized use of the
trademark. This ensures that the infringer does not benefit financially from the
infringement.

4. Destruction of Infringing Goods: The court may order the seizure and
destruction of goods, labels, packaging, and any other materials that bear the
infringing trademark. This helps in removing counterfeit products from the
market.

5. Criminal Proceedings: The trademark owner can initiate criminal action against
the infringer. The Trade Marks Ordinance provides for penalties, including fines
and imprisonment, for trademark infringement. This serves as a deterrent to
potential infringers.

These remedies are designed to protect the rights of the trademark owner and ensure
that infringement is addressed swiftly and effectively.

Question 8

What are some common exceptions to trademark ordinance ?

Here are some common exceptions to trademark infringement under the Trademark
Ordinance, 2001:
1. Fair Use: Allows the use of a trademark for purposes such as commentary, criticism,
news reporting, teaching, scholarship, or research without permission.

2. Nominative Use: Permits the use of a trademark to refer to the trademark owner’s
product or service, especially in comparative advertising, as long as it does not create
confusion or suggest endorsement.

3. Descriptive Fair Use: Allows the use of a trademark to describe the user’s products
or services, rather than as a trademark to indicate the source of the goods or services.

4. Parody: Allows the use of a trademark in a humorous or satirical way, as long as it

does not create confusion or dilute the trademark’s distinctiveness.

5. First Sale Doctrine: Allows the resale of genuine trademarked goods without the
trademark owner’s permission, once the goods have been lawfully sold.

6. Geographical Names: Use of geographical names in a way that is honest and in

accordance with honest commercial practices, even if the name is the same as or
similar to another’s mark.

7. Non-Commercial Use: Use of a trademark in a non-commercial context, such as in

academic articles, media reports, or personal use.

Q10. What types of works are eligible for copyright protection under the Copyright
Ordinance of Pakistan? (6247)

Answer:

Under Section 10 of the Copyright Ordinance, 1962, the types of works eligible for
copyright protection are:

1. Original Literary Works: Includes works such as books, manuscripts, tables,

compilations, and computer programs (recorded on any medium capable of
reproduction).

2. Dramatic Works: Covers recitations, choreographic works, and forms of

entertainment fixed in writing or otherwise.

3. Musical Works: Defined as compositions of melody and harmony or either, reduced

to a tangible form like writing.

4. Artistic Works: Encompasses paintings, sculptures, drawings, diagrams, maps,

charts, engravings, photographs, and architectural works of art.
5. Cinematographic Works: Includes visual images (whether silent or with sound) that
create the impression of motion.

6. Sound Recordings (Records): Captures sound embodied in a medium capable of

reproduction.

Key Conditions for Copyright Protection

For Published Works: Copyright subsists if the work is first published in Pakistan or, if
published outside Pakistan, the author must be a citizen or domiciled in Pakistan at the
time of publication.

For Unpublished Works (excluding architectural works): The author must be a Pakistani
citizen or domiciled in Pakistan at the time of creation.

For Architectural Works of Art: Copyright subsists if the work is located in Pakistan.

Exclusions

Copyright does not extend to any cinematographic work or record that significantly
infringes another's copyright.

For architectural works, protection is limited to artistic character and design and does
not include construction processes or methods.

Q11. Who is considered the "author" of a work under the Copyright Ordinance?

Answer:

Under Section 2(d) of the Copyright Ordinance of Pakistan, 1962, the definition of
“author” depends on the type of work:

1. Literary or Dramatic Work: The person who creates the work is considered the
author.
2. Musical Work: The composer of the work is the author.
3. Artistic Work (excluding photographs): The author is the artist who creates the
work.
4. Photographs: The person who takes the photograph is regarded as the author.
5. Cinematographic Works: The owner of the work at the time of its completion is
considered the author.
6. Sound Recordings (Records): The owner of the original plate from which the
record is made, at the time of the plate’s creation, is the author.
Additional Context from the Ordinance:

Government Works: When a work is made or published by or under the direction of the
government, the government is regarded as the author unless stated otherwise.

Anonymous or Pseudonymous Works: If the author’s identity is not disclosed, the

author is the person who takes responsibility for publication, subject to certain
conditions.

Architectural Works: The author is the person who designs the artistic aspects of the
building or structure.

Joint Authorship: In cases where a work is created by two or more authors, all are
considered joint authors unless one or more authors fail to meet the conditions of
copyright. In such cases, the remaining authors are treated as sole authors for copyright
purposes.

Q12. Under the Copyright Ordinance of Pakistan, what legal remedies are available
to a copyright owner in case of infringement?

Answer:

Legal Remedies for Copyright Infringement

Under the Copyright Ordinance of Pakistan, 1962, the following remedies are available
to copyright owners in case of infringement:

1. Civil Remedies (Section 60 & Section 63)

The copyright owner can take civil action to:
Injunction: Seek an injunction to prevent or restrain the infringer from continuing the
infringement (Section 60).
Damages: Claim monetary compensation for the loss suffered due to infringement.
Account of Profits: Recover profits earned by the infringer from unauthorized use of the
work.
Delivery of Infringing Copies (Section 63):
The court may order the delivery of all infringing copies, plates, or other articles used for
infringement.
These may be destroyed or dealt with as the court deems appropriate.

2. Criminal Remedies (Sections 66-74)

The Ordinance specifies strict penalties for copyright infringement:
Penalties for Infringement (Section 66):
Imprisonment up to three years.
Fine up to PKR 10,000.
Both imprisonment and fine in severe cases.
Unauthorized Production, Distribution, and Reproduction (Section 66A–66E):
Penalties for unauthorized adaptation, reproduction, distribution, and rental of works.
Enhanced Penalties for Repeat Offenders (Section 70B):
Increased fines and longer imprisonment for subsequent offenses.
Possession of Plates for Infringement (Section 67):
Possession of plates or tools used to produce infringing copies is punishable.
Seizure and Disposal of Infringing Goods (Section 74):
Authorities can seize infringing copies, plates, and equipment.
Courts may order their destruction or disposal.

3. Administrative Remedies
Customs Measures (Sections 65A-C):
Customs officers can detain and prevent the import/export of infringing copies.
Courts can order forfeiture, release, or other appropriate actions regarding detained
goods.

Disposal Orders by Courts (Section 73): Courts can order destruction, sale, or
disposal of infringing items.

4. Author’s Special and Moral Rights (Sections 62 & 63)

Moral Rights:
Authors can claim authorship of their work.
Authors can prevent distortion, mutilation, or any modification that could harm their
reputation.
Separate Rights (Section 61):
Protection of one right does not affect others. For example, infringement of
reproduction rights does not undermine broadcasting or public performance rights.

5. Specific Provisions for Infringement Cases (Sections 56-57)

Definition of Infringement (Section 56):
Performing or reproducing a work without authorization constitutes infringement.
Permitting public use of a place for unauthorized performances is also infringement
unless done unknowingly.
Certain Acts Not Considered Infringement (Section 57):
Fair dealing for research, private study, criticism, or review.
Reporting of current events in newspapers or broadcasts.
Judicial use or publication of judicial proceedings.

6. Jurisdiction and Procedural Rules (Sections 65 & 74A)

Jurisdiction of Courts (Section 65): Only civil courts with proper jurisdiction can
entertain infringement cases.
Magistrate’s Powers (Section 74A): Magistrates can award compensation for damages
resulting from infringement offenses.

13. What are the eligibility criteria for an invention to be patented under the
Ordinance?

Answer:
Under Patents Ordinance, 2000, the following eligibility criteria must be met for an
invention to be patented:

1. Patentable Inventions (Section 7)

An invention is patentable if:

Novelty: The invention is new and does not form part of the state of the art.
Inventive Step: The invention involves an inventive step, meaning it is not obvious to a
person skilled in the relevant art.

Industrial Application: The invention is capable of being manufactured or used in

industry.

2. Non-Patentable Inventions (Section 7(2))

The following are excluded from being treated as inventions:
Discoveries, scientific theories, and mathematical methods.
Literary, dramatic, musical, or artistic works or creations of purely aesthetic character.
Schemes, rules, or methods for performing mental acts, playing games, or doing
business.
Presentations of information.
Substances existing in nature or isolated from natural sources.

3. Additional Exclusions (Section 7(4))

A patent will not be granted for:
Inventions whose exploitation would be contrary to public order or morality, including
harm to human, animal, or plant life, or the environment.

Plants, animals, and essentially biological processes for their production (excluding
microorganisms and non-biological or microbiological processes).

Diagnostic, therapeutic, and surgical methods for the treatment of humans or animals.
New uses or forms of a known product or process, except where such use or form
fulfills patentability criteria.
Changes in the physical appearance of a chemical product without altering its
composition or manufacturing process.

4. Novelty Criteria (Section 8)

• The invention is new if it has not been disclosed publicly anywhere in the world
before the priority date of the patent application.
• Disclosure includes publications, oral communication, or public use.
• Traditional knowledge available with local or indigenous communities is part of
the state of the art and cannot be patented.

5. Inventive Step (Section 9)

The invention must not be obvious to someone skilled in the relevant field, considering
the prior state of the art.

6. Industrial Application (Section 10)

The invention must be capable of being manufactured or applied in any industry.

Q14. Describe the process of filing a patent application under the Patent
Ordinance, 2000.

ANSWER
The process for filing a patent application under the Patents Ordinance, 2000, is as
follows:

1. Eligibility to Apply (Section 11)

The true and first inventor, their assignee, or their legal representative may file a patent
application.
Joint applications are also allowed.

2. Filing the Application (Section 13)

The application must be filed at the Patent Office in the prescribed form and manner.
It must contain:
• A declaration that the applicant possesses the invention.
• The name of the inventor if the applicant is not the inventor.
• A provisional or complete specification.

3. Specification Types (Section 14)

Provisional Specification: Filed to establish priority; must be followed by a complete

specification within 12 months.
Complete Specification: Includes a detailed description of the invention and its claims.

4. Requirements for Specifications (Section 15)

• Full and clear description of the invention and its method of performance.
• Claims defining the scope of the invention.
• Drawings or diagrams, if applicable.
• Disclosure of origin and source if biological material is used.

5. Examination of Application (Section 16)

The application is examined to ensure it meets patentability requirements (novelty,
inventive step, industrial application).
The Controller may request amendments if the application does not comply.

6. Advertisement and Opposition (Sections 21-23)

Once the application is accepted, it is advertised in the official gazette.

Third parties may file opposition within four months.

7. Grant and Sealing of Patent (Section 27)

If no opposition is raised or successfully resolved, the patent is granted and sealed.

The patent is recorded in the official register.

15. Explain the mechanism for opposing a patent grant as per the Patent
Ordinance, 2000.

The Patent Ordinance, 2000, allows for opposition to the grant of a patent under
Sections 23-24.

1. Opposition Grounds (Section 23(1))

A person may oppose a patent grant within four months of its advertisement based on
the following:
• The applicant obtained the invention unlawfully.

• The invention is not patentable (does not meet the criteria of novelty, inventive
step, or industrial application).

• The specification does not clearly or completely disclose the invention.

• The claims are unclear or extend beyond the original specification.
• The invention described or claimed was disclosed before the filing date.

2. Procedure for Opposition (Section 23(2))

• The Controller notifies the applicant of the opposition.

• Both the applicant and opponent are given an opportunity to present their case.
• The Controller decides whether to reject the opposition or refuse/amend the
application.

3. Third-Party Observations (Section 24)

 • Any person may submit observations on the novelty of the invention after its
advertisement.
• Observations must be supported by evidence.
• The person making observations does not become a party to the proceedings.

Q16. How can a patent holder enforce their rights against infringement under the
Patent Ordinance?

Answer
Under the Patents Ordinance, 2000, the rights of a patent holder and enforcement
mechanisms are as follows:

1. Rights of a Patent Holder (Section 30)

The holder of a valid patent has exclusive rights to:

• Make, use, sell, or distribute the patented product.
• Use or authorize the use of the patented process.
• Prevent unauthorized use, sale, or importation of the invention.

2. Actions Against Infringement (Section 30(3))

The patent holder can file a civil suit against anyone who infringes their patent.

Infringement includes unauthorized use, sale, or distribution of the patented product or

process.

3. Remedies for Infringement

• Injunction: To stop the infringer from continuing the violation.

• Damages: Compensation for financial loss caused by the infringement.
• Account of Profits: Recover profits made by the infringer.

4. Exceptions to Infringement (Section 30(5))

The following acts are not considered infringement:

• Use of the invention for experimental purposes.
• Acts done privately for non-commercial purposes.
• Use for educational purposes.
 • Prior use by a person who was already using the invention in good faith before
the patent filing date.

5. Jurisdiction and Enforcement

Patent infringement cases are heard in civil courts with proper jurisdiction.