What is Trade Mark
A trademark is an important intangible asset of a company, individual or entity comprises of a distinctive sign / logo / slogan on the goods or services offered to the masses.
A trademark is a distinctive indicator used by an individual, business or entity to identify that the services or products originate from a unique source. The trademark, thus, distinguishes products or services from those of other individuals or entities who are working in the same business. A trademark may be designated by a symbol, associated to a word, phrase, name, symbol, design, image, logo or a combination of said works to provide exclusive protection rights.
The holder of a registered trademark is entitled to start legal proceedings if the holder’s trademark is infringed upon to impede unauthorized use of the mark. Having said that, registration of a Trademark is not necessarily required for a holder of a trademark to initiate a legal action; however, an unregistered trademark requires more extensive exercise to establish the rights over it and may only be protected within the jurisdiction where the mark is in use.
What is Trademark Infringement
Trademark infringement refers to violation of the exclusive rights over the use of a trademark;. Trademark infringement occurs when an individual or entity uses a trademark that is confusingly similar or identical to a mark owned by another party, — especially where the services or products are similar or indistinguishable to the facilities or products that the original mark covers. If trademark infringement occurs, the holder of the original mark may commence legal proceedings against the party that infringed upon the trademark.
Trademark infringement undermines the rights granted in the mark. When a trademark qualifies for protection, the attached rights are protected when the mark is used in commerce or if the party was the first to register the mark with the Pakistan trademarks office.
The use of a trademark typically means the actual sale of the associated products or services to the public is reserved for the original register—.
If the mark is not used in connection with commerce, rights are transferred, only if it is registered with a Trademark Office. Registration of a trademark with a government office gives the filing party the right to use the mark nationwide, even if transactions in commerce are only limited to a certain area. Although registration with a trademark office is not required for a mark to be protected, the process does confer a series of advantages to the filing party.
If an individual or entity owns the rights to a specific mark, that party can sue subsequent parties for trademark infringement; the standard for a suit is based on the “likelihood of confusion.” More specifically, the use of trademarks in connection with commerce constitutes trademark infringement if the copied product causes consumer confusion regarding the source of the product.
When evaluating confusion in a trademark infringement case, the courts will evaluate the following factors or situations:
• the strength of the trademark and the uniqueness of the marked symbol or work
• the proximity of the two goods or services
• the similarity of the trademarks
• To prove trademark infringement, the registered party must show evidence of confusion
• the defendant’s intent—the court will inspect the defendant’s reason for copying or using the marked work
Why to Conduct a Trademark Search
Conducting a trademark search should be handled very carefully to avoid legal complications in the future. The point of a trademark search is to ensure that the trademark is not already in use by any another entity. If a company infringes on a person’s registered trademark, he or she has the right to sue for damages. To avoid costly legal battles, a trademark search should be extensively conducted. Hiring an intellectual property attorney, or other trademark search professional, may help the process achieve its goal.
The following information and documents shall be required at the time of filing of a trade mark (brand name) application:
1. Full name, nationality and address of the applicant.
2. List of goods/services for which protection is required.
3. Weather the brand name or mark is proposed to be used or is already being used.
4. Soft copy of the mark. Along with label design
As the multiple class applications are not allowed, separate application has to be filed in each class. The charges are not included of any opposition proceedings if there would be any. If there are no oppositions filed during the prosecution of the matter, there will not be any additional charges beyond. Please note that the cost for filing additional application would also be the same. However, discount may be considered on multiple applications.
As regards time required for the grant of rights, please note that the trade mark registry usually takes around 12 to 18 months to grant their Acceptance or approval (provided there is no third party opposition lodged against the application) Nevertheless, your rights are established the
Please Note that validity will be established for Ten years from the date of filing and the renewal of the registration will be due after the expiry of TEN years, once renewal will be paid validity will be extended for further TEN years.
Please do not hesitate to contact us at the number given below, if you have any question regarding this matter.
MARKS & PAT
(Advocates & Attorneys)
Suite # 11/A–1, 3rd Floor,Habib Blessings,
Waseem Bagh, Block 13/D-2,
Gulshan e Iqbal, Karachi, Pakistan.
+92 300 9258757, +92 335 3716007
UAN +92 21 34837452