Receiving International Registrations Designating Pakistan

Receiving International Registrations Designating Pakistan

Once the International Bureau (IB) receives an International Application, it performs an examination of such application to determine its compliance with the Madrid Protocol, and their Common Regulations. This examination is limited to formalities checking, including the classification and list of goods and/or services. If there are no irregularities found, the International Bureau records the mark in the International Register, publishes the international registration in the WIPO Gazette of International Marks, and notifies it to each designated Contracting Party.

If Pakistan is designated in the International Application, the International Bureau will notify to Pakistan.

International registration in which Pakistan is designating received from the International Bureau of WIPO will be examined by the TMR under the provisions of the Trade Marks Ordinance & Rules. If there is any objection, a provisional refusal will be notified to the International Bureau of WIPO within the period of 18 months from the date the international registration was notified to Pakistan. The International Bureau records the provisional refusal in the international register and communicates such provisional refusal to the applicant of the international registration. The holder may respond to the provisional refusal. The TMR. Karachi either considers the response of the applicant of the international registration or may confirm the refusal or move for publication of the international registration in the Trade Marks Journal for calling opposition.

International designations are opposed in exactly the same way as national marks, by filing Form TM-5, together with a statement of grounds of opposition and a prescribed fee. If an opposition to protection of the international registration is received within the prescribed period after publication of an international registration in the trademark journal, the TMR shall immediately communicate the provisional refusal based on opposition to the WIPO and handle the opposition as per the relevant provisions of the Trade Marks Ordinance & Rules and notify the final decision thereafter to the IB of the WIPO.

The notice of opposition may be filed by the opponent (having address in Pakistan), or through a registered trademark agent or lawyer/advocate having address in Pakistan, who would represent and work on behalf of the opponent, before the Registrar of Trade Marks Registry.

If the holder intends to defend his international registration in Pakistan, he shall file counter statement on form TM-6. The applicant shall have to engage a trademark agent/attorney having address in Pakistan by executing a Power of Attorney in the favour of the agent/attorney in the form TM-48.

Where no notification of provisional refusal was communicated to the WIPO and all processes in the office (examination & opposition) is completed and there is no ground to refuse the protection of the international registration, a notification as to grant of protection shall be sent to the International Bureau of WIPO through the system.

All international registrations for which protection have been granted in Pakistan shall be published in the trademark journal. Such publication will consist of list of International Registration Numbers or any Pakistan’s corresponding number (if any). No separate registration certificate will be issued with regard to international designations.