With the establishment of a Pakistani domain name registry and the introduction into the Trademarks Ordinance of provisions dealing with domain names, effective mechanisms for the registration and protection of domain names as trademarks are now firmly in place. Resolution procedures for domain name disputes also help to keep the unauthorised adoption of trademarks as domain names in check.
The Copyright Ordinance and corresponding Copyright Rules are in place to extend protection to various copyright works in Pakistan. Since its inception, the ordinance has been amended periodically to conform to international agreements and conventions, extend copyright protection to new technologies and provide better remedies for copyright infringement.
A high court decision has accorded protection to the well-known trademark LUMINARC under the Trademarks Ordinance and granted an injunction restraining use of the infringer's LUNIMARC mark. The case shows that with the introduction of new provisions extending protection to well-known trademarks, the judiciary has taken a more proactive role in protecting IP rights for trademarks.
As a signatory to both the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, Pakistan recognises the concept of a well-known trademark and is bound to extend protection to such marks. The Trademarks Ordinance 2001 contains several important provisions relating to well-known trademarks.
The Trademarks Ordinance recognises words, letters, devices, figurative elements, colours, sounds and combinations thereof as trademarks as long as they can distinguish the goods or services of one undertaking from those of other undertakings. This is a broad definition of what may constitute a trademark and is arguably wide enough to include three-dimensional shape marks, such as package designs.
The president recently promulgated the Intellectual Property Organisation of Pakistan Ordinance 2012. Among other things, it provides that the Trademarks Registry, the Patent Office and the Central Copyright Office will become part of the Intellectual Property Organisation of Pakistan. The ordinance also creates new tribunals to conduct trials of IP offences.
The Competition Commission has ruled that a company's manufacture, marketing, sale and export of leather jackets that bore other parties' trademarks without authorization were fraudulent acts and constituted deceptive marketing practices under the Competition Ordinance.
The registrar of trademarks has rejected an application to register the trademark ASTELIN following opposition by the original proprietor, Medpointe Healthcare, which was unable to show registration or use of the mark in Pakistan, but had prior registrations and use abroad. Among other things, the registrar ruled that the applicant's adoption of the mark had been dishonest, making its use of the mark in Pakistan irrelevant.
Pakistan is making ongoing efforts to revise and upgrade its IP legislation. The statutory powers are in place, but the problem of effective enforcement remains. However, the agencies concerned are now empowered to uphold IP rights and eliminate piracy and counterfeiting. This update considers the legislative basis for IP rights enforcement and the entities involved.
Parties that import, export, sell or produce pharmaceutical products must consider the Drugs Act and other sector-specific rules alongside the IP ordinances. Pakistan's framework of regulations on such products sets out rules and guidelines on issues such as parallel imports and repackaging, anti-counterfeiting enforcement and generic substitution.
The Patents (Amendment) Ordinance 2006 recently came into force. The amendments essentially remove the time limits within which the Patent Office must review applications for the grant of patents. The amendments thus seem to provide greater flexibility for the patent application system; however, applicants are exposed to an unpredictable and discretionary legal environment.