Understanding Pakistan's Date Of Use Trademark Law

• Published date: 30 June 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Dennemeyer Group
• Author: Mr Shaukat Ali

Foreign individuals or organizations filing for trademark registration in Pakistan may find themselves curious when faced with the obligation to indicate the mark's "date of first use" in their application. Here, we will unpack its legal requirements and implications and help you prepare to bring your brand into this burgeoning market.

Date of use claims: The fundamentals

If applying for a Pakistani trademark, you have two options for claiming the date of use under the nation's Trademark Ordinance of 2001:

• You can cite the specific date on which you or your organization began using the mark in the country (irrespective of its filing or registration date).
• Claim that the mark is "proposed to be used" even though it is not yet in circulation throughout Pakistan.

What you absolutely must not do is leave the "date of use" portion of your application blank. Doing so will result in an office action from the Trademark Registry of IPO Pakistan. You will have the opportunity to amend your application (if you pay an additional fee), but must do so as quickly as possible.

Making a claim that you propose to use a trademark is a valid answer and does not bind you to a precise date. However, keep in mind that under Section 73 of the Ordinance, you (or a party you authorize) must begin using the mark within five years of your mark's registration with the registry. Failing to do so without providing an affidavit to IPO Pakistan explaining valid reasons will cause your registration to be invalidated. (Also, if the mark is being used, that use must continue for five years; lapses can similarly result in revocation of the registration.)

Proof of use

IPO Pakistan's Registry will typically require you to prove that you have been using a trademark when you apply to renew it after five years.

The following documents are generally sufficient evidence for a claim of prior use for commercial purposes, provided they contain the brand name and are dated:

• Invoices and bills of each year from whence the mark is in use
• Advertisements (flyers, brochures, leaflets) that have been publicly distributed
• Website pages, including the mark
• Radio and television advertisements
• Government registration certificates
• Use of the mark in e-commerce campaigns

Alternatively, if you did not use the mark through no fault of your own, you must prove that this is the case.

Disputes over the use

Being unable to prove the date of first use in Pakistan will be dangerous if another party disputes your...