Pakistan joined WIPO in 1977 and is a party to major International IP treaties, including but not limited to the Berne Convention, Paris Convention, the Madrid Protocol, and the Marrakesh Treaty. Pakistan’s national IP authority is the Intellectual Property Organisation of Pakistan (IPO-Pakistan). Pakistan recognises various forms of intellectual property rights such as trademarks, patents, registered designs, copyrights, Plant breeders’ rights, Layout-designs of integrated circuits, Geographical indications (GIs) and Trade secrets/undisclosed information.

Trade marks:

A brand owner may protect their product/service name as a trademark under the Trade Marks Ordinance, 2001 in Pakistan. This includes in particular, a device, brand, heading, label, ticket, name including personal name, signature, word, letter, numeral, figurative element, colour, sound or any combination thereof where the mark is capable of being represented on the register. Moreover, it must not be devoid of distinctive character and exclusively indicate the kind or quality of the goods or services. A mark which does not immediately appear to be distinctive can acquire distinctiveness through use in Pakistan.

Certification mark & Geographical Indications:

Certain goods and services may also be protected or identified in Pakistan through collective marks and certification marks. A certification mark which is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.  Geographical indications are protected under the Geographical Indications (Registration and Protection) Act, 2020.

Patents:

In Pakistan, under the Patents Ordinance, 2000 and Patents Rules, 2003, patents provide inventors with exclusive rights to protect their inventions, preventing other people from creating, using, or selling the invention in Pakistan without their permission. However, for protection, the invention must be deemed to be novel, involve an inventive step and capable of industrial application. In return for the grant of a patent, details of the invention must be disclosed clearly and in a comprehensive manner for any skilled person in that area to be able to use that technology on the expiry of the patent.

Invention is any new & useful product, including chemical products, art, process, method or manner of manufacture, machine, apparatus or other articles in any field of technology and includes any new and useful improvement of any of them is an alleged invention. Certain categories of inventions are excluded from patentability in Pakistan. These include a discovery, scientific theory or mathematical method; a literary, dramatic, musical or artistic work or any other creation of purely  aesthetic character whatsoever; a scheme, rule or method for performing a mental act, playing a game or doing business; the presentation of information; and substances that exist in nature or if isolated there from.

Rights in trade secrets, confidential information and know-how

Pakistan does not have a standalone statutory trade secrets regime. However, protection of confidential information and know-how may arise through contractual obligations of confidentiality, including provisions in employment agreements and non-disclosure agreements, as well as applicable common-law principles concerning breach of confidence.

Copyright

Copyright in Pakistan is principally governed by the Copyright Ordinance, 1962. It protects literary, dramatic, musical and artistic works, as well as cinematographic works, sound recordings and other works falling within the statutory categories. Copyright protection generally arises automatically upon creation of the work and does not depend upon registration, although registration is available. Copyright infringement generally involves the unauthorised doing of an act reserved to the copyright owner, including reproduction of the whole or a substantial part of a protected work.

Designs

Registered designs are protected in Pakistan under the Registered Designs Ordinance, 2000. Design protection relates to the visual features of a product, including its shape, configuration, pattern or ornamentation.

Plant Varieties

Plant breeders’ rights, also known as plant variety protection, are specifically protected in Pakistan under the Plant Breeders’ Rights Act, 2016. The legislation provides qualifying plant varieties with protection and grants the breeder exclusive rights in relation to specified acts concerning the production, sale, marketing, import, export and other dealings in propagating material.

A plant variety must satisfy the statutory requirements for protection, including the requirements relating to novelty, distinctiveness, uniformity and stability.

Database Rights

Pakistan does not have a separate sui generis database right equivalent to the right recognised under UK/EU law. Databases may, however, potentially receive copyright protection where they satisfy the requirements for copyright protection under Pakistani law.

Layout-Designs of Integrated Circuits

Layout-designs of integrated circuits are protected in Pakistan under the Registered Layout-Designs of Integrated Circuits Ordinance, 2000. The Ordinance protects original layout-designs of integrated circuits and grants the registered proprietor exclusive rights in relation to the reproduction, importation, sale or other commercial exploitation of the protected layout-design. Protection is subject to registration and is available where the layout-design satisfies the statutory requirements for protection.

Trademark: A trademark is registered for 10 years from the date of filing of the application  and must be renewed every ten years in order to keep it alive/active. There is no limit to how many times it can be renewed. A renewal application with the IPO has to be filed each time along with some necessary documents and an official fee.

Patents:

A patent is protected for 20 years from the filing date, subject to the payment of prescribed renewal fees. If a renewal fee is not paid within the prescribed period, the patent may cease to have effect, although the prescribed period may be extended by up to six months only upon payment of the renewal fee and an additional fee.

Designs

A registered design is initially protected for 10 years and may be extended for two further periods of 10 years, giving a maximum term of 30 years.

Copyright

The duration of copyright depends on the nature of the work. Generally, copyright in a literary, dramatic, musical or artistic work subsists for the life of the author plus 50 years. Different periods apply to certain categories of works. For example, copyright in cinematographic works, sound recordings and photographs generally lasts for 50 years from the beginning of the calendar year following publication.

Copyright protection is not extended by payment of renewal fees; it expires upon the end of the applicable statutory term.

Trade Secrets, Confidential Information and Know-how

Trade secrets, confidential information and know-how do not have a fixed statutory term equivalent to registered intellectual property rights. Protection may continue indefinitely for so long as the information remains confidential and the circumstances giving rise to the obligation of confidence continue to exist. Contractual confidentiality obligations may also specify the duration of the obligation.

Plant Varieties

Plant breeders’ rights are protected for 20 years from the date of filing of the application for all plants other than trees and vines, for which the term is 25 years.

The legislation does not provide for periodic renewal of the term in the manner applicable to trade marks or patents.

Layout-Designs of Integrated Circuits

A registered layout-design of an integrated circuit is protected for 10 years from the date of its first commercial exploitation anywhere in the world. The protection therefore has a fixed statutory term and is not subject to successive renewals. An application for registration may be filed where the layout-design has not been commercially exploited or has been commercially exploited for not more than two years.

Geographical Indications

Registered geographical indications are protected for 10 years and may be renewed for successive periods of 10 years, subject to the applicable renewal requirements. The registration of an authorised user is also for 10 years and may be renewed for further 10-year periods.

Trademark:

The first owner of a trade mark is generally the person or entity claiming proprietorship and using, or intending to use, the mark in relation to the relevant goods or services. The Trade Marks Ordinance, 2001 does not contain a specific statutory rule providing that a trade mark created or selected by an employee automatically belongs to the employer, or that a mark created under commission automatically belongs to the commissioning party. Accordingly, ownership in such circumstances will generally depend on the circumstances in which the mark was created, adopted and used, the parties’ agreement and the relevant contractual arrangements. Where ownership is intended to vest in the employer or commissioning party, this should preferably be addressed expressly in the employment or commissioning agreement and, where appropriate, reflected through an assignment or transmission of the trade mark.

For other IPRs, generally the first owner of intellectual property rights (IPRs) in Pakistan is the inventor/author/designer/creator/breeder who created the work. When the work is done during the course of employment by an employee, generally the employer is the first owner of the IPs. However, where an employee creates the work outside of their normal duties of employment, they may instead be the owner of it.

In Pakistan, the following IPRs are registered rights:

• Patents
• Registered trademarks
• Registered designs
• Plant variety rights

In general, copyright registration is a legal formality. However, registration is not a condition of copyright protection, but it establishes prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.

Moreover, rights in trademarks and designs can also exist regardless of registration. Where a trademark has not been registered, protection may still be available through the tort of passing off. A passing off claim can be brought where another party has misrepresented its goods or services as being those of the claimant (where the reputation or goodwill in the claimant’s brand is significant) and the claimant as a result suffers financial and/or reputational damage. Although this claim offers protection for unregistered marks, it can be challenging to prove it since the courts require clear proof of deception or confusion on the part of customers and substantial evidence of financial or reputational harm caused.

Trademarks:

In Pakistan, any person or incorporated body which is capable of owning property in their own name can apply for registration of a trademark to the Trade Marks Registry of the IPO Pakistan. The application must state that the trade mark is being used by the applicant, or with his consent, in relation to goods or services, or that he has a bona fide (genuine) intention that it should be used.

The Trade Marks Registry follows the following procedure. It is advisable that a search may be made of the Trademarks Register to ensure whether there are any similar or identical marks on the Register. An application to register a trade mark may be filed by the applicant or its representative, provided that an address for service in Pakistan is available. Upon receipt, the Registry conducts substantive examination, including an assessment of whether the mark conflicts with any earlier identical or similar marks. The Registry may accept the application or raise official objections requiring the applicant to respond or make amendments. If the application is accepted, the mark is published in the Trade Marks Journal allowing third parties to file oppositions. If no opposition is filed within the prescribed period, the mark proceeds to registration.

Designs

An application for registration of a design may be made by the proprietor/assignee of the design. The application is filed with the Designs Office and is examined for compliance with the statutory requirements, including novelty. If accepted, the design is registered, and the registration is published in the Journal.

Patents

A patent application may be made by the true and first inventor or by the person to whom the right to apply for a patent has been assigned or a successor in title. The application is filed with the Patent Office of Pakistan and must contain the prescribed forms, a specification describing the invention, claims defining the scope of protection, drawings where necessary, and the prescribed fee. The examination of the application consists of a study of the application for compliance with the legal requirements and a search through National and International Databases, to see if the claimed invention is new, useful and non-obvious and if the application meets the requirements of the patent statute and rules of practice. If the application does not satisfy the legislative requirements, the examiner issues a written examination report, which sets out any deficiencies as Office action. The applicant may respond to the written report by filing amendments to the application to overcome the objections. The examiner must then reconsider the application in the light of the applicant’s response. If any office action remains unresolved, the examiner issues another report. If the applicant does not comply with the office action within the given time the application will lapse. When the application is free of objections (either at the beginning of examination or as a result of an applicant’s response to report), the examiner is obliged to accept the application. The acceptance is then advertised in the Official Gazette. A decision is reached by the examiner in the light of the study and the result of the search. As a result of the examination by the Patent Office, patents are granted.

Plant Breeders’ Rights

An application for protection of a plant variety may be made by the breeder, a person who discovers and develops the variety, or their successor in title, in accordance with the Plant Breeders’ Rights Act, 2016. The application is filed with the Plant Breeders’ Rights Registry and the variety is examined against the statutory requirements for protection, including novelty, distinctiveness, uniformity and stability.

Layout-Designs of Integrated Circuits

An application for registration of a layout-design may be made by the creator or other person entitled to the layout-design under the Registered Layout-Designs of Integrated Circuits Ordinance, 2000. The application is filed with the relevant Registry and, upon satisfaction of the statutory requirements, the layout-design is registered.

Geographical Indications

An application for registration of a geographical indication may be made by an association of persons, producer, organisation or authority representing the interests of producers of goods in the relevant geographical area. Applications are made to the Geographical Indications Registry under the Geographical Indications (Registration and Protection) Act, 2020 and are subject to examination and the applicable publication and opposition procedures.

Patents

The registration of a patent in Pakistan generally takes approximately 3-4 years, although the timeframe may vary considerably depending on the complexity of the invention, the examination process, any objections raised by the Patent Office and the applicant’s response to such objections. Applications involving opposition or other procedural issues may take longer.

Trade Marks and Registered Designs

A trade mark application, assuming no significant objections or oppositions are raised, generally takes approximately 2–3 years to mature to registration. The timeframe may be extended where the Registry raises objections or third parties file oppositions.

A registered design application is generally processed more quickly than a trade mark or patent application. However, the time required may vary depending on examination and any objections or procedural requirements. A period of approximately 6–12 months may be expected in an uncomplicated case.

Copyright:

Where registration is sought, the application is filed with the Copyright Office and, subject to examination and any objections, is entered in the Register of Copyrights. The registration process generally takes approximately 3–6 months, although this may vary depending on the application and any objections or procedural issues.

Trademark: After publication of a trade mark and before issuance of the registration certificate, any person may, within two months from the date of the advertisement or readvertisement of an application for registration or within such further period not exceeding two months in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, may allow, give notice to the Registrar of opposition to the registration. The mark will not be registered unless the opposition proceedings are settled.

Patent: At any time within four months from the date of advertisement of the acceptance of a complete specification under this Ordinance, any person may give notice to the Controller of opposition to the grant of patent on the statutory grounds, including lack of patentability and insufficient disclosure.

Copyright: After publication of a copyright and before issuance of the registration certificate, any person may within one month file an opposition.

Trademark: An applicant can apply for a hearing to discuss the merits of the application with the examiner.

Patent: where a patent registration is refused in Pakistan, an applicant should first review the examination report to understand the grounds for refusal provided by the examiner. They can then take one of the following actions:

a. Amend the application to address the objections raised by the Patent office usually by improving the clarity of the delineation of the scope of the inventions (claims). Or

b. Request a hearing with the Patent Office where the refusal by the controller seems to be unjustified. Or

c. An application for restoration must be made within 18 months from the date the patent ceased to have effect, and the proprietor must satisfy the Controller that reasonable care was taken to pay the renewal fee and that the failure resulted from circumstances beyond the proprietor’s control.

The fees depend on the type of Intellectual Property Right to be registered and the fees for the application and renewal of each type of IPR can be viewed at https://ipo.gov.pk/

Trademark: If the renewal fee is not paid before expiry, the proprietor may still renew the registration within the prescribed grace period of at least six months, subject to payment of an additional renewal fee. If the registration is not renewed within this period, the Registrar may remove the mark from the Register. The Registrar may subsequently restore a removed registration, subject to any prescribed conditions. Renewal and restoration are published in the Trade Marks Journal. Following removal for non-payment, the mark is nevertheless treated as a registered mark for applications for registration of conflicting marks for one year from the date of removal, unless there has been no bona fide use of that mark during two years immediately preceding its removal or no confusion or deception would arise from the use of the trademark which is the subject of registration.

Patent: a patent shall cease to have effect in case of failure to pay the renewal fees, however,  an application for the restoration of the patent may be made within eighteen months.

All IPRs

In Pakistan, a registered trade mark/copyright/patent/design shall be transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or movable property. However, it shall not be effective unless it is in writing signed by, or on behalf of, the assignor or, as the case may be, a personal representative. In short, an assignment deed must be made.

All IPRs:

The assignment deed must be recorded with the IPO Pakistan within 6 months of the date of assignment for it to be effective. If the deed is not recorded/registered with the IPO, it may not be effective against an innocent third party who later acquires an interest in the same trade mark without knowing about that earlier transaction or the licensee/assignee may not be able to claim protection under the law.

A license to use a registered trade mark/patent/copyright/design may be granted to any third party and it shall not be effective unless it is in writing signed by or on behalf of the grantor. It may be general, limited or exclusive.

Know-how and confidential information may be licensed contractually, but the licence should impose strict confidentiality and non-disclosure obligations on the licensee. In Pakistan, undisclosed information meeting the statutory criteria is protected as an act of unfair competition under section 67 of the Trade Marks Ordinance, 2001; contractual confidentiality obligations therefore provide an important additional means of protecting licensed know-how.

The license agreement must be registered with the IPO Pakistan for it to be effective. If it is not recorded/registered, it may not be effective against an innocent third party who later acquires an interest in the same trade mark without knowing about that earlier transaction or the licensee/assignee may not be able to claim protection under the law. There is no requirement to register licences under any unregistered IP rights.

An exclusive license, whether general or limited, authorises the licensee to use the registered IP right in the manner authorised by the license to the exclusion of all others including the licensor. They may, by contract with the owner of the mark, be given the same rights and remedies as if the licence has been an assignment, including the right to bring proceedings in their own name, subject to any agreement to the contrary. This right of action is concurrent with that of the owner.

Non-exclusive licensees under any intellectual property right are generally not allowed to enforce their rights against infringers without the consent and cooperation of the owner, though in the case of trade marks, such enforcement rights may be expressly permitted under the license contract.

Criminal sanctions are available for certain intellectual property infringements in Pakistan. For copyright, knowingly infringing or abetting infringement is a criminal offence punishable by imprisonment of up to three years, or a fine of up to PKR 100,000, or both. Certain specific copyright offences carry similar penalties.

For trade marks, criminal sanctions apply to specified offences involving false or counterfeit trade marks and trade descriptions, rather than to every instance of civil trade mark infringement. The Trade Marks Ordinance, 2001 provides penalties for such offences.

Copyright offences may be investigated by the Federal Investigation Agency (FIA), which has an Intellectual Property Rights Directorate and lists the Copyright Ordinance, 1962 on its statutory schedule. The Trade Marks Ordinance, 2001 is not currently on the FIA’s statutory schedule; therefore, trade mark-related criminal matters may instead involve the relevant police, customs or other competent enforcement authorities, depending on the circumstances.

Civil proceedings for infringement of an intellectual property right is a very common enforcement method and can be initiated at the IP Tribunal Pakistan. In addition to this, it is also possible, depending on the right concerned, to bring opposition or rectification proceedings against a registered right at the IPO Pakistan. For .pk domain names, complaints are generally handled through the Domain Name Dispute Resolution Centre (DNDRC).

The duration and cost of IP proceedings in Pakistan vary considerably depending on the forum, complexity and nature of the dispute. Civil proceedings before the Intellectual Property Tribunal may take several years to reach final determination and can involve significant legal costs, particularly in complex patent matters. Proceedings before the relevant IPO-Pakistan offices are generally less costly and may take 1-2 years, depending on the nature and complexity of the matter. .pk domain-name disputes under the PKNIC dispute-resolution procedure are generally resolved more quickly than court proceedings, usually within a few months.

Civil IP infringement proceedings in Pakistan are instituted before the Intellectual Property Tribunal, which has exclusive jurisdiction over civil proceedings concerning infringement of intellectual property rights. The Tribunal exercises the powers of a civil court under the Code of Civil Procedure, 1908.

Proceedings are commenced by the claimant filing a plaint, followed by service on the defendant, who files a written statement. Where interim relief is sought, the court may first hear applications for an interim injunction. The defendant may also seek rejection of the plaint on preliminary grounds. Once preliminary applications have been dealt with, the court frames the issues arising from the pleadings. The matter then proceeds to trial, with the parties leading documentary and oral evidence and making submissions on the merits. The proceedings are adversarial, with each party having an opportunity to present and challenge the evidence and arguments of the opposing party.

Following completion of evidence and final arguments, the Tribunal delivers its judgment and may grant appropriate relief, including injunctions, damages, an account of profits and other remedies available under the applicable IP legislation. There is no fixed statutory period for disposal of civil IP proceedings, and the time to trial and judgment varies considerably depending on the complexity of the case, interlocutory applications, evidence and court workload.

A party aggrieved by the final judgment or order of the Intellectual Property Tribunal may appeal to the High Court having territorial jurisdiction within 30 days.

For trade marks, customs enforcement is available where the trade mark is registered in Pakistan. Under Sections 53–66 of the Trade Marks Ordinance, 2001, the proprietor of a registered trade mark may give written notice to the Director General/Director, IPR (Enforcement), or the Collector of Customs requesting that specified infringing goods expected to enter Pakistan be treated as prohibited goods. The notice must be accompanied by an undertaking to indemnify Customs against losses arising from wrongful suspension.

The Customs Act, 1969 also prohibits the import and export of goods bearing counterfeit trade marks. Customs may seize suspected infringing goods, notify the relevant parties and, following the statutory procedure, order their forfeiture. The detailed procedure is supplemented by Rules 678–686 of the Customs Rules, 2001.

In practice, enforcement is undertaken through the Directorate General of IPR Enforcement (Pakistan Customs), which is responsible for IPR enforcement at the import and export stages.

A right holder may apply to the Directorate for enforcement action and record its rights with IPO-Pakistan. Where suspected infringing goods are identified, Customs may detain them; following examination with the right holder and IPR Enforcement officials, infringing goods may be seized and referred for adjudication and confiscation.

No, non-court enforcement options or dispute resolution mechanisms are not mandatory in Pakistan. Alternative Dispute resolution (ADR) is generally voluntary rather than a mandatory pre-condition to intellectual property litigation, unless the parties have contractually agreed otherwise.

As set out above, ADR is generally voluntary rather than a mandatory pre-condition to intellectual property litigation, unless the parties have contractually agreed otherwise. It is pertinent to note, however, that at the proceedings before the Registrar of Trade Marks, Trade Marks Registry of Pakistan or other equal forums such as the Copyrights Office of Pakistan – the Registrar, usually encourages the parties to settle matters through negotiation. On the other hand, for litigious matters, Arbitration may be used where the parties have agreed to refer their dispute to an arbitrator, particularly in contractual, licensing or ownership disputes. Parties may also settle an existing court case through agreed terms or a consent order. These mechanisms can provide a faster and more commercially flexible alternative to prolonged litigation.

Trade Marks

Under the S. 40 of the Trade Marks Ordinance, 2001, infringement generally requires use, without the proprietor’s consent, of a mark falling within the statutory infringement provisions, including an identical or deceptively similar mark in relation to the relevant goods or services. The claimant should produce the registration certificate, evidence of its proprietorship and use, and evidence of the defendant’s use, together with evidence establishing similarity and likelihood of confusion where relevant.

However, to establish passing off, the proprietor of the mark must show that it has sufficient goodwill in the mark, that the infringer has caused a misrepresentation through its use of the infringing mark and this use has caused or is likely to cause damage to the proprietor

Patents

Under Section 30 of the Patents Ordinance, 2000, infringement occurs where, without the patentee’s consent, a third party performs the prohibited acts in relation to a patented product or process, including making, using, offering for sale, selling or importing a patented product, or using a patented process and dealing in the product obtained directly from that process. Evidence normally includes the patent, its claims and technical specifications, together with evidence establishing that the defendant’s product or process falls within the claims.

Copyrights

Under Section 56 of the Copyright Ordinance, 1962, infringement generally occurs where a person, without the owner’s licence, does an act reserved to the copyright owner or reproduces the work or a substantial part of it. Evidence should establish ownership and subsistence of copyright, the original work and the defendant’s copying or unauthorised use. Registration, where obtained, may assist in establishing ownership but is not a prerequisite to copyright protection.

Registered Designs

Under Sections 7 & 8 the Registered Designs Ordinance, 2000, infringement occurs where a person, without the registered proprietor’s consent, applies the registered design, or a design not substantially different from it, to the relevant article, or makes, imports, sells or offers for sale such an article. Evidence ordinarily includes the registration, representations of the registered design and evidence of the defendant’s product to establish substantial similarity.

Layout-Designs of Integrated Circuits

Under the Registered Layout-Designs of Integrated Circuits Ordinance, 2000, infringement includes unauthorized reproduction of the registered layout-design, in whole or in part, and its commercial importation, sale or distribution, including in an integrated circuit incorporating the unlawfully reproduced design. Evidence should establish registration, ownership and the alleged reproduction or commercial exploitation.

Geographical Indications

Under the Geographical Indications (Registration and Protection) Act, 2020, infringement includes unauthorised use of an identical registered geographical indication or use in trade which misleads consumers as to the geographical origin of goods. Evidence should establish the registration, the geographical origin and the defendant’s use of the indication and, where relevant, the likelihood of misleading consumers.

Plant Breeders’ Rights

Infringement of a plant breeder’s right is established where a person, without the holder’s authorisation, undertakes acts reserved to the holder in respect of the protected variety. Evidence would ordinarily include the certificate of protection, details of the protected variety and evidence of the defendant’s unauthorised production, sale, marketing or other exploitation.

The Intellectual Property Tribunal has the powers of a civil court under the IPO Act and may appoint an expert where technical or specialised IP issues arise. Parties may also rely on their own expert witnesses, with expert opinion admissible under the Qanun-e-Shahadat Order, 1984. There is no separate system of specialist technical judges for IP matters.

The Tribunal may order discovery, inspection and production of documents, administer interrogatories and summon witnesses under the CPC, including Order XI. Courts may also make orders to preserve evidence and, where appropriate, protect confidential information. These mechanisms are court-controlled and generally operate on the application of a party or where the court considers them necessary.

In Pakistani IP litigation, evidence is scrutinised through the adversarial trial process under the Qanun-e-Shahadat Order, 1984 and the Code of Civil Procedure, 1908. Parties file documentary evidence and produce witnesses through examination-in-chief, followed by cross-examination by the opposing party, with re-examination where necessary. Expert evidence is similarly subject to cross-examination. Cross-examination is routinely employed where witness or expert testimony is material to issues such as likelihood of confusion, copying, technical infringement or validity, although purely documentary or technical matters may be determined largely from the documents and expert reports. The Tribunal assesses the admissibility, relevance, credibility and probative value of the evidence before reaching its decision.

Trade Marks

Defences include honest use, bona fide use of one’s own name, honest concurrent use, fair descriptive use, comparative advertising, consent or licence, and acquiescence. A defendant may also challenge the validity of the registration or rely on non-use where applicable. The Trade Marks Ordinance, 2001 contains specific statutory limitations on the proprietor’s exclusive rights and defences to infringement.

Patents

The principal defences are that the patent is invalid or revocable, as any ground for revocation may be raised as a defence to infringement under Section 60(2) of the Patents Ordinance, 2000. Other defences include use falling within statutory exceptions, prior use, compulsory or non-voluntary licensing, exhaustion of patent rights, and absence of infringement because the defendant’s product or process does not fall within the patent claims.

Copyright

The defendant may rely on the statutory exceptions in Section 57 of the Copyright Ordinance, 1962, including fair dealing for research or private study, criticism or review, reporting current events and judicial proceedings. Other defences may include absence of copying, lack of substantial similarity, lack of subsisting copyright, or a licence or other authority from the copyright owner.

Registered Designs

A defendant may challenge the validity of the design registration, including on the grounds that the statutory requirements for registration were not satisfied or that the claimant is not entitled to the design. Under Section 9 of the Registered Designs Ordinance, 2000 an innocent infringer who proves that they were unaware, and had no reasonable grounds to believe that the design was registered may also avoid an award of damages, although an injunction may still be available.

Layout-Designs of Integrated Circuits

Defences may include invalidity or lack of entitlement to the registered layout-design, absence of unauthorised reproduction or commercial exploitation, and reliance on any statutory exceptions applicable to the particular act. A defendant may also rely on consent or a valid licence from the proprietor.

Geographical Indications

A defendant may dispute that the indication is protected or that the goods fall within its protected geographical scope. Other defences may include authorised use, lack of misleading or deceptive use, or use falling within the statutory exceptions under the Geographical Indications (Registration and Protection) Act, 2020.

Plant Breeders’ Rights

Defences include challenging the validity or subsistence of the plant breeder’s right, establishing that the disputed variety or act does not fall within the scope of the protected right, or demonstrating that the relevant use is permitted under the statutory exceptions. Consent, licence and exhaustion may also be relevant depending on the circumstances.

Trademarks: A person aggrieved may seek rectification or cancellation of a registered trade mark under the Trade Marks Ordinance, 2001, including on grounds of invalidity or non-use. Third parties may also oppose an application during the opposition period following publication.

Patents: Any person may oppose the grant of a patent on the statutory grounds, and a patent may subsequently be challenged through revocation proceedings under the Patents Ordinance, 2000. The validity of a patent may also be raised as a defence to infringement.

Registered designs: A person interested may challenge the validity of a registered design under the Registered Designs Ordinance, 2000, including on the ground that the design did not satisfy the statutory requirements for registration.

Copyright: As copyright arises automatically, there is no registration to invalidate in the same sense as a registered right. A defendant may challenge the subsistence or ownership of copyright in infringement proceedings, including by establishing that the work is not protected or that copyright has expired.

Layout-designs of integrated circuits: A person may challenge the validity or entitlement to protection under the Registered Layout-Designs of Integrated Circuits Ordinance, 2000, including on the basis that the layout-design is not original or that the claimant is not entitled to protection.

Geographical indications: A registered GI may be challenged under the Geographical Indications (Registration and Protection) Act, 2020 on the statutory grounds for cancellation or invalidity.

Plant breeders’ rights: The validity of a plant breeder’s right may be challenged under the Plant Breeders’ Rights Act, 2016 in accordance with its statutory grounds and procedures.

This depends on the particular IP right in question and the type of challenge being made (e.g. opposition or revocation action). In general, a challenge to any registered IP right may be made at any time during the subsistence of the right. In addition, registered rights such as patents and trade marks may be challenged during the registration or application process. Common ways to challenge an IPR in the Pakistan are:

i. opposing the grant or registration of an IPR before the relevant authority, such as the Trade Marks Registry of Pakistan (TMR) or Copyrights Office of Pakistan etc.;

ii. applying for the revocation or invalidation of an IP right after it has been granted or registered, either before the relevant authority or before a court; or

iii. defending against an infringement claim by raising a counterclaim or a defence based on the invalidity and/or non-infringement of the IP right.

The appropriate forum and procedure for challenging the IP right depends on the particular IP right and the type of challenge being brought. The grounds for a finding of invalidity also vary from right to right.

Trade marks:

Applications for revocation or invalidity may generally be made by an interested person to the Registrar, or to the Court where proceedings concerning the mark are pending. Grounds include absence of registrability, bad faith, conflict with earlier rights and, for revocation, non-use for the prescribed five-year period, generisation or use likely to mislead the public.

Patents:

A patent may be opposed before the Controller and, following grant, may be challenged before the Controller within 12 months by a person interested who did not oppose the grant, or through revocation proceedings before the competent court. Grounds include lack of novelty or inventive step, non-patentable subject matter, insufficient disclosure, lack of entitlement and other statutory grounds for opposition or revocation.

Registered designs:

Any person interested may petition the High Court for cancellation of a registered design; an application may also be made to the Registrar within two years of registration. Grounds include that the design was not new or original, was previously registered or disclosed, or otherwise failed to satisfy the statutory requirements for registration.

Copyright:

Copyright does not require registration and therefore is not ordinarily subject to invalidation proceedings. Its subsistence, ownership or validity may instead be challenged in infringement proceedings, including on the basis that the work is outside the statutory categories, lacks the required protection, or that copyright has expired.

Layout-designs of integrated circuits:

The registration may be challenged under the Registered Layout-Designs of Integrated Circuits Ordinance, 2000 on grounds including lack of originality, failure to satisfy the statutory requirements or lack of entitlement. Such issues may also be raised defensively in infringement proceedings.

Geographical indications:

Registration may be challenged through the procedures under the Geographical Indications (Registration and Protection) Act, 2020, including on statutory grounds relating to eligibility, geographical connection, misleading use or registration contrary to the Act.

Plant breeders’ rights:

A plant breeders’ right may be challenged under the Plant Breeders’ Rights Act, 2016 through the prescribed proceedings, including on grounds that the variety does not satisfy the statutory requirements for protection or that the applicant was not entitled to the right.

Apart from infringement or invalidity proceedings, intellectual property rights may be limited or removed through several mechanisms. Courts may grant declaratory relief concerning ownership, validity, non-infringement or the scope of protection. Patents may, in appropriate circumstances, be subject to compulsory licensing, permitting specified use without the proprietor’s consent. Statutory exceptions may also restrict enforcement, including fair dealing in copyright and permitted uses of patents and designs. Rights may cease through expiry, non-renewal, cancellation, revocation or abandonment, depending on the right concerned. Contractual licences can permit controlled use without transferring ownership. Geographical indications operate differently, as their use is generally limited to qualifying authorised users rather than ordinary private licensing.

Remedies for infringement

Trade marks: Interim injunctions may be granted to restrain continuing infringement, including urgent ex parte relief where justified. Final remedies include a permanent injunction, damages or an account of profits, and orders for delivery-up or disposal of infringing goods, together with costs, under the Trade Marks Ordinance, 2001 and general civil procedure.

Patents: Under section 61 of the Patents Ordinance, 2000, the court may grant injunctions, damages or an account of profits. It may also order prompt provisional measures to prevent infringement and preserve evidence, including, where appropriate, measures without notice to the defendant.

Copyright: Under Sections 60 and 60A of the Copyright Ordinance, 1962, remedies include injunctions, damages, accounts of profits and preservation of evidence. Interim orders may, in appropriate cases, be granted without prior notice and may direct Customs to withhold infringing consignments.

Registered designs: Section 8 of the Registered Designs Ordinance, 2000 permits the proprietor to seek damages and an injunction against continuing infringement. For an interim injunction, the proprietor must establish a prima facie case, validity of the design and infringement.

Layout-designs of integrated circuits: Available remedies include injunctions, damages and other civil relief for unauthorised reproduction or commercial exploitation, together with applicable interim relief under general civil procedure.

Geographical indications: Remedies may include injunctions, damages, account of profits and orders concerning infringing goods, subject to the Geographical Indications (Registration and Protection) Act, 2020 and applicable civil procedure.

Plant breeders’ rights: The Plant Breeders’ Rights Act, 2016 permits enforcement through the competent court, with remedies including injunctive relief, damages and other appropriate civil remedies, together with applicable interim measures.

The costs of IP enforcement proceedings vary according to the nature and complexity of the case, including court fees, counsel fees and expert costs. Under Section 35 CPC, the court may (although less likely) award actual litigation costs to the successful party, subject to the statutory requirements, while other costs remain within the court’s discretion. The Intellectual Property Tribunal exercises the powers of a civil court under the CPC.

Security for costs is available under Order XXV CPC. Where the plaintiff resides outside Pakistan and does not possess sufficient immovable property in Pakistan (other than the property in dispute), the court may, on its own motion or on the defendant’s application, require security for the defendant’s costs. Failure to provide the ordered security may result in dismissal of the suit.