Intellectual Property Law in Pakistan

June 9, 2008

By Muhammad Kamran Sharif LLB (Punjab) LLM (London)

1. INTELECTUAL PROPERTY
Intellectual Property laws include the copyright laws, patent laws and trademark laws. Intellectual Property is often the most valuable and least protected asset of many businesses and creative individuals. This area of law protects the work of creative individuals and businesses and protects such creation from unauthorized use or exploitation by third parties. By utilizing Intellectual Property laws, creators and innovators can fully protect and benefit from their creations.
Pakistan is a signatory to the Marrakesh Agreement, signed in Marrakech, Morocco, on April 15, 1994, established the World Trade Organization, which came into being upon its entry into force on January 1, 1995 (the “WTO”). The WTO aims to increase international trade by promoting lower trade barriers and providing a platform for the negotiation of trade and to their business. Under the provisions of this agreement all states which subscribe to WTO become bound to a mutual recognition of intellectual property rights at a higher level of protection that the older conventions could offer. However, amendments have now been made in the Pakistani intellectual property laws, to accommodate the new WTO provisions.
I. COPYRIGHT REGIME

Pakistan is a signatory to the Berne Convention for the Protection of Literary and Artistic Work of 1886, came into force on December 5, 1887 (the “Berne Convention”), to the Universal Copyright Convention of 1952, came into force on September 16, 1955 (the “UCC Convention”) and to the Agreement on Trade Related Aspects of Intellectual Property Rights, came into force on January 1, 1995 (the “TRIPs”). The Berne Convention’s basic requirement is that each member state must follow the principle of national treatment where, in case, the country of origin of a work is a Berne state, other members must accord to the work of the same treatment as they offer to their own national.
The TRIPs is an international treaty administered by the World Trade Organization (the “WTO”) which sets down minimum standards for most forms of intellectual property (the “IP”) regulation within all member countries of the WTO. It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (the “GATT”) treaty in 1994.
Specifically, TRIPs deals with: copyright and related rights, such as rights of performers, producers of sound recordings and broadcasting organizations; geographical indications, including appellations of origin; industrial designs; integrated circuit layout-designs; patents, including the protection of new varieties of plants; trademarks; trade dress; and undisclosed or confidential information, including trade secrets and test data. TRIPs also specify enforcement procedures, remedies, and dispute resolution procedures.

1. DEFINITIONS

Immense endeavors have been taken to bring the copyright laws of Pakistan inconformity with these conventions in order to protect the literary and artistic work. The definition of “literary work”, inter alia, now includes:
“compilations and computer programmes, that is to say programmes recorded on any disc, tape, perforted media or other information storage device, which, if fed into or located in a computer or computer-based equipment is capable of reproducing any information.”
“Audio-visual work” is defined as:
“a work which consists of a series of related images which are intrinsically intended to be shown by the use of a machine or device, such as a project, viewer or electronic equipment, together with accompanying sound, if any, regardless of the nature of the material object, such as film or tape, in which the work is embodied.”
2. TERM

The copyright shall subsist in any literary, dramatic, musical or artistic work (other than a photograph) published within the life time of the author until fifty years from the beginning of the calendar year next following the year in which the author dies.
3. ASSIGNABILITY OF COPYRIGHT
The owner of the copyright in an existing work or the prospective owner of the copyright in a future work, subject to provisions of law, may assign to any person the copyright either wholly or partially and either generally of subject to limitations and either for the whole term of the copyright or any part thereof by reducing such assignment into writing and by duly signing it.

4. INTERNATIONAL COPYRIGHTS

The Federal Government by notification in the official gazette direct that all or any of the provision of the Pakistani Copyright Ordinance shall apply to works first published in a foreign country to which the order relates in like manner as if they were first published within Pakistan provided that reciprocal arrangements exist which entitle protection to works protected under the Copyrights Ordinance in the foreign jurisdiction.
5. INFRINGEMENT: CIVIL PENALTIES

Owner of the exclusive licensee of copyright, shall in case of an infringement, be entitled to all such remedies by way of injunction, damages, accounts and otherwise as are conferred by law for the infringement of a right. However, if the defendant could prove that he was not aware of the subsistence of copyright in a work the owner may be entitled to only an injunction and a decree for the whole or part of the profits made by the defendant by the sale of the infringing copies.
Where copyright in any work has been infringed and the owner of the copyright is unable to institute immediate regular legal proceedings for sufficient cause, the owner, may apply to the Court for immediate provisional orders to prevent infringement of the copyrights in such work and for preservation any evidence relating to such infringement in spite of the fact that regular proceedings in the form of a suit or other Civil proceedings have not yet been initiated by the owner.
6. INFRINGEMENT: CRIMINAL PENALTIES
The act of infringement of copyright has been made a cognizable and non-bailable criminal offence tri-able by a first class magistrate where under any person who knowingly infringes or abets the infringement of the copyright in a work shall be punished with imprisonment or with fine or both as provided under the copyright laws.

II. PATENT REGIME

Pakistan as a member of WTO and signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights (the “TRIPs”) undertook to amend its patent law in conformity with TRIPs. However, it is important to mention here that Pakistan has signed the Paris Convention for the Protection of Industrial Property (the “Paris Convention”) on July 22nd, 2004.
On December 2, 2000 the President of Pakistan promulgated the Patents Ordnance, 2000 (the “Ordinance”). Immense endeavors have been taken to bring the Ordinance in conformity with the requirements of TRIP’s and Paris Conventions, as well as, it corresponds to the regime of new patent laws promulgated around the globe. The Ordinance repealed the Patent and Design Act, 1911 (II of 1911).
1. DEFINITION

The Ordinance defines invention as “any new and useful product, including chemical products, art, process, method or manner of manufacture, machine, apparatus or other article; substance or article or product produced by manufacture and includes any new and useful improvement of any of them and an alleged invention”.

Process is defied as “any art, process or method of new manufacture of a product and includes a new use of a known process or a product”. Similarly, product is defined to include “any substance, article, apparatus, machine or a chemical product”.
Published means “made available to the public whether in Pakistan or elsewhere and a document shall be taken to be published under any provision of this Ordinance, if it can be inspected as of right at any place in Pakistan by members of public, whether on payment or free of cost.”
2. PATENTABLE INVENTIONS
To qualify grant of patent, the Ordinance requires an invention to be new (state of the art), involving an inventive step, and be capable of industrial application. The Ordinance provides that “an invention shall be considered to be new if it does not form part of the state of art”.
State of art is defined to include
(a) everything disclosed to the public anywhere in the world, by publication in tangible form or by oral disclosure, by use or in any other way, prior to the filing or, where appropriate, the priority date, of the application claiming the invention, or
(b) contents of complete specification and priority documents published under the Ordinance.
(c) traditionally developed or existing knowledge available or in possession of a local or indigenous community.
Inventive step is defined with its traditional meaning of non-obviousness to a person skilled in the art. Industrial application is defined to include capability of the invention to be used in any kind of industry. The Ordinance emphasizes that “the industry shall be understood in its broadest sense”. The Ordinance clarifies that “a product consisting of a substance or composition shall not be prevented from being treated as capable of industrial application merely because it was invented for use in such a method”.
Though under the Ordinance, patents are not to be granted for “animals or plants other than micro-organisms and essentially biological process for the production of animals or plants”, however, the Ordinance clarifies that this probation shall not apply to “micro-biological processes or products of such processes”.
3. APPLICATION FOR A PATENT
The Ordinance requires every application for the patent to be on the prescribed form and shall be filed at the Patent Office in the prescribed manner and shall contain a declaration to the effect that the applicant is in possession of an invention of which he, or in the case of joint application, at least one of the applicants, claims to be the true and the first inventor of or the legal representative or assignee of such inventor. The Ordinance requires each application to be in respect of one invention only or to be in respect of a group of inventions so linked as to form a single inventive concept. Complete or provisional specifications are required to accompany the application. Every complete specification is required:-
(a) to fully and particularly describe the invention and the method by which it is to be performed;
(b) disclose the invention; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed.

The claim or claims of a complete specification are required to relate to a single invention, to be succinct and to be fairly based on the matter disclosed in the specification. An abstract is also required to be furnished.
The Ordinance requires each application to be accepted or refused in eighteen months (or twenty-one months, in case an application for extension of time is filed) from the date of the filing. Once accepted, each application will be open for opposition within four months from the date of its publication in the official Gazette.
Additional information and documents relating to foreign applications:
The Ordinance empowers the Controller to require foreign applicants to furnish date and number of any application for patent filed by the foreign applicant abroad relating to the same or essentially the same invention as that claimed in the application filed in Pakistan. The applicant, when required by the Controller, is required to furnish with the following documents relating to foreign application(s):-
(a) a copy of any communication received by the applicant concerning the results of any search or examination carried out in respect of the foreign application(s);
(b) a copy of the patent granted on the basis of the foreign application(s); and
(c) a copy of any final decision rejecting the foreign application(s).

4. TERM OF PATENT

The term of Patent under the Ordinance shall be twenty years from the filing dated. Under the previous law, the term of patent was sixteen years.
5. RIGHTS CONFERRED BY PATENT

Under the Ordinance, the holder of a valid patent in Pakistan shall have the right to prevent the third parties, not having owner’s consent, from the acts of making, using, offering for sale, seling, or importing and having the right to assign, or transfer by succession, the patent and to conclude licensing contracts.
In addition to any other rights, remedies or action available to him under the Ordinance, the owner of the patent shall have the right to institute Court proceedings against any person who infringes the patent.
6. RELIEF IN SUIT FOR INFRINGEMENT

The Ordinance empowers the Court to grant relief in any suit for infringement of patent, which includes granting relief by way of damages, injunctions or accounts provided that where permitted. The court is also empowered to order prompt and effective provisional measures.
7. INTERNATIONAL ARRANGEMENTS

Under the Ordinance, the Federal Government has the powers to declare a country to be a convention country, with a view to fulfill the requirements of a treaty, convention or arrangement between Pakistan and any other country, in addition to the members of the WTO, for the purposes of the Ordinance or any provisions thereof.
The Ordinance requires that in case a convention application is made under the Ordinance, the applicant shall furnish, in addition to the complete specifications, copies of the specification or corresponding documents filed or deposited by the applicant in the patent office of the convention country in which the relevant application was made, certified by the official chief or head of the patent relevant application was made, certified by the official chief or head of the patent office of the convention country, or other wise verified to the satisfaction of the controller, along with the application or within three months thereafter, or within such further period as the controller may on good cause allow. It further prescribes that if any such specification or other documents in a foreign language, a translation into English of the specification or document, verified by affidavit or otherwise to the satisfaction of the controller, shall be annexed to the document or specification.
8. PENALTIES

Chapter XIX of the Ordinance deals with penalties. If any applicant/person contravene the provisions relating to certain inventions, or make a false entry in any register kept under the Ordinance, or make false representation, or wrongfully use the word “patent office”, or refused or failed to supply information required under the Ordinance, or deceitfully represent himself as registered patent agent such applicant/person shall be punished with imprisonment or fine or both according to the provision of the Ordinance.
III. TRADEMARK REGIME
The much-awaited trademark law was enforced in Pakistan on April 13, 2001. It is called The Trade Mark Ordinance, 2001 (the “Ordinance”). The new law has brought numerous reforms which are intended to comply with Pakistan’s obligation as a World Trade Organization (the “WTO”) member. The new law embodies new trends and concepts in Pakistan Trademark Law which were not there in the earlier Act of 1940. The Ordinance includes provisions which are likely to extend the scope of protection, and simplify enforcement and registration procedure.
1. DEFINITION
The definition of “mark” under the new law has been broadened, which 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”.
“Trade Mark” means
“any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”

2. APPLICATION FOR REGISTRATION OF TRADE MARK
Under the Ordinance, it is possible to file service mark applications; thus, making it easier for brand owners in service industry to seek statutory protection. An application for registration of trade mark is to be made to the Registrar in the manners prescribed by the Ordinance. Provisions have also been made for filing collective marks and certification marks and for registration of a domain name as a trade mark.
3. TERM OF TRADE MARK

The Ordinance provides that a trade mark shall be registered for a period of ten years from the date of registration.
4. RENEWAL OF TRADE MARK

A proprietor of a trade mark may request for the renewal of a trade mark to the Registrar in the manners prescribed by the Ordinance. The registration may be renewed for a further period of ten years. Renewal shall take effect from the expiry of the previous registration. The renewal of the registration of a trade mark shall be published in the Journal governed under the authority, conferred by the Ordinance, of the Registrar.
5. RIGHTS CONFERRED BY REGISTRATION
Registration of a trade make, by following the manners prescribed under the Ordinance, shall entitle the proprietor of the trade mark for its ownership being personal property. The proprietor of a registered trade mark shall have exclusive rights in the trade mark. The infringement of the registered trade mark shall entitled its proprietor without prejudice to the rights to obtain any relief, by way of damages, injunctions, accounts or otherwise as is available in respect of the infringement of any other property right, under any law for the time being in force, the proprietor shall also have the right to obtain relief under the Ordinance if the trade mark is infringed.
6. RIGHT TO PRIORITY ON THE BASIS OF CONVENTION APPLICATION

It is now possible to file convention priority applications in Pakistan. Also, six months priority is available to any person who exhibits his goods at an officially recognized exhibition. Convention application means an application duly made by a person for registration of a trade mark in one or more than one convention country. A convention country means a country other than Pakistan which is a party to the Paris Convention for the Protection of Industrial Property, come into force on March 20, 1883 (the “Paris Convention”).
7. PROTECTION OF WELL KNOWN TRADE MARK

The Ordinance has recognized the theory of dilution of well-known marks and statutory protection for well-known marks. In determining whether a trademark is well- known mark, the law provides that use and reputation has to be examined in global context without insisting on use of a mark in Pakistan. The provisions of the Ordinance which contains protection of well known marks clarifies that criteria laid down under the Paris Convention for determining whether a mark is a well known mark shall apply.
8. ASSISTANCE OF CUSTOM AUTHORITIES

New rights have been introduced enabling IP holders to seek custom authorities assistance to stop infringing and/or counterfeit goods from entering Pakistan has been introduced. However, such a remedy is only available to IP holders, who have registered their mark in Pakistan.

The definition of infringement has been broadened to cover use of a mark:
i. for same or similar goods or services;
ii. as a trade name;
iii. as a domain name.
iv. on “signboards”, “advertisements”, “business documents”

The Ordinance gives specific power to the Court to order erasure of offending marks, delivery-up of goods and/or destruction of goods in case of infringement.
The Ordinance is a comprehensive legislation and is likely to attract foreign brand owners to invest in Pakistan. However, in order for the law to be effective the enforcement authorities and judiciary will need to fully embrace these changes. The Trade Marks Office will also need more resources and training to deal with the expected increase in filing.

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