Understanding Trade Mark Non-Use Revocation in Pakistan
A registered trade mark in Pakistan can be removed from the Register if it is not used. The governing law is the Trade Marks Ordinance, 2001 (XIX of 2001), as amended by the Trade Marks (Amendment) Act, 2023. Non-use revocation is dealt with in section 73 of the Ordinance, and the procedure is in the Trade Marks Rules, 2004.
The period of non-use that matters is five years, not three.
The Five-Year Rule: Section 73
Under section 73(1), the registration of a trade mark may be revoked on either of two non-use grounds:
- Never used (section 73(1)(a)): within the five years following the date of completion of the registration procedure, the mark has not been put to bona fide use in Pakistan by the proprietor or an authorised user, for the goods or services for which it is registered, and there are no proper reasons for the non-use.
- Use stopped (section 73(1)(b)): bona fide use has been suspended for an uninterrupted period of five years, and there are no proper reasons for the non-use.
How the period is counted
For a mark that has never been used, the five years run from the completion of the registration procedure. This is not the same as the “date of registration”: under section 33(3), a mark is registered as of the filing date of its application. For a mark whose use has stopped, the five years must be uninterrupted.
Proper reasons for non-use
Neither ground applies if there are “proper reasons” for the non-use. The Ordinance does not define or list proper reasons, so this depends on the facts of each case.
Starting or resuming use
Under section 73(3), a registration will not be revoked on either non-use ground if use is started or resumed after the five-year period ends and before an application for revocation is made. There is one limit: use that starts or resumes within the three months before the application is taken into account only if preparations for it began before the proprietor became aware that the application would be made.
What Counts as Use
- Bona fide use in Pakistan in relation to the registered goods or services (section 73(1)(a)). The Ordinance does not define “bona fide use”.
- Small changes to the mark: use in a form that differs only in elements that do not alter its distinctive character counts (section 73(2)).
- Use with permission: permitted use by an authorised user is treated as use by the owner (section 74(1)).
- Goods for export: applying a trade mark in Pakistan to goods or services to be exported from Pakistan counts as use (section 5(2)).
- Partial revocation: if the grounds exist for only some of the registered goods or services, revocation applies to those only (section 73(5)).
Who Can Apply, and Where
Under section 73(4), an interested party may apply for revocation to the Registrar of Trade Marks. If proceedings concerning the mark are already pending in the High Court, the application must be made to the High Court, and the Registrar may refer an application to the High Court at any stage. The 2023 amendment removed the earlier references to a District Court from this section.
Under rule 68 of the Trade Marks Rules, 2004, an application to the Registrar is made on Form TM-26 with a statement of the grounds. The Registrar sends copies to the registered proprietor, who can file a counter-statement. For a non-use application under section 73(1)(a) or (b), rule 68(2) provides that the application shall be granted where no counter-statement is filed.
If a registration is revoked, the owner’s rights end from the date of the application for revocation, or from an earlier date if the Registrar or the High Court is satisfied that the grounds existed then (section 73(6)).
Who Must Prove Use
Under section 119, if a question arises in proceedings under the Ordinance about the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it. In a non-use case, it is therefore the owner of the mark who has to show how the mark has been used.
In practice, owners should keep dated records showing the mark in use in Pakistan for the registered goods or services, such as invoices, sales records, packaging and labels, and advertising material.
Practical Points
- Trade mark owners: note when your registration was completed, check that the registered goods and services match what you sell, and keep records of use by you and any authorised users.
- Businesses blocked by an unused mark: check the Register entry and the owner’s activity in Pakistan first, and remember that use started or resumed before your application can defeat it, subject to the three-month rule in section 73(3).
Conclusion
In Pakistan, a registered trade mark can be revoked under section 73 of the Trade Marks Ordinance, 2001 if it has not been put to bona fide use in Pakistan for five years and there are no proper reasons for the non-use, and section 119 places the burden of showing use on the owner. For related guidance, see our trademark law page and our guide to trademark opposition in Pakistan.
