Intellectual Property

Renewing and Restoring a Registered Trademark in Pakistan

Most trademark problems at renewal stage are not legal puzzles. They are diary failures: a certificate filed away in 2016, a reminder posted to an old office, a company name that changed after a merger. The consequence is serious, because a mark removed from the Register stops being a registered right, and the window to bring it back is short.

This guide explains how the ten-year term is calculated, the renewal and late-renewal windows under the Trade Marks Rules, 2004, what restoration requires, and how international registrations designating Pakistan are handled differently. If you are looking for the best trademark renewal lawyer in Karachi, judge them on whether they track the windows on both sides of expiry and know which of your marks sit on the WIPO register rather than the Karachi Registry.

How long a registration lasts and when the clock starts

Section 34(1) of the Trade Marks Ordinance, 2001 states that a mark "shall be registered for a period of ten years from the date of registration", and section 34(2) allows renewal for further ten-year periods. The date of registration is not the date on your certificate. Under section 33(3) a mark is registered as of the date the application was filed, and section 2 defines "date of registration" by reference to that provision.

In practice this means part of the first ten years is used up while the application is still being examined and advertised. A mark filed in 2016 and registered in 2019 still falls due for renewal in 2026. Under section 35(4), a renewal takes effect from the expiry of the previous registration, so renewing early or late within the permitted window does not move your future dates.

Where prosecution takes so long that a mark is registered close to, or after, its first renewal date, rule 52(3) and rule 52(5) of the Trade Marks Rules, 2004 give a separate period, counted from the actual date of registration, in which to pay the renewal fee. Owners of older pending applications should check this as soon as the certificate arrives.

The renewal window, the reminder and the late-renewal period

The Ordinance sets the framework in section 35 and leaves the detail to the Rules. Read together, the stages run as follows:

Stage	What happens	Provision
Six months to one month before expiry	The Registrar sends the registered proprietor a reminder of the approaching expiry	Section 35(2); rule 50
Six months ending on the expiry date	Request for renewal on Form TM-12 with the renewal fee	Section 35(3); rule 51
After expiry	The Registrar advertises the non-payment in the Trade Marks Journal. If TM-12, the renewal fee and the additional fee arrive within six months of that advertisement, the mark is renewed without being removed	Section 35(3); rule 52(1)
No request within that period	The mark is removed from the Register and the removal is published	Section 35(6); rule 52(2) and (6)
Within six months of removal	Request for restoration on Form TM-13 with the renewal fee and a restoration fee	Section 35(6) proviso; rule 53

Two points are often missed. First, the Registrar's reminder goes to the address on the Register. If your address or agent has changed and the Register was never updated, the reminder will not reach you, and its absence is not an excuse. Secondly, section 35(5) allows the Registrar, at any renewal other than the first, to ask for evidence that the mark has been used in Pakistan. Keep dated invoices, packaging and advertising for each class so that a request of this kind does not hold up the renewal.

Official fees for renewal, late renewal and restoration are set by IPO-Pakistan's published schedule and change from time to time; we discuss them with clients privately rather than quoting figures here.

Filing the renewal: who files, what to submit and how to confirm it

The request is made by the registered proprietor, or by a trademark agent or advocate authorised on Form TM-48. Overseas owners need an address for service in Pakistan, which is entered or changed on Form TM-50. If the proprietor named on the Register is no longer the true owner, record the new owner first; a renewal filed by someone who does not appear on the Register invites a query and delays the whole process.

Pakistan registers marks class by class: Form TM-1 is an application for goods or services "included in one class". A brand protected in five classes is therefore usually five registrations, each with its own number, and each needs its own TM-12. That is also a natural point to drop classes the business no longer needs.

Before filing, check the following:

• the registration number, class and proprietor details match the Register exactly;
• the expiry date has been calculated from the filing date, not the certificate date;
• any pending recordal of a change of name, address or ownership has been filed;
• evidence of use is ready if this is a second or later renewal.

After filing, keep the official acknowledgment and watch for the renewal to be published in the Journal, which section 35(7) requires. If there is any doubt about status, a formal request for information on Form TM-45 confirms what the Register shows. A renewal that sits unconfirmed for months is a risk in its own right, particularly if the brand is about to be licensed, sold or enforced.

Removal and restoration: what the Registrar needs to see

Restoration is discretionary. Rule 53 allows the Registrar to restore a removed mark and renew it where a TM-13 request is filed within six months of the date of removal and the Registrar is satisfied, "having regard to the circumstances of the failure to renew", that it is just to do so. Section 35(7) then requires the restoration to be published in the Journal.

A restoration request should therefore explain the failure, not just pay the fee. Useful material includes:

• an affidavit setting out why the renewal was missed (for example, an agent who ceased practice or a reminder sent to a superseded address);
• proof that the mark has stayed in genuine use in Pakistan, such as sales records and advertising;
• evidence that the owner acted promptly once the removal came to light.

Do not assume the general extension-of-time procedure under the Rules will rescue a missed renewal or restoration deadline. Treat the six-month periods as fixed.

If the restoration period has also passed, the practical route is a fresh application, which carries a new filing date and loses the seniority of the old registration. Section 36 gives some protection in the meantime: for one year after removal for non-payment, the removed mark is treated as still on the Register when the Registry considers another person's application, unless the tribunal is satisfied that the removed mark had no bona fide use in the two years before removal, or that no confusion is likely. That shield is temporary and does not restore your right to sue for infringement of a registered mark.

Madrid international registrations: renewal happens at WIPO

Pakistan joined the Madrid Protocol with effect from 24 May 2021, and the Trade Marks (Amendment) Act, 2023 added Chapter XA on international registrations to the Ordinance. Section 92G provides that an international registration lasts ten years and may be renewed for ten years from the expiry of the preceding period, with a six-month grace period on payment of a surcharge.

The renewal itself is filed with WIPO's International Bureau, usually through the eMadrid platform, under Article 7 of the Madrid Protocol. WIPO sends an unofficial reminder about six months before expiry. The Trade Marks Registry in Karachi does not renew international registrations, and IPO-Pakistan states that it issues no separate certificate for designations of Pakistan. A foreign owner relying on a Madrid designation should therefore diary the international registration date, not a local date.

Pakistani businesses that have used the Registry as their office of origin to file abroad need to manage two different dates: the national registration, renewed at Karachi on TM-12, and the international registration, renewed at WIPO. Letting either lapse has its own consequences. Our guides on filing internationally from Pakistan and extending a foreign mark to Pakistan explain how the two registers interact.

Article 7(2) of the Protocol also provides that renewal cannot change the international registration. Ownership or name changes have to be recorded at WIPO separately, ideally before the renewal is filed.

Put the Register in order before you renew

A renewal filed in the name of an owner who no longer exists, or at an address that is out of date, creates trouble later: in infringement proceedings, in customs recordation and in any sale of the business. Before filing TM-12, compare the Register entry with the current facts and record any differences on the correct form:

• Change of name without a change of ownership, such as a private company converting to public: Form TM-33.
• Change of trading or business address: Form TM-34.
• Change of address for service, including a new trademark agent: Form TM-50.
• New owner after an assignment, merger or inheritance: Form TM-23 for one mark or TM-24 for several marks with the same chain of title. IPO-Pakistan's schedule charges a higher official fee where this is filed more than six months after the new owner acquired the mark, so record promptly. Our guide on trademark assignment and licensing covers this in detail.

Renewal is also not the time to update a logo. Section 37(1) says a registered mark shall not be altered in the Register during registration or on renewal, except for the limited changes section 37(2) allows, such as the proprietor's name or address appearing in the mark. A substantially redesigned logo usually needs a new application.

Practical portfolio management for Karachi businesses

For a business holding more than a handful of marks, renewal is best handled as an annual review rather than a series of emergencies. A workable routine looks like this:

1. Build one schedule listing each mark, class, registration number, filing date and expiry date, with a separate column for international registrations and their WIPO dates.
2. Start eight months ahead. That leaves time to check ownership and address details and file any recordal forms before the six-month renewal window opens.
3. Decide what to keep. A mark that has not been used for years may be open to a non-use challenge whether or not it is renewed. See our note on rectification and non-use cancellation before spending money on marks that are dormant.
4. Keep evidence of use by class, so you can answer a section 35(5) request or a non-use attack without searching through old files.
5. Link dependent registrations. Customs recordation, pharmaceutical brand approvals and franchise agreements often assume the mark is validly registered. A lapse can unsettle all of them.
6. Check group ownership. Marks are often held by a holding company, a former partner or a dissolved firm. Fix the chain of title before renewal, not during a dispute.

Overseas brand owners should also make sure the trademark agent on record in Pakistan is still active and authorised on Form TM-48. Our trademark registration practice page explains how we manage filings at the Karachi Registry.

Common questions

This article is general information about Pakistani law and procedure, not legal advice for any specific matter. If this touches on something you're currently facing, get in touch and we'll advise on your facts directly.