Intellectual Property

Well-Known Trademarks in Pakistan: Protection Without Registration, Dilution and How to Prove Fame

Most trademark rights in Pakistan start with registration. Well-known marks are the main exception: the Ordinance gives famous marks rights that do not depend on being on the Pakistani register, and sometimes extend beyond the goods for which the mark is used. A foreign brand owner searching for the best trademark lawyer in Pakistan to stop a local copy of an unregistered mark should know that section 86 allows exactly that kind of action, but only if well-known status can be proved with evidence that a Pakistani tribunal will accept.

Where well-known marks sit in the Ordinance

Protection for well-known marks is spread across several provisions of the Trade Marks Ordinance, 2001, each doing a different job:

Provision	What it does
Section 2(xiii)	Defines “dilution” as the lessening of the capacity of a well-known trade mark to identify and distinguish goods or services.
Section 14(1), proviso	A well-known mark is not to be refused on the absolute grounds in clauses (b) to (d), the grounds aimed at marks lacking distinctive character.
Section 17(3)	Refusal of a later mark for dissimilar goods where the earlier mark has a reputation in Pakistan and the later use, without due cause, would take unfair advantage of or harm its distinctive character or repute.
Section 17(4)(a)	Refusal where use of the later mark could be stopped by the law of passing off protecting an unregistered mark.
Section 18(1)(c)	Treats a mark entitled to Paris Convention protection as a well-known mark as an “earlier trade mark”, even if unregistered.
Section 40(4)	Infringement by use on dissimilar goods or services where the mark “is a well known trade mark, or has a reputation in Pakistan”.
Sections 85 and 86	Paris Convention definitions, the seven factors for well-known status and the injunction right.

Section 18(1)(c) is the link that makes the rest work at the registration stage. Because a well-known mark counts as an earlier trade mark, its owner can rely on the relative grounds in section 17 to oppose a copycat application and, after registration, to seek a declaration of invalidity. Our guides on trademark oppositions and invalidity and rectification explain those procedures.

The international source: Paris Article 6bis and TRIPS Article 16

Section 86 implements Pakistan's treaty obligations. Article 6bis of the Paris Convention requires member countries to refuse or cancel registration of, and to prohibit use of, a mark that reproduces, imitates or translates a mark considered by the competent authority to be well known in that country, where the goods are identical or similar and confusion is likely. Owners must have at least five years from registration to seek cancellation, and no time limit applies against marks registered or used in bad faith.

Article 16 of the TRIPS Agreement extends this in two ways. Article 16(2) applies Article 6bis to services and says that, in deciding whether a mark is well known, account is to be taken of knowledge “in the relevant sector of the public”, including knowledge obtained as a result of promotion of the mark. Article 16(3) extends protection to goods or services that are not similar, where use would indicate a connection with the owner of a registered mark and the owner's interests are likely to be damaged.

Two consequences follow for Pakistan. First, the test is awareness in the relevant sector, not among the whole population; a mark for industrial batteries can be well known among buyers of batteries. Second, reputation built through advertising that reaches Pakistan, including online and satellite media, can count even where the goods were never sold locally.

Who is protected, and the seven factors in section 86(2)

Section 86(1) protects a mark that is well known in Pakistan as the mark of a person who is a national of, or domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country, “whether or not that person carries on business, or has any goodwill, in Pakistan”. Section 85 defines a Convention country as a party to the Paris Convention other than Pakistan.

The wording is aimed at foreign proprietors. That does not leave famous Pakistani brands unprotected: they rely on the reputation-based provisions in sections 17(3) and 40(4) and on passing off, and, as noted below, the Sindh High Court has also described a domestic brand as protected as a well-known mark. Because the reach of section 86(1) for Pakistani owners has not been squarely decided, a local owner should plead section 40(4) and passing off alongside section 86.

Section 86(2) directs the tribunal to decide well-known status “without having to require registration or actual use in the form of sales” in Pakistan, by considering Pakistani or worldwide:

1. recognition of the mark;
2. inherent or acquired distinctiveness;
3. duration of use and advertising;
4. commercial value attributed to the mark;
5. geographical scope of use and advertising;
6. quality and image the mark has acquired;
7. exclusivity of use and registration, including whether third parties use identical or deceptively similar marks for identical or similar goods or services.

No single factor is decisive, and none is a precondition. The last factor cuts both ways: if the market is already full of similar marks used by others, it is harder to say the claimant's mark is uniquely recognised.

The remedy: injunctions for confusion and for dilution

Section 86(3) entitles the owner of a well-known mark to an injunction restraining the use in Pakistan of a mark that is identical or deceptively similar to it, or whose essential part is, in two situations:

• Confusion: use in relation to identical or similar goods or services where the use is likely to cause confusion (clause (a)).
• Dilution: use that “causes dilution of the distinctive quality” of the well-known mark (clause (b)). This clause is not tied to similar goods.

For dissimilar goods, the owner therefore has two routes. Section 86(3)(b) is available to an unregistered well-known mark but requires proof of dilution. Section 40(4) requires a registered mark that is well known or has a reputation in Pakistan, and asks whether use without due cause takes unfair advantage of, or is detrimental to, its distinctive character or repute. A registered owner normally pleads both.

Dilution is easier to describe than to prove. Pakistani courts have not developed a detailed test, and in practice they have granted relief on dissimilar goods mostly by reasoning about likelihood of confusion. In Suit No. 795 of 2020 (order of 14 December 2020), for example, the Sindh High Court relied on the Supreme Court's decision in Seven-Up Company v. Kohinoor Thread Ball Factory, PLD 1990 SC 313, on confusion between goods that are not identical. A claimant who can show that buyers would assume a connection with the famous brand stands on firmer ground than one relying on dilution alone.

Since the Trade Marks (Amendment) Act, 2023, infringement suits are filed before the IP Tribunal; see our guide to IP Tribunal jurisdiction and procedure.

Limits: acquiescence, prior use and bad faith

Section 86(4) makes the injunction right subject to section 81 and preserves the continued bona fide use of a mark that began before the Ordinance came into force. Section 81 provides that an earlier owner who, knowing of the use, has acquiesced for a continuous period of five years in the use of a later registered mark loses the right to seek a declaration of invalidity or to oppose its use for the goods for which it has been used, unless the later mark was applied for in bad faith.

The practical lessons are straightforward:

• Act promptly. Five years of knowing tolerance can end the right to attack a registered copy. Monitoring the Trade Marks Journal and the local market is cheaper than litigation.
• Plead bad faith where the facts support it. A copy filed by a former distributor, agent or someone with obvious knowledge of the foreign brand is the classic case, and bad faith also defeats the acquiescence bar.
• Expect a prior-use defence from long-established local businesses whose use predates the Ordinance.

Registration remains the better strategy where possible. Section 86 is a safety net, not a substitute; it requires proof of fame in every dispute, while a registration certificate is prima facie evidence of validity. Our article on trademark protection for US, UK, EU and GCC companies covers filing strategy for foreign owners.

What the Sindh High Court has done with section 86

Reported discussion of section 86 is limited, and most of it comes from interlocutory orders rather than final judgments. Three Sindh High Court decisions show how the provision is used in practice:

• Former agent registering the principal's mark. In Suit No. 2595 of 2014 (order of 19 November 2015), a former local representative of a US company had registered the company's POWER SONIC mark in its own name and sued the foreign company's new channel. On facts admitted in the plaint, the court treated the foreign mark as well known in Pakistan under section 86(1)(b), refused the plaintiff's injunction and allowed the foreign company's application under section 86(3). The court stressed that agents cannot be allowed to appropriate their principals' marks.
• Retailer using signage after the relationship ended. In Famous Brands (Private) Ltd. v. Samsonite IP Holdings S.à r.l., High Court Appeal No. 284 of 2018 (heard in 2021), a Division Bench dismissed a retailer's appeal. It held that it was immaterial whether the proprietor had business goodwill in Pakistan, and that the retailer's own continued use of the marks demonstrated that they were well known.
• A domestic household brand. In Hamdard Laboratories (Waqf) Pakistan v. Mohammad Fahim, High Court Appeal No. 269 of 2014 (judgment of 3 May 2016), a Division Bench restrained the use of “Rooh-e-Samar” on syrup and described ROOH AFZA as protected as a well-known mark under Article 6bis of the Paris Convention, embodied in section 86. The relief itself rested mainly on confusion and get-up.

None of these decisions works through the seven factors in detail, and we have not found a reported Pakistani judgment that does. The courts have tended to find well-known status from admitted facts, long use and the defendant's own conduct. That leaves the evidential standard for a contested case largely open.

How to prove a mark is well known

Because the threshold is unsettled, evidence should be organised around the statutory factors so that a court or the Registrar can tick them off. Before the Registrar, evidence is given by affidavit; before the IP Tribunal, the first battle is usually an interim injunction application, so the core documents must be ready on day one.

Factor in section 86(2)	Useful evidence
Recognition	Market surveys in the relevant sector, trade press, awards, brand rankings, unsolicited media coverage in Pakistan
Distinctiveness	Showing the mark is invented or arbitrary, or how distinctiveness was acquired through use
Duration of use and advertising	Dated packaging, advertisements and catalogues across years, first-use evidence
Commercial value	Audited turnover, brand valuations, licence income
Geographical scope	Lists of countries of sale, registrations worldwide, internet traffic and social media reach from Pakistan
Quality and image	Industry certifications, reviews, endorsements
Exclusivity	Register searches, prior oppositions and court orders won, absence of similar third-party marks

Common mistakes are relying on bare assertions in the plaint, filing foreign registration certificates without the documents actually being annexed, producing evidence of worldwide fame with nothing showing awareness in Pakistan, and failing to explain why the defendant chose the mark. Evidence of the defendant's prior relationship with the brand, as in the agent and retailer cases above, is often the most persuasive single item. Our guide to trademark refusal reasons explains how the Registrar treats conflicts with earlier marks during examination.

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.