Are we ready for Service Marks Registration ?

By: Karimullah Adeni

The new trademark law, which is going to be promulgated soon, will introduce for the first time, the registration of service marks in Pakistan, thus meeting the long due demand of the WTO under the Trade Related Intellectual Property Rights (TRIPs) agreement.

Ever since independence the service business in Pakistan are without any protection of their service marks. Most of the service businesses in Pakistan, i.e. Banks, Schools, Insurance Companies, Advertising Agencies, Tele-communication, Travel Agencies, Hospitals, Law Firms, etc., are operating without protection of their service marks. Fine example is that of service companies with identical marks such as Habib Bank, Habib Bank A.G. Zurich, Bank Al-Habib, Bay View Academy, Bay View School, Manhattan Communications, Manhattan Worldwide, etc. The introduction of service mark registration is going to add loads of pressure on the trademark applications and opposition cases. Hence our Trade Marks Registry is not at all prepared for tackling the extra registration and litigation after the introduction of service marks registration.

The Trade Marks Registry at present is handling 34 trade mark classes, under which thousands of foreign and local marks are filed every year. What will happen when there would be more classes for service marks registration?

The Classes which are to be added are:

Class 35: advertising, business management; business administration; office functions. 
Class 36: insurance, financial affairs; monetary affairs; real estate affairs. 
Class 37: building construction; repair; installation services. 
Class 38: telecommunications. 
Class 39: transport, packaging and storage of goods, travel arrangements. 
Class 40: treatment of materials. 
Class 41: education; providing of training; entertainment; sporting and cultural activities. 
Class 42: providing of food and drink; temporary accommodations; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be classified in other classes. 

Just imagine how service businesses would react when all such options would be available to them at once. Although most of the service companies are still unaware of the importance of intellectual property, but ever prudent businessman would want to get their service brand registered. We can safely assume that there would be a lot more people approaching the Trade Marks Registry than today and definitely a stampede of opposition and litigation among the businesses would start having no end.

What frightens the Intellectual Property (IP) practitioners and businesses is the fact that the Trade Marks Registry today is not properly handling event he present bulk of work. There are only four examiners handling over 50,000 marks every year and checking their eligibility according to Trade mark law, and for that purpose they had to search the entire record since the establishment of the Registry in 1947. Above all, these four people do not have access for any computerized generated data and whatever is done there to check any proposed mark is accomplished manually.

No wonder, the Trade Mark Registry manned by one Registrar, One Deputy Registrar and two Assistant Registrars is flooded with tons of opposition cases pending for crucial decisions since 1988. This whole exercise is make the whole process drag even though one cannot blame the personnel at the Registry for any delay.

What would happen when there would be eight more classes of service marks to handle?

We have seen services businesses with conflicting marks fighting each other on the issue of similar names. The fact is that, for the last 53 years, the service sector in Pakistan has existed without any law to regulate their naming system, which means that today scores of service businesses are out there with same or similar names. Once it is establish that only one of them would be considered legal, it would mean that a "Pandora's Box" of suits and counter-suits would open up.

Are we ready for that ? 

With the large service sector still untapped, it would be most chaotic to have service mark laws introduced in one step. The result is bound to be a big confusion, and solutions would be most difficult to come as Trade Mark Registry which is at the verge of collapse due to extreme load of pressure, increased filling of trade mark applications, shortage of staff and further down sizing. 

It would be a great disservice to the Trade Marks Registry, the businesses in the service sector, the IP practitioners, and above all to the country as whole, if we rushed to introduce the service mark registration without proper planning and without taking into confidence the business community and creating proper awareness about the importance of such marks. 

What Pakistan needs today is a media campaign providing general awareness on how to go about selecting the registering their trade and service marks. Also the government has to bring revolutionary changes in the basic infrastructure of Trade Marks Registry and to prepare a comprehensive plan for proper education/training to the examiners and staff. 

These steps, which are badly needed in this important area, are imperative to facilitate and minimize the litigation cost of the businesses, who are struggling to survive in the already crippled economy.