One of the questions I am asked most frequently by business owners is surprisingly simple:
“Can someone else use a name that is similar to mine?”
The question usually arises only after another business adopts a similar name, logo, packaging, or overall branding. By then, customers may already be confused, reputations may be at risk, and what could have been avoided through timely legal planning has become a dispute.
The answer is not always straightforward.
One of the most common misconceptions is that simply using a business name or logo automatically gives a business complete legal ownership of it. The legal position in Pakistan is more nuanced.
Trademark protection in Pakistan operates through two distinct legal regimes.
1. The statutory regime. The first is the statutory regime established under the Trade Marks Ordinance, 2001. Registration confers statutory rights upon the registered proprietor, including the right to bring an action for trademark infringement under Section 46(1) of the Ordinance.
2. Passing off. The second is the common law action of passing off, expressly preserved by Section 46(3) of the Ordinance. A business that has developed goodwill and reputation in an unregistered mark may rely on the law of passing off to restrain misrepresentation that is likely to damage that goodwill.
This distinction is also reflected in the registration process. Under Section 17(4)(a) of the Ordinance, a trademark may be refused registration where its use is liable to be prevented by the law of passing off protecting an unregistered trademark or other mark used in the course of trade. In other words, Pakistani law recognizes that, in appropriate circumstances, an earlier unregistered mark supported by goodwill may prevent the registration of a later mark.
The distinction between infringement and passing off is more than technical: it has practical consequences.
An infringement action is founded upon the statutory rights attached to a registered trademark. A passing off action, on the other hand, generally requires the claimant to establish goodwill, misrepresentation, and resulting damage. Although every dispute depends on its own facts, registration often provides a clearer statutory framework for protecting and enforcing trademark rights.
Registration also brings commercial advantages beyond litigation. A registered trademark can be licensed, assigned, franchised, recorded with Customs for border enforcement, and may serve as the foundation for seeking protection in foreign jurisdictions. For many businesses, it becomes one of their most valuable intangible assets.
Businesses routinely invest substantial time and resources in developing their brands, creating names, designing logos, developing packaging, securing domain names, marketing products, and building customer recognition. Surprisingly, one of the least expensive parts of that investment is often the legal protection that underpins it.
By the time a dispute arises, a business may already have invested years of effort and significant goodwill in its brand. Whether the issue concerns passing off, infringement, competing applications, or similar marks, resolving it is usually far more expensive and far more disruptive than taking preventive steps at the outset.
Trademark registration does not replace the protection that may be available through the law of passing off. Rather, it complements that protection by conferring statutory rights and greater commercial certainty.
For that reason, I regard trademark registration not merely as a legal formality, but as an important part of sound business planning.
A strong brand is built over time. Protecting it should begin just as early.
Pakistan Trademark Insights is a series exploring practical issues in trademark law and practice in Pakistan for businesses, entrepreneurs, legal practitioners, in-house counsel, and international brand owners.
Sameer Sami, Founder & Principal Attorney, SAMI & SAMI – Attorneys-at-Law