Jack Ellis

Pakistan recently added new IP provisions into its 2001 Customs Rules which are broadly expected to improve enforcement outcomes for brand owners importing goods into the country. The regulatory update comes amid a range of reforms that have been aimed at enhancing IP rights protections in Pakistan.

The new IP rules are designed to enable brand owners to alert Pakistani customs to potential imports of goods suspected to infringe on their trademark rights. “The chapter is intended to regulate imports only,” writes Sana Shaikh, senior associate at Vellani & Vellani in Karachi. “Parallel or grey market imports and de minimis imports have been specifically excluded.”

Under the newly added chapter to the Customs Rules, brand owners with “valid grounds” for suspecting an infringing import will be able to submit an application – along with mandatory documentation and evidence – to Pakistan’s Directorate-General of IP Rights Enforcement for detention of the goods.

Once the Directorate-General has received the brand owner’s submission and verified the status of their IP rights in the relevant national registries, it can order customs to detain the suspect goods. “The Directorate-General must order the detention of the suspected goods and notify the applicant and owner of said goods about the detention,” says Shaikh. “Both parties are asked to join the proceedings. Thereafter, the detained goods must be examined by a customs officer and an officer of the Directorate-General in the presence of both parties.” The goods can then be examined by customs and, if they are determined to be “infringing or spurious”, can be seized by the Directorate-General.

“The new chapter of the Customs Rules 2001 also requires customs officers to inform the Directorate-General when they have valid reasons to believe that the goods which are being imported into Pakistan infringe the Trademarks Ordinance 2001 or the Copyright Act 1962,” Shaikh adds. When receiving such a notice from customs, the Directorate-General must check for potential infringement against registry records before seeking the brand owner’s consent to initiate an enforcement action against the alleged infringer.

While these updated customs rules do leave a few big questions unanswered – such as over the role that the Directorate-General and customs officials seem to be given in determining infringement – they do nevertheless represent a positive development for trademark holders importing goods into Pakistan.

With a population of over 197 million – the sixth-largest in the world – Pakistan is hardly a blip on the map when it comes to market size. However, decades of geopolitical instability have generally made large-scale foreign investment in the country difficult – as has a particularly poor showing in terms of IP protections. Pakistan’s IP system ranked a miserable second-from-bottom on the most recent edition of the US Chamber of Commerce’s Global IP Index.

However, there are signs that things are beginning to take a turn for the better – at least in part due to the influence of powerful neighbours. Last year, the Office of the US Trade Representative removed Pakistan from its Priority Watch List of countries falling severely behind on IP enforcement after an eight-year run. Recently, it has made progress in a number of areas, including the consolidation of separate trademark, copyright and patent offices into a single IP Organisation, the establishment of local IP tribunals to streamline and enhance the enforcement process, and strengthened protection for geographical indications.

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