Comprehensive Guide to Applying for a Registered Design in Pakistan

Comprehensive Guide to Applying for a Registered Design in Pakistan

Introduction

In a competitive global market, protecting the visual appeal of your products is vital to maintaining brand identity and preventing unauthorized copying. In Pakistan, the Registered Designs Ordinance, 2000, and the Registered Designs Rules, 2023, provide a robust framework for registering industrial designs, offering exclusive rights for up to 30 years. Managed by the Intellectual Property Organization of Pakistan (IPO-Pakistan), the registration process ensures your design’s unique shape, pattern, or ornamentation is safeguarded. This comprehensive guide outlines the eligibility criteria, step-by-step application process, fees, and practical tips for successfully registering a design in Pakistan.

Understanding Registered Designs

A registered design protects the aesthetic features of an article or set of articles, such as shape, configuration, pattern, or ornament, applied through an industrial or handicraft process. Unlike patents, which cover functional innovations, designs focus on visual appeal that attracts the eye. Registration grants the proprietor the right to prevent others from making, importing, selling, or using articles with the registered design without permission, providing a competitive edge in industries like fashion, furniture, or electronics.

Eligibility for Registration

To qualify for registration under the Registered Designs Ordinance, 2000, a design must meet specific criteria:

• Novelty and Originality(Section 3):

• The design must be new or original, not identical to or differing only in immaterial details from designs previously registered in Pakistan or published worldwide.
• It should not be a common trade variant or a mere rearrangement of known designs.
  • Application to Articles:
• The design must be applied to a specific article or set of articles, covering features of shape, configuration, pattern, or ornament.
• It excludes methods or principles of construction and features dictated solely by technical or functional considerations.
  • Proprietorship(Section 2(h)):
• The applicant must be the proprietor, who can be:
  • The creator of the design.
  • The person for whom the design was created.
  • An assignee or legal successor.
  • In cases of independent creation by multiple persons, the one with the earliest filing or priority date (if the application is not withdrawn, abandoned, or rejected).
• Exclusions(Sections 3(4), 34):

• Designs contrary to public order or morality are not registrable.
• Designs for articles like paintings, sculptures, drawings, engravings, photographs, architectural works, trademarks, or trade-dress are excluded (Rule 11, Registered Designs Rules, 2023).

Step-by-Step Application Process

The Registered Designs Rules, 2023, detail the procedural requirements for registering a design. Below is a comprehensive guide to the application process:

Step 1: Prepare the Application

• Form: Complete Form D-1, available on the IPO-Pakistan website, in triplicate.
• Details to Include:

• Specify the class of the design and the article(s) to which it is applied, as per the classification in the Third Schedule of the Rules.
• For a set of articles, list the name of each article.
• If required by the Registrar, state the purpose for which the article is used (e.g., packaging, furniture).
  • Representation of the Design(Rule 10):
• Submit a clear representation of the design as applied to the finished article, which can include drawings, photographs, three-dimensional modeling, or other visual formats.
• Requirements for representations:
  • Use A4 size paper (29.7 cm x 21 cm).
  • Drawings must be in permanent ink; photographs must be firmly pasted.
  • Exclude descriptive matter except for dimension designations.
  • Sign the representation by the applicant or authorized agent.
  • For designs with movable parts, show all parts in the same relative position.
  • For two-dimensional repeating surface patterns, include a complete pattern and a sufficient portion of the repeat (not less than A4 size), with a statement indicating it is a repeating pattern.
  • Include a statement of noveltyat the bottom, describing the new features of the design.
• Separate Applications:

• If the design applies to multiple classes of articles, submit a separate Form D-1 for each class, treated as distinct applications.

Step 2: Pay the Prescribed Fee

Fees for design registration, as of April 21, 2025, are outlined on the IPO-Pakistan website:

Payment Methods (Rule 3):

• Pay via pay order, postal order, demand draft, or electronic means, payable to the Director General, IPO-Pakistan.
  • Note: A separate application and fee are required for each class of articles.

Step 3: Submit the Application

• Submission Methods(Rule 7):

• File at the Patent Office by hand, prepaid post, courier service, or electronic transmission (e.g., email, tele-fax).
• For electronic submissions, submit the original document within 15 days.
  • Submission Locations:
• Head Office: Patent Office, Plot # ST 1 & 2, New Broadcasting House (Ground Floor), Behind KDA Civic Center, Block-14, Gulshan-e-Iqbal, Karachi-75300, Pakistan.
• Regional Office: Basement of Lahore Chamber of Commerce Building, 11-Shahrah-e-Aiwan-e-Sanat-o-Tijarat, Lahore.
  • Required Documents:
• Form D-1 (in triplicate).
• Prescribed fee.
• Representation of the design.
• For Convention applications, a declaration of the first filing date and country, plus a certified copy of the Convention application within three months.
• If documents are in a language other than English, a verified translation within two months of the Registrar’s direction.
  • Address for Service(Rule 32):
• Provide a Pakistan-based address for service. Without it, the Registrar may delay proceedings until furnished.
  • Filing Date(Rule 8):
• The filing date is when the Patent Office receives Form D-1, the fee, and the representation. Incomplete submissions are treated as not filed.

Step 4: Examination and Objection

• Examination(Rule 13):

• The Registrar refers the application to an Examiner for a scrutiny report within two months, assessing novelty, originality, and compliance.
  • Objections:
• If no objections are found, the Registrar issues an acceptance letter within one month, directing the applicant to submit Form D-5with the prescribed fee within 30 days to obtain the registration certificate.
• If objections arise (e.g., lack of novelty or public morality concerns), the applicant must address them within two months, extendable up to six months using Form D-4(fees: PKR 2,000 or 3,000).
  • Hearing:
• If objections persist, request a hearing using Form D-14within two months. The Registrar provides at least 10 days’ notice and may require a design specimen.
• After the hearing (or if the applicant does not attend), the Registrar decides to register or refuse the design, communicating the decision in writing within one month of receiving Form D-6and the fee.

Step 5: Registration and Certificate

• Registration(Section 5):

• Upon approval, the design is registered, and its details are entered in the Register of Designs, which is publicly accessible (Section 13).
• The registration date is the application date or another date set by the Registrar.
  • Certificate:
• The Registrar issues a certificate of registration, serving as prima facie evidence of ownership.
  • Duration and Renewal(Section 7):
• Initial registration lasts 10 years from the registration date.
• Extend for two additional 10-year periods (up to 30 years total) by submitting Form D-5and fees (PKR 4,000 for the second period, PKR 6,000 for the third) before expiration, with a six-month grace period for late payment with an additional fee.

Additional Considerations

• Convention Applications(Sections 11-12; Rule 12):

• For designs filed in a Convention country, apply within six months of the first application to claim priority. Submit:
  • Form D-1 with a declaration of the first filing date and country.
  • A certified copy of the Convention application within three months.
  • Verified English translations for non-English documents within two months.
• Grounds for Refusal or Cancellation(Sections 3, 10):

• Refusal may occur if the design lacks novelty, is contrary to public order or morality, or applies to excluded articles (e.g., sculptures, trademarks).
• Registration can be cancelled if it fails substantive requirements or the proprietor lacks rights.
  • Appeals(Section 5(6)):
• Registrar decisions can be appealed to the High Court.
  • Infringement Protection(Sections 8-9):
• Registered proprietors can sue for damages or injunctions against infringement. Innocent infringers unaware of registration are exempt from damages unless the design is marked as registered.
  • Public Inspection(Section 13):
• The Register of Designs is open for inspection upon payment of a fee, allowing verification of registered designs.

Practical Tips

• Conduct a Prior Art Search: Before applying, check existing designs to ensure novelty, as prior publication or registration can lead to refusal.
• High-Quality Representations: Use clear, professional drawings or photographs to avoid objections during examination.
• Meet Deadlines: Respond to objections within two months and submit Form D-5 within 30 days of acceptance to prevent abandonment.
• Verify Updates: Regularly check the IPO-Pakistan website for the latest forms, fees, or procedural changes.
• Keep Records: Retain copies of all submissions, payment receipts, and correspondence with the Patent Office.

Why Register Your Design?

Registering a design in Pakistan offers significant benefits:

• Exclusive Rights: Prevent others from making, importing, selling, or using articles with your design without permission for up to 30 years.
• Legal Evidence: The registration certificate strengthens your position in infringement disputes.
• Market Advantage: A registered design enhances brand uniqueness, appealing to consumers and investors in industries like fashion, electronics, or home goods.
• International Protection: Convention applications allow priority claims, facilitating protection in multiple countries.
  
  

Conclusion:

Registering a design in Pakistan is a strategic step to protect your creative and commercial interests. By adhering to the Registered Designs Ordinance, 2000, and Registered Designs Rules, 2023, and preparing a thorough application with Form D-1, clear representations, and the correct fees, you can secure your design’s exclusivity. With fees starting at PKR 3,000, the process is accessible for individuals and businesses alike.

Contact us at Baakza & Bansari to start the registration process today to safeguard your design and strengthen your market position.