Trade mark practice grounded in legislation and enforcement
Since its establishment in 1985, Khursheed Khan & Associates has advised international rights holders and Pakistani businesses on protecting their brands. The practice combines filing and prosecution with contested proceedings, portfolio management and commercial advice.
Founding partner Justice (Retd.) Zulfiqar Ahmad Khan was principal author of the Trade Marks Ordinance, 2001. That legislative experience, together with the firm’s enforcement work, informs its approach to assessing marks, preparing applications and addressing disputes.
The firm’s experience includes major FMCG businesses, Fortune 500 companies and local enterprises. Advice is tailored to the mark, its market and the client’s objectives, whether the instruction concerns a new product name or an established international portfolio.
Protection across the life of a brand
Brand selection and clearance
We assess proposed names, logos and labels against the intended goods, services and markets. The review considers potential registrability concerns and relevant earlier rights within the agreed search scope. Provide candidate marks, planned uses and launch dates before committing to packaging or promotion.
Filing strategy and specifications
We help define the applicant, mark representation and goods or services for protection. The filing plan should reflect the business’s present activities and genuine expansion plans. A clear specification and consistent ownership record provide a stronger foundation for later portfolio work.
Pakistan applications and international coordination
We prepare and manage Pakistan filing instructions and assist with local issues arising from applicable international filing routes. Overseas portfolios are coordinated with appropriate advisers. The route is assessed against the applicant’s circumstances, filing history and target markets.
Examination responses and hearings
We analyse objections and cited material, prepare responses and supporting evidence, and represent applicants at hearings. The strategy addresses the actual objection rather than relying on a standard response. Send the complete report, filed application and all relevant dates promptly.
Opposition proceedings
We assess whether to oppose a published application and defend applications facing opposition. Work includes the grounds, pleadings, evidence and hearing preparation. Publication details, earlier rights and records of use and reputation are important to the initial assessment.
Validity, revocation and rectification disputes
We advise on challenges to existing registrations and corrections to the register. The remedy, grounds, standing and appropriate forum require individual review. Where a challenge overlaps with infringement proceedings, the strategy should account for both matters.
Renewals, assignments and recordals
We manage instructed renewal work and assist with ownership and other register updates. Corporate changes, transactions and licensing arrangements should be supported by appropriate documents. Responsibility for deadlines and any missing records is agreed with the client.
Licensing, franchising and coexistence
We advise on arrangements governing brand use by others. Terms may address territory, goods, quality control, presentation, enforcement and termination. Any proposed coexistence arrangement should be assessed against the client’s actual market needs and future plans.
Watching and portfolio reviews
Within an agreed scope, we review publications and reported market concerns, assess potentially conflicting activity and identify action requiring instructions. Periodic reviews can also reveal protection gaps, obsolete rights and inconsistencies in ownership or use.
Infringement and passing-off disputes
We act on reported unauthorised use and defend claims involving marks and brand presentation. Preparation brings together the rights relied upon, commercial history and evidence of the challenged conduct. Urgent relief, proceedings and settlement options are assessed against the facts and applicable procedure.
From a new name to a managed portfolio
The trade mark practice supports the firm’s wider brand-name creation work. Businesses launching new products or services can begin with naming and selection, then move to appropriate clearance and protection planning.
For established businesses, the focus may be brand families, product extensions, revised packaging or expansion into additional territories. Each change should be assessed against the existing portfolio rather than assumed to be covered by an earlier filing.
The firm’s Create TM-related naming work and portfolio operations can be included within a defined mandate. Availability, ownership and intended use are checked for each proposed name or transaction.
Preparing contested matters around evidence
A contested trade mark matter requires more than a comparison of names. We examine the relevant marks, goods or services, asserted rights, commercial setting and the evidence supporting each party’s position.
Depending on the issue, the record may include dated sales materials, advertising, invoices, distribution information, product samples and evidence of reputation. Records should identify their source, territory and period so that their relevance can be assessed.
Claims concerning reputation or well-known status require an appropriate evidential foundation. The strategy distinguishes assertions from material that can be placed before the competent forum.
Support for international counsel and rights holders
We provide Pakistan advice and representation for overseas rights holders and instructing firms. Instructions can cover individual filings, local examination issues, disputes or an agreed portfolio mandate.
We coordinate filing records, priority information, formal documents and reporting requirements with the instructing team. Where other jurisdictions are involved, local requirements and responsibilities should be identified clearly at the outset.
From instruction to continuing protection
- Identify the mark, owner, goods or services, markets and commercial objective.
- Agree any search or clearance work and review the filing history.
- Prepare the application or define the response to an existing issue.
- Address examination, publication or contested proceedings as required.
- Record the outcome and manage instructed renewals and ownership updates.
- Review the portfolio as the brand develops and respond to identified threats.
Information to prepare
- A clear representation of the mark and any variants
- Applicant or owner’s full legal particulars
- Goods, services, intended markets and launch plans
- Earlier filings, registrations and relevant priority details
- Ownership, assignment and licensing documents
- Evidence of use and reputation where relevant
- Journal publication, examination report, notice or challenged registration
- Known response deadlines and previous correspondence
Frequently asked questions
Should we obtain clearance before launching?
An early review helps identify potential conflicts and protection questions before substantial expenditure. The search scope and its limitations should be understood; no search guarantees freedom from challenge.
Can an overseas owner instruct the firm?
Yes. We assist international rights holders and instructing counsel with Pakistan applications, portfolio work and disputes within an agreed mandate.
What should we send if an opposition deadline is approaching?
Send the publication details, relevant marks and rights, available evidence and the exact dates immediately so that the position and next steps can be assessed.
Does changing packaging require a fresh review?
It may. Changes to words, logos, presentation or product coverage should be checked against the existing rights and business plans.
Can you create a name as well as protect it?
Yes. Naming and selection work can be scoped alongside clearance and trade mark advice. Any portfolio candidate requires its own availability and ownership review.
Can the firm handle litigation after a registration dispute?
Yes. The firm’s litigation practice can assess enforcement and appellate work, subject to the appropriate forum, legal requirements and instructions.