Intellectual Property (‘IP’) is an intangible asset which refers to creations of the mind, such as Patent (such as inventions); Copyright (includes literary and artistic works); Designs; and Trademark (symbols, names and images which are generally used in course of trade/business). In Pakistan, the regulatory authority of IP is the Intellectual Property Organization of Pakistan (‘IPO’).
For the purposes of this article, we will be focusing on Trademark registration process and infringement action(s).
What is a trademark?
A trademark is a sign or symbol used in the course of trade to indicate the origin of goods or services. It is an integral part of the consumer society, enabling customers to distinguish one product from another and to choose between competing brands based on their reputation/goodwill.
Registration of a trademark in Pakistan:
For the purposes of registration of a trademark, the criteria for protection are that the sign/symbol must be capable of graphic representation and capable of distinguishing the goods or services of one undertaking from those of another.
Once a trademark falls in the above criteria, the proprietor/owner of the trademark can make an application before the Trademark Registry seeking registration of the mark in any of the 45 classes, which are defined based on the type/nature of goods and services.
Upon receiving the trademark registration application, the Registrar of trademarks will examine the said application and upon satisfaction that the proposed trademark is not similar/identical to any previously registered trademark, it will then publish the proposed trademark in the trademark gazette, to invite any opposition(s) against the proposed trademark from the public at large. Provided, no opposition(s) are fiiled within the stipulated time frame, the trademark registrar will issue a Certificate of Registration of Trademark to the applicant.
How can a trademark registration process be challenged?
Under Section 28 of the Trade Mark Ordinance, 2001 (‘Ordinance’), the Registrar has a duty to advertise the trademark upon the application of registration so that opposition applications can be invited.
Once the trademark application is published by the Registrar in the trademark gazette, any person who’s right could be prejudiced from the registration of trademark can file an “Opposition Application” within two (02) months from the date of, based on the grounds of opposition laid down in Section 29 of the Ordinance, thereby opposing the registration of the published trademark application.
Once the oppositions and rejoinders have been filed before the Registrar with respect to the trademark application, the Registrar has the discretion to grant or refuse the trademark registration based on the evidence before him.
Infringement of a registered trademark:
The aspect of infringement of a trademark is governed by Section 40 of the Ordinance which provides that a “Registered Trademark” would be construed as infringed if any person and/or entity uses a mark; (i) which is identical, deceptively similar or closely connected to the Registered Trademark; and (ii) in relation to the good(s) or service(s) which are identical, deceptively similar or closely connected to the good(s) or service(s) for which the Registered Trademark is registered. (Case law examples are illustrated at the end of this article)
However, it may be noted that where the Registered Trademark is used by a person in good faith to indicate quality, purpose, geographical source or other features; or is used to ‘comparative advertising’, such instances will not amount to an infringement of a trademark.
How can an action for trademark infringement be challenged?
Once the proprietor/owner of a trademark is satisfied that the case of infringement falls within the ambit of Section 40 of the Ordinance, a Suit/Case for Infringement of Trademark may then be filed against the person(s) infringing the trademark before the competent court.
Initially, as per Section 117 of the Ordinance, the court of competent jurisdiction to try and adjudicate a suit for infringement was the District Court. However, subsequent to the promulgation of the Intellectual Property Organization Act, 2012 (‘Act’), Section 18 whereof, provides that all suits and other civil proceeding regarding infringement of intellectual property laws shall be instituted, tried and adjudicated in the Intellectual Property Tribunal (‘IPT’).
It is pertinent to highlight that the purpose of forming the IPT was to create a specialist court that would deal with all matters relating to Intellectual Property Laws which shall include matter(s) relating to “Intellectual property rights”.
The IPT is now the court of competent jurisdiction for entertaining civil proceeding(s) which are based on an allegation of infringement of intellectual property laws, hence a suit entirely based on an allegation of infringement of Intellectual Property Laws, would be filed before the IPT and not the before the District Court or the High Court. In addition, the registered trademark can also be challenged via revocation before the District Court or High Court under Section 80 of the Ordinance by the aggrieved party who hold the Registered Trademark in other jurisdiction or claims use of the same via ‘Prior Use’
CASE LAW EXAMPLES OF TRADEMARK INFRINGEMENT:
Identical trademark in relation to identical goods or services: Using identical trademarks for the goods or services of the same class are prohibited and can be challenged. In the case Wrangler Apparel Corporation v Axfor Garments (2008 CLD 70) Axfor Garments was restrained from using the mark “Wrangler” and ‘W’ on their products as the same was infringing of the registered trademark of Wrangler Apparel Corporation.
Different class but confusion regarding its source: A registered trademark can be challenged even if it is related to the goods of different class but does not completely distinguish its source. In the case Seven Up Company v Kohinoor Thread Ball Faculty and 3 others (PLD 1990 SC 313) the trademarks were related to different categories i.e., 7 up beverages and 7 up Supari but the Hon’ble Supreme Court observed that “the consumers served are largely of the same category” which can lead to confusion regarding their undertakings.
The Hon’ble Supreme Court in the case Shezan Services (Private) Limited v Shezan Bakers and Confectioners (Private Limited) (2022 SCMR 1363) clarified that the mere fact that a proprietor of a trademark has not registered its trademark in a particular class does not entitle the other person to use that mark to register in that class.
Deception of the public: If the trademark deceives the public in relation to its category, quality or manufacturer, it is considered as infringement of the trademark. In the case M. Sikander Sultan v. Masih Ahmed Shaikh (2003 CLD 26) the court restrained the Defendant from using the trademark ‘AALI SHAN’ as the same was identical to the Plaintiff’s trademark ‘SHAN’ on the ground that the get-up, design and colour scheme of both trademarks were identical which could cause confusion in market to the consumers in general and amounts to infringement of Plaintiff’s registered trademark. It was also held that the purpose of registration is not only for the identification but also for the protection of public at large from being deceived by the fake trademarks and for the manufacturers to enjoy the right of marketing.
In the case Shan’s Cosmetics and Chemicals v Registrar of Trade Marks (2022 CLD 176) the trademark “Sweet Touch” was held to be deceiving customers in relation to the long used trademark “Soft Touch”.
Using trademark of foreign entities: The trademark law in Pakistan also protects the foreign entities from infringement. In Mars Incorporated v Pakistan Mineral Water Bottling Plant (Pvt.) Ltd. (2001 MLD 39) the defendant was retrained from using the international company’s mark “MARS” although the defendant’s trademark was registered in the Trademark Registry.
Conclusion:
Therefore, in view of the above, it is highly advisable that an intellectual property (including the trademarks) should be registered in Pakistan, and if anyone has unlawfully registered some trademark in bad faith and/or are using someone’s registered trademark without the proprietor’s consent, the aggrieved person has various legal remedies available in law including injunction, damages and/or revocation and these remedies initiated and enforced through the court of law.
