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’).
This article focuses on the trademark registration process and infringement actions.
A trademark is a symbol used in trade to indicate the origin of goods or services. To register a trademark in Pakistan, it must be capable of graphic representation and capable of distinguishing one undertaking from another. The applicant can apply for registration in any of the 45 classes based on the type of goods or services.
For the purposes of registration of a trademark, the criteria is 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 through prescribed Form TM-1. Upon receiving the trademark registration application, the Registrar of trademarks will examine the 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 filed within the stipulated time frame, the trademark registrar will then issue a Certificate of Registration of Trademark to the applicant.
How can a trademark registration process be challenged?
According to Section 28 of the Trade Mark Ordinance, 2001, the Registrar must advertise the trademark after receiving the registration application, allowing others to oppose it. If someone believes their rights will be affected by the registration, they can file an “Opposition Application” within two months. The grounds for opposition are specified in Section 29 of the Ordinance. After the oppositions and rejoinders are filed, the Registrar decides whether to grant or refuse the trademark registration based on the evidence presented.
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.
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?
When the owner of a trademark believes that their rights have been infringed under Section 40 of the Ordinance, they can file a lawsuit for trademark infringement against the infringing party in the appropriate court. Initially, the District Court had jurisdiction over such cases according to Section 117 of the Ordinance. However, after the enactment of the Intellectual Property Organization Act, 2012, all infringement cases related to intellectual property laws, including trademark infringement, are now heard and decided by the Intellectual Property Tribunal (IPT). The IPT was established to specialise in intellectual property laws and handle disputes related to intellectual property rights. Therefore, civil proceedings solely based on allegations of infringement of intellectual property laws should be filed before the IPT, not before the District Court or the High Court. Additionally, a registered trademark can also be challenged for revocation before the District Court or High Court under Section 80 of the Ordinance by an aggrieved party holding the same trademark in another jurisdiction or claiming 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 landmark case of Seven Up Company v Kohinoor Thread Ball (PLD 1990 SC 313) the trademarks were related to different categories i.e., 7-up beverages and 7-up Supari, but the Supreme Court of Pakistan held that the consumers served are largely of the “same category” which can lead to confusion regarding their undertakings. Similarly, the Supreme Court of Pakistan in the case Shezan Services (Private) Limited v Shezan Bakers and Confectioners (2022 SCMR 1363) further held 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 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.
Hence, it is strongly recommended to register intellectual property in Pakistan. If someone unlawfully registers a trademark in bad faith or uses someone else’s registered trademark without permission, the affected person has several legal options to seek redress. These options include obtaining an injunction to stop the unauthorized use, seeking damages for the infringement, and potentially revoking the unlawfully registered trademark. These remedies can be pursued through the legal system to ensure proper enforcement of rights.
