Appellant’s Registered Design Dissimilar from Alleged Prior Art – Order of Single Judge Reversed [No. 01/2018]
Appellant was the registered proprietor of a pen design under
No.12247-D dated May 9, 2005 which was used and exported from Pakistan since
then. Respondent sought registration of its own design bearing No.13314-D on
March 14, 2007 and around October 2008, pens manufactured by Respondent started
showing up in the local markets; while the exterior of Respondent’s pen
resembled with its registered design but when the cap was removed, it had
identical design elements comprising the features of parallel lines specifically
protected by Appellant vide its design registration No. 12247-D.
Customs - Detention of Infringing Goods - Chapter on IP Rights Enforcement - Customs Rules 2001 [No. 05/2017]
Earlier this year the Government of Pakistan with a view to
further strengthen border measures amended the Customs Rules, 2001 to
incorporate a new Chapter XXVIII titled Enforcement of Intellectual Property
Rights (the Chapter). The Chapter provides a mechanism for action against
import of infringing goods which are brought into Pakistan in violation of the
existing IP laws viz. the Copyright Ordinance 1962, the Trade Marks Ordinance
2001, the Patents Ordinance 2000, Registered Designs Ordinance 2000 and
Registered Layout-Designs of Integrated Circuits Ordinance 2000 as well as in
violation of Section 15 of the Customs Act 1969.
Patents - Controller’s Power to extend time is restricted to situations [No. 04/2017]
Miscellaneous appeals were filed against a single order passed by the Controller of Patents whereby several patent applications filed by 32 entities were opposed by the Appellants on the prescribed Form P-7 but without filing statement as required under Rule 18(1)(c) of the Patents Rules, 2003 (“the Rules”). All Appellants were represented by the same patent attorneys firm before the Controller of Patents and in the High Court.
Brief facts of the case are that the Respondents filed
several patent applications for grant of patents under Section 13 of the Patents
Ordinance, 2000 (“the Ordinance”). All applications were examined, accepted and
were advertised in Part-V of the Gazette of Pakistan for inviting opposition
under Section 23, which reads as:
Services of same description [No. 03/2017]
This case is one of the very few cases decided by the courts
in relation to service marks. The Plaintiff filed a suit for permanent
injunction contending that the Defendant’s trade mark ‘Amaan’ is in violation of
the Plaintiff’s registered trade mark ‘Amaan Plan’ in respect of similar
The brief facts of the Plaintiff’s case are that the Plaintiff is an insurance company and in order to distinguish its high quality insurance services from other insurance companies it adopted and coined number of distinctive service marks including the mark ‘Amaan Plan’, which is registered under the Trade Marks Law in Pakistan and that by virtue of prior adoption and continuous use, it is the bona fide owner of the mark, which by virtue of advertisement flyers, telemarketing, brochures on internet, electronic media and print media throughout Pakistan, has become popular amongst the general public, customers, companies and financial institutions. That after it came to its knowledge that the Defendant has started insurance policies under the Plaintiff’s registered trade mark ‘Amaan Plan’, the Plaintiff sent a formal letter/notice to the Defendant which was replied and subsequently the Plaintiff informed the Defendant about its trade mark registration. The Defendant did not stop infringement of the Plaintiff’s registered mark so it issued a legal notice.
Copyright – Exclusive Right of Publication – Not more than Ten Years [No. 02/2017]
Appeal was filed against the judgment and decree passed by
the learned Additional District Judge, Lahore, whereby the plaint of suit for
declaration and permanent injunction under the Copyright Ordinance, 1962
(“Ordinance”) was rejected under Order VII Rule 11 of the Civil Procedure Code
(“CPC”), as barred by law under Section 14(1) of the Ordinance.
The Respondent, writer of the book “Mohabbatain Jub Shumar Karna” made an agreement on January 8, 1993 with the Appellant transferring all legal rights in relation to publication and publicity of the said book in his favour with no limit to the period. The publisher (Appellant) claimed that he invested huge amount, bore all necessary expenses and paid the agreed royalty/compensation to the Respondent and since the Appellant had exclusive and absolute right for publication of the said book for indefinite period, the Respondent could not publish the said book. After almost 5 years of execution of the agreement between the parties, on June 6, 1998, the Appellant filed a suit against the Respondent and obtained a restraining order against her. During the pendency of the said proceeding the Respondent filed an application under Order VII Rule 11 CPC read with Section 14(1) of the Ordinance stating that the suit is barred under the Ordinance. Order VII of the CPC deals with rejection of a plaint and Rule 11 reads as:
Registered Trade Mark with Disclaimer – Absence of Exclusive Right in the Word – No Infringement [No. 01/2017]
Appellant challenged the order of the Additional District Judge, Sheikhupura, dismissing its application for grant of temporary injunction against use of the word “MAKKHAN” (Urdu word for ‘butter’) by Respondent in its trade mark. Appellant submitted that the impugned order was bad in law as the learned Additional District Judge did not give due credence to the registration of the Appellant’s trade mark. Respondent submitted that the said order was in accordance with law as the Appellant had no exclusive right on the use of the word “MAKKHAN” as it has been registered with the condition, “Registration of this trade mark shall give no right to the exclusive use of MAKKHAN SWEET AND BAKERS and other descriptive matter appearing on the label.” Respondent contended that the Appellant voluntarily disclaimed the word “MAKKHAN” at the time of obtaining registration of its trade mark and Appellant and Respondent were real brothers who prior to undertaking separate businesses were working together under the same name and style and using the same trade mark “MAKKHAN”. The Respondent also submitted that during the term of their joint business Appellant was responsible for manning the sales counter and outdoor activities relating to the business whereas Respondent was looking after the manufacturing aspects of the joint business and that the Appellant got the trademark registered in his name illegally.
Deceptive Marketing Practice [No. 06/2016]
The Complainant was producing urea, phosphate and allied products and selling under the brand name “Tara”. The Respondent belonged to Tara Group engaged in the manufacturing and selling of insecticides, herbicides, fungicides and was also operating one-stop franchise network under the name “Tara Zarai Markaz”. The Complainant alleged before the Competition Commission of Pakistan (the Commission) that its brand ‘Tara’ was being used fraudulently and illegally by the Respondent, to market its products and business. It further alleged that the Respondent had resorted to dissemination of misleading information which was capable of harming business interests of the Complainant so it attracted Section 10 of the Competition Act 2010 (the Act).
Patents – Suit for perpetual injunctive relief after acceptance of complete [No. 05/2016]
Plaintiff, after acceptance of its complete
specification for patent, sought interim injunctive relief under s.22 of the
Patents Ordinance, 2000 (the Ordinance) to restrain defendant from acting in any
manner that would infringe the patent yet to be granted.
On being granted an ad-interim order on plaintiff’s application for interim injunctive relief, defendant filed two applications one under Order VII Rule 11 of the Civil Procedures Code for rejection of plaint and the other for recalling the ad-interim order. The learned Judge of the High Court of Sindh after hearing the counsels of the respective parties in respect of Civil Miscellaneous Applications observed that a preliminary question has arisen with regards to the proper interpretation and application of s.22 of the Ordinance since its amendment in 2002 as no prior case law is available on the same. Since, the nature of interpretation of this section in fact is in the nature of a jurisdictional objection, the learned Judge instead of hearing the counsels on the merits of applications only heard them on considering the meaning and proper application of s.22 (reproduced hereunder).
Copyright – Dichotomy between Idea and Expression [No. 04/2016]
The question before the court was whether the plaintiff had a work which can be protected under the Copyright Ordinance 1962 or was it only an un-protectable idea. The plaintiff was engaged in the business of producing original audio-visual contents in the name and style Dream Station Production and had produced a number of popular songs and music videos. While the defendant No. 1 was the Pakistani arm of the well known US beverages company – Coca-Cola Company – and defendant No.2 was a director of the said local entity, all the defendants in one way or another were involved in the production and airing of a program called “Coke Studio” which according to its Wikipedia entry, “is a Pakistani music television series, which features live studio-recorded music performances by various artists”, produced by Coca-Cola Company and Frequency Media, defendant No.3. The program had gone through five seasons and the dispute related to the sixth, referred to as “Coke Studio Season 6” and the plaintiff asserted that the defendants by making and airing Season 6 had infringed his copyright in a work entitled “Dream Music”.
Date of Filing of Suit – Mark Not Registered – Different Businesses [No. 03/2016]
The plaintiff was seeking interim injunctive relief for alleged infringement of its trade mark “Rupali” by the defendants. The defendants riposte an application under s.80 of the Trade Marks Ordinance 2001 for invalidation of the plaintiff’s trade mark in Classes 16, 36 and 37. The counsel for the plaintiff submitted that the plaintiff is a flagship company of the well known Rupali Group which comprises of companies in the business of manufacturing, exporting, indenting, banking and trade financing. The plaintiff had applied for registration of its mark in 42 classes, which have either been registered or accepted for registration.
License Expired – Use of Trade Mark by Licensee deemed Infringement [No. 02/2016]
The respondent filed a suit for permanent injunction before District Judge, Gujrat, to restrain the plaintiff from manufacturing and selling electric fans under their registered trade mark “YOUNAS FAN” on the basis that the license agreement executed between the parties for the period of three years had expired and the appellant continued to illegally and unlawfully manufacture and sell electric fans under the said trade mark along with the appellant own trade marks “AL-KHAIR FANS and “AL-ARIF FANS” and thus causing confusion and deception in the market by misleading the consumers.
Shape of a pointer (writing instrument) deemed Infringement of registered Design [No. 01/2016]
The plaintiffs filed an application praying for grant of
temporary injunction pending the decision of main suit to restrain the
defendants from purchasing, selling, importing, marketing, manufacturing,
trading and displaying imitated/infringed product by the name and style of
“SCOT” which was claimed to be deceptively similar to the product of the
plaintiffs under a registered Design.
Allowing the application of the plaintiffs, the High Court held that it is an admitted position that plaintiffs’ product was duly registered with the Registrar of Designs under the Registered Designs Ordinance 2000, the plaintiffs are lawful proprietors of the Design, they are using the same since its registration at national and international levels, the plaintiffs enjoy full protection of their registered design and the defendants are infringing the registered design of the plaintiffs.
Trade Mark “LUNIMARC” Deemed Infringement of “LUMINARC” [No. 03/2015]
The plaintiff, a French company was the owner of the trade mark “LUMINARC” with an Archer Device and letters ARC which was in use in France since 1948. The plaintiff applied for trademark registration in Pakistan which were pending and also held copyright registration of the artistic representation of its trademark under the Copyright Ordinance, 1962. The plaintiff claimed that it has been marketing its products by extensive sale promotions and advertisements through multimedia in numerous countries including in Pakistan. It further claimed that its products have substantial reputation and goodwill throughout the world including in Pakistan, are well known and has a popular household name in relation to glassware, utensils and allied products. The case of the plaintiff was that the defendants by using the trade mark “LUNIMARC” with an Archer Device in reverse position, were committing infringement of its well-known trade mark, as well as infringement of its copyright in the artistic work, causing deception and confusion to common consumers and also amounts to an act of unfair competition under the provisions of Section 67(f) and (g) of the Trade Marks Ordinance, 2001. The court held that the test of prima facie case has been achieved by the plaintiff, the peculiar embodiment of Section 86 of the Ordinance relating to Paris Convention is quite liberal when it comes to be gauged from the plaintiff’s point of view and accordingly confirmed the ex-parte injunctive order.
IP Tribunals Established in Pakistan [No. 02/2015]
Originally the Intellectual Property offices in Pakistan (The Patents Office, The Trade Marks Registry and The Copyright Office) were under the control of three different ministries. In order to bring all the Intellectual Property offices under one roof, in the year 2005 the Intellectual Property Organization of Pakistan (IPO-P) was established under the supervision of the Cabinet Division of the Prime Minister of Pakistan. One of the purposes of IPO-P is to provide for an institutional arrangement in the state set-up for taking up exclusively and comprehensively all subjects and matters relating to intellectual property rights in an integrated manner and for matters connected therewith or incidental thereto. In line with the said policy the Government enacted the Intellectual Property Organization of Pakistan Act, 2012 (the Act) which came into force with effect from 28th August, 2012, except for the provisions of Sections 15, 16, 17, 18 and 19 which were to come into force on such date as the Federal Government may, by notification in the official Gazette, appoint.
Trade Mark infringement when there is a registered Trade Mark – Absence of registration no infringement [No. 01/2015]
Respondent No.1 filed a suit before Additional District Judge IV, Quetta, with an application for grant of injunction restraining the Appellant from launching/bringing the product “FRUTTI” INSTANT JUICE POWDER and to restrain the customs authorities (Respondent No.2) from releasing the goods of the Respondent No.1. The Trial Court while allowing the application restrained the Appellant as prayed subject to furnishing surety of almost Rs.1 million before the Court by the Respondent No. 1 in accordance with Section 55 of the Trade Marks Ordinance 2001. The Appellant being aggrieved by the Trial Court’s Order preferred Appeal in the High Court. The High Court held that the act of infringement only takes place when there is a registered trade mark and in the absence thereof the act of infringement is no where. In the present case, the document having referred by the Respondent No.1 as registration certificate is merely acknowledgement receipt of application and the registration certificate of copyright having been produced as a certificate of registration of trade mark is not a certificate of registration of trade mark rather the Respondent No.1 by misquoting the documents and by misrepresenting them tried to mislead the Court, which shows mala fide on his part. Consequently, the High Court accepted the Appeal by setting aside the order passed by the Trial Court.
Export of Goods from Pakistan – Deemed Use in Pakistan – Sale of Products through Distributor – Deemed Use of the Mark by the Owner – Distributor Not Entitled for Registration of Trademark in its Name [No. 02/2014]
Appellant claimed to be the creator, originator, owner and user of the trademark “P” in stylized form which it claimed to have used since the inception of its business for more than two decades. It further claimed to use its “P” logo with two elephant device, which it designed and printed in May 2010, for export of its products to Afghanistan and Central Asian Republics by appointing Respondent No.3 as its distributor. The distributor entered into a contract with an Afghan company and exported Appellant’s cement to it. Subsequently Appellant’s relationship with Respondent No.3 terminated and thereafter Respondent No.3 contacted Appellant’s competitor, Respondent No.1, and started exporting cement manufactured by Respondent No.1 under the same trademark as that of the Appellant’s (replacing the letter “P” with “Ps”) to the same Afghan entity.
Trade Dress – Colour, A Distinctive Feature of a Mark [No. 01/2014]
In our Hello (Issue 03/2011) we reported the decision of a Single Bench of the Sindh High Court in which it granted injunction to J & P Coats Limited and another (the Respondents) against Golden Thread Industries (the Appellant). It was held that the trade mark label device of the Appellant when compared with that of the Respondents’ seems to have been copied, imitated and adopted similar to the Respondents’ colour scheme, design, shade, lettering, get-up, positioning and packing appearance. Against the decision of the Single Bench the Appellant preferred an appeal before a Divisional Bench of the Sindh High Court, which confirmed the findings of the Single Bench.
Trademarks - Registrar of Trade Marks not to Revise Deputy Registrar's Decision Subsequent to Opposition Proceeding [No. 02/2012]
A belated opposition was filed by a third party along with a request for extension of time against registration of the trade mark E4 (label). The Registrar of Trade Marks after having disallowed the request for extension and treating the opposition as in-fructuous ordered the applicant's mark to proceed to registration but with disclaimer of "E4".
Copyright – Images Uploaded at the Website of FOTOLIA LLC - DMCA Notice Sent – Images Removed [No. 01/2012]
On behalf of Dollar Industries Pakistan ("Dollar"), a Pakistani partnership firm, a Notice of Copyright Infringement for uploading certain images was sent under Digital Millennium Copyright Act (DMCA) to the Copyright Agent of the website www.fotolia.com as authorized in § 512(c) of the U.S. Copyright Law.
Trademarks – Trade Dress Injunction Granted [No. 03/2011]
The Plaintiffs, J & P COATS LIMITED and another have been selling their products in packaging bearing a particular colour scheme, design, shade, appearance letterings and get-up together with the registered
Trademarks – Digital Trade Marks Journal [No. 02/2011]
On October 20, 2011 the Chairman Intellectual Property Organization of Pakistan (IPO-Pakistan) formally launched digital Trade Marks Journal.
Patents – Opposition Dismissed – Time Barred [No. 01/2011]
Applications for grant of patents were advertised upon acceptance in the Gazette of Pakistan Part V (Gazette) dated September 29, 2010 as required under Section 21.