Seema joined the firm in 1983, specializes in the area of Intellectual Property rights involving trademarks, copyright and domain names. Her vast experience includes handling of trademark/copyright oppositions, rectifications/cancellation actions, infringements, court actions, anti-counterfeiting, processing and prosecuting of trademark/copyright applications, trademark search, availability and registrability, IP contracts involving trademarks and copyrights, registered user agreements and matters relating to electronic commerce law in particular domain name registration and domain name conflict/ filing of domain name complaint with relevant authorities besides other emerging IP rights. She heads, maintains and is involved in enforcement of IP rights of various well-known international clients belonging to diverse business sectors such as pharmaceuticals, petroleum/oil, online shopping, computer programming, food, beverages, social media, entertainment, medical instruments, machinery, footwear, battery, hotels and motor vehicles. She has further been actively involved in litigation proceedings assisting senior counsel in the various courts of Pakistan up to the High Court. She also has experience in corporate law including mergers, acquisitions, taxation, contracts, joint ventures and litigation proceedings. Seema enrolled as an advocate of the High Court, member of Sindh Bar Council, Karachi Bar Association, High Court Bar Association, Income Tax Bar Association, Pakistan Industrial & Intellectual Property Rights Association (PIPRA), Pakistan Women Lawyers' Association (PWLA), International Trademarks Association (INTA) (based on firm’s membership), Asian Patents Attorneys Association (APAA), International Bar Association (IBA) and The Inter-Pacific Bar Association (IPBA). She participates in Intellectual Property/Law Conferences, workshops & seminars both locally and internationally and is active writer in International Law Office (ILO) online platform.
Many countries have adopted geographical indication (GI) laws to protect indigenous products, including handicrafts and agricultural, natural, horticultural and industrial products originating from a specific region. On 27 March 2020, after revisions and much deliberation, Parliament finally passed the Geographical Indications (Registration and Protection) Act 2020 in order to establish a system for the recognition, registration and protection of GI rights in Pakistan. This article sets out the act's salient features.
The Patents Ordinance 2000 is a consolidated amended law relating to the protection of inventions and patents in Pakistan. As a registered patent owner, a patentee can authorise or prevent third parties from using its patent or manufacturing a product or offering to sell a product or service that uses its patented invention, subject to certain limitations.
The Lahore High Court recently heard an appeal of the registrar of trademarks' decision to delete a mark on the grounds of non-use. The appellant had failed to provide sufficient evidence to prove its mark, whereas the respondent had filed extensive documentary evidence to show that it was a bona fide manufacturer and user of the relevant trademark.
The Intellectual Property Tribunal recently vacated an interim injunction granted in a case brought by Brands for Less LLC against another retailer concerning its use of the BRANDS 4 LESS mark. The tribunal found that Brands for Less had failed to make an adequate case for granting an interim injunction and stated that a well-known mark may be a good ground for registering IP rights in another territory, but not for injunctive relief, unless a balance of convenience can be established.
In order to integrate and upgrade Pakistan's IP infrastructure and improve its services, public awareness and IP enforcement, the Intellectual Property Office recently proposed draft amendments to the Patents Ordinance. The proposed amendments, which aim to align the ordinance with the Intellectual Property Organisation of Pakistan Act, standardise office practices and streamline procedures, have been published on the office's website for public comment but have yet to be finalised.
The Sindh High Court recently overturned a registrar of trademarks' decision following an appeal by Moonlite Trading and rejected MF Enterprises' application to register its infringing FASTER BLACK COBRA mark. The decision applied the concept of totality of impression and the average consumer test to ascertain whether the registration of the FASTER BLACK COBRA mark would infringe Moonlite Trading's COBRA mark.
The Patent Cooperation Treaty (PCT) provides the best option for obtaining an international patent. Pakistan plans to accede to the Madrid Protocol in 2019 and become a contracting member of the PCT in 2020. In this regard, the Intellectual Property Organisation of Pakistan is in the process of updating its IP laws, including the Patent Ordinance 2000, to incorporate the relevant PCT provisions.
In a recent case, the appellant challenged the Additional District Court's decision to dismiss a permanent injunction issued against the respondent for its adoption of a mark that was confusingly similar to that of the appellant. The decision reflects that unregistered trademark rights can be protected through a passing-off claim where it can be established that the trademark has gained distinctiveness as a result of its continuous use over time.
An appellant filed an appeal in the High Court challenging a district judge's decision dismissing an application for the grant of a temporary injunction against the respondent's use of a trademark. The appellant had registered a similar mark subject to a disclaimer regarding exclusivity. However, the court found that such a disclaimer limits the extent of the exclusive rights that a registration may provide a rights holder and dismissed the appeal.
IP enforcement agencies recently held a meeting at the Intellectual Property Organisation to discuss how to improve Pakistan's international IP image. At the meeting, certain proactive approaches were adopted, including improving coordination between different government organisations and providing timely IP reports to Pakistan's missions abroad. These measures will allow Pakistan to keep up to date with progress in the protection of IP rights and provide a basis for comparison with other international standards.
When deciding an appeal regarding infringement and passing off of the appellant's mark, the Sindh High Court applied the standard 'moron in a hurry', Lapp and classic trinity tests to determine the get-up and similarity of the marks in question. The high court decided in favour of the appellant and overruled the lower court's decision by disallowing registration of the defendant's competing mark.
Following consultation with stakeholders, the Intellectual Property Organisation of Pakistan recently published the Draft Geographical Indication Protection Bill 2016 on its website for discussion. As there are minimal provisions relating to geographical indication protection in existing IP legislation, there is a need for comprehensive legislation to provide improved protection and public awareness of geographical indication products in Pakistan.
The Intellectual Property Organisation recently announced that it has signed a memorandum of understanding with the Federal Board of Revenue for data sharing and further cooperation. The memorandum of understanding marks a major collaboration with the Federal Board of Review's IP rights enforcement agencies and aims to address the violation of IP rights and issues of piracy and counterfeiting in Pakistan.
A recent Supreme Court case found that adding a prefix to an existing trademark or the dominant feature of an existing trademark is not enough to prevent a trademark registration being refused. The court noted a growing tendency to misappropriate trademark rights by seeking protection under copyright law. The decision highlights the proactive approach that the Pakistan judiciary has adopted towards protecting IP rights in trademarks.
The federal government recently established IP tribunals in Punjab, Sindh and Islamabad Capital Territory to adjudicate on IP disputes under presiding officers selected from high court, district and session court judges or attorneys who qualify for appointment through their expert knowledge of IP law. The act also provides that in cases of a technical nature, tribunals may be assisted by IP rights experts.
The High Court of Sindh has issued a significant decision addressing company trademark applications that are filed in all classes of the Nice International Classification of Goods and Services. The case confirms that the classes of goods and services for which registration is sought must relate to the objects clause of the applicant's memorandum of association.
With the establishment of a Pakistani domain name registry and the introduction into the Trademarks Ordinance of provisions dealing with domain names, effective mechanisms for the registration and protection of domain names as trademarks are now firmly in place. Resolution procedures for domain name disputes also help to keep the unauthorised adoption of trademarks as domain names in check.
The Copyright Ordinance and corresponding Copyright Rules are in place to extend protection to various copyright works in Pakistan. Since its inception, the ordinance has been amended periodically to conform to international agreements and conventions, extend copyright protection to new technologies and provide better remedies for copyright infringement.
A high court decision has accorded protection to the well-known trademark LUMINARC under the Trademarks Ordinance and granted an injunction restraining use of the infringer's LUNIMARC mark. The case shows that with the introduction of new provisions extending protection to well-known trademarks, the judiciary has taken a more proactive role in protecting IP rights for trademarks.
As a signatory to both the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, Pakistan recognises the concept of a well-known trademark and is bound to extend protection to such marks. The Trademarks Ordinance 2001 contains several important provisions relating to well-known trademarks.
Pakistan is making ongoing efforts to revise and upgrade its IP legislation. The statutory powers are in place, but the problem of effective enforcement remains. However, the agencies concerned are now empowered to uphold IP rights and eliminate piracy and counterfeiting. This update considers the legislative basis for IP rights enforcement and the entities involved.