The Sindh High Court has refused to grant interim injunctive relief to Aldo and has allowed a local company to sell shoes under the brand The Aldo Shoes (written in a stylised manner).
The court order related to two interlocutory applications:
- Aldo sought the court's intervention to prevent the defendant from selling shoes under the name and brand The Aldo Shoes; and
- The defendant sought recall of the interim order passed by the court regarding Aldo's application.
Extensive information was placed before the court to highlight the historical and extensive use of the name and trademark ALDO and to explain Aldo's franchise system as it exists in various countries.
However, Aldo could not illustrate direct sales of its products in Pakistan since it has no stores there as yet. Reliance, on the other hand, was placed on four applications that Aldo owned in Pakistan for the trademark ALDO in Classes 14 (fashion accessories), 18 (bags), 25 (footwear) and 35 (retail services).
Three applications relating to Classes 14, 18 and 35 have now been registered. However, they had not been registered at the time of filing the suit. Aldo's application in Class 25 in Pakistan has been opposed by the defendant. Further, the defendant's application for the mark THE ALDO SHOES (in stylised script) in Class 25 in Pakistan has been opposed by Aldo. Neither opposition has yet been decided by the Trademarks Registry.
The Sindh High Court order provided in-depth analysis of the infringement provisions under local trademark law and a comparative analysis of the corresponding provisions under UK and Singapore law. While relying on the aforementioned discussion, the court gave due weight to the absence of direct sales of Aldo shoes in Pakistan and to the different points of sale of the goods concerned. In particular, the court observed that:
"the plaintiffs' goods are sold in 'Aldo' stores (of which there are none in Pakistan) or over the Internet whereas the defendant's shoes are only sold at its own store. Thus, they do not reach the market through the same trade channels."
The court refused to grant interim injunctive relief to Aldo. Instead, it was inclined to await the outcome of the oppositions pending at the Trademarks Registry. The court directed the Trademarks Registry to decide these oppositions within four months. In the event that Aldo's application (filed in Class 25) is allowed, it will be allowed to file another application seeking interim relief against the defendant on the basis of its Class 25 registration for the trademark ALDO.
For further information on this topic please contact Sana Shaikh at Vellani & Vellani by telephone (+92 21 3580 1000) or email ([email protected]).
This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.
