The Intellectual Property Tribunal recently vacated an interim injunction granted in a case brought by Brands for Less LLC against Brands 4 Less concerning the use of the mark BRANDS 4 LESS.

Facts

Brands for Less sells designer clothes at discounted prices under the trademark BRANDS FOR LESS and has applied to register said mark in Pakistan.

Brands for Less brought an action before the Intellectual Property Tribunal claiming that the defendant's BRANDS 4 LESS mark was deceptively similar to its mark for the same line of business. In the first instance, the plaintiff secured an interim injunction restraining the defendant from:

  • using, trading or selling products under the BRANDS 4 LESS mark;
  • selling its imitation bag devices; and
  • passing off products under said trademark.

Brands for Less argued that it was the rights holder of a well-known mark and was therefore entitled to injunctive relief under Section 86(3) of the Trademark Ordinance 2001, which requires no actual use or registration of a mark by rights holders in Pakistan. Further, Brands for Less based its argument on the dilution of its well-known trademark and the alleged damage suffered as a result.

The defendant company, which operates under the name Brands 4 Less and resells branded and designer clothing, had applied for trademark registration of the BRANDS 4 LESS mark in Pakistan.

Brands 4 Less challenged the injunction on the following grounds:

  • Brands for Less had no cause for an injunction, as the three essential requirements to secure such a measure were missing (ie, the plaintiff had no prima facie case, as it was not a registered trademark owner in Pakistan, the balance of convenience did not lean in plaintiff's favour and it had suffered no losses or damages in Pakistan).
  • Brands 4 Less had started its business activities in 2007 and 2008 with no retail activity in Pakistan. Thus, it had established a prima facie right to use the trademark BRANDS 4 LESS as applied for and used prior to the plaintiff's adoption and use of the mark BRANDS FOR LESS.
  • Brands 4 Less had filed its trademark application in 2009 and it was later abandoned in 2011, as it had been unable to follow up the application. However, the defendant continued to use its trademark until it was restrained as per the orders of the Intellectual Property Tribunal in 2018. Further, the defendant had opposed the plaintiff's trademark application.
  • Brands 4 Less argued that it had a prima facie case, as it had incurred advertising and promotional costs and had suffered irreparable loss as a result. Further, it claimed that the temporary injunction had been granted for no justifiable reason and should be set aside.
  • Section 86(2) of the Trademark Ordinance's requirements must be fulfilled in order to establish the well-known status of a mark and Brands for Less had failed to do so in its claim regarding the dilution of its mark.

Decision

The Intellectual Property Tribunal agreed that Brands for Less had failed to make an adequate case for granting an interim injunction. Further, it 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.

As a result, the tribunal decided in favour of the defendant and vacated the interim injunction.

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.