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.
A new chapter regarding IP rights enforcement has been added to the Customs Rules 2001. The new chapter provides a mechanism by which rights holders with valid grounds for suspicion that infringing goods are being imported into Pakistan can make an application (in the prescribed format) to the Directorate General of IP Rights when the goods arrive at the notified customs station.
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 Sindh High Court recently refused to grant interim injunctive relief to Aldo and allowed a local company to sell shoes under the brand The Aldo Shoes. In its decision, the court gave due weight to the fact that Aldo has no stores in Pakistan and that the defendant's shoes are sold only through its own store; therefore, the goods concerned reach the market through different trade channels.
The Directorate General of Intellectual Property Rights (Pakistan Customs) was recently established. This body will primarily focus on the enforcement of Pakistan's IP laws – in particular, the import or export of counterfeit products. It will also be the Federal Board of Revenue's centralised contact office for national and international organisations working for the promotion of IP rights.
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.
Following Coca-Cola Pakistan's launch of the sixth season of its Coke Studio music programme, the plaintiff in a recent case claimed that the copyright for his unique idea of having foreign and local artists perform together in a musical programme had been infringed. The court's refusal to accept this claim constitutes an important development with respect to copyright protection for ideas in Pakistan.
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.
The Trademarks Ordinance recognises words, letters, devices, figurative elements, colours, sounds and combinations thereof as trademarks as long as they can distinguish the goods or services of one undertaking from those of other undertakings. This is a broad definition of what may constitute a trademark and is arguably wide enough to include three-dimensional shape marks, such as package designs.
The president recently promulgated the Intellectual Property Organisation of Pakistan Ordinance 2012. Among other things, it provides that the Trademarks Registry, the Patent Office and the Central Copyright Office will become part of the Intellectual Property Organisation of Pakistan. The ordinance also creates new tribunals to conduct trials of IP offences.
The Competition Commission has ruled that a company's manufacture, marketing, sale and export of leather jackets that bore other parties' trademarks without authorization were fraudulent acts and constituted deceptive marketing practices under the Competition Ordinance.