Summary: -----Quote: When proceedings concerning Trade Mark in question are pending in Court, the application for revocation, invalidation or rectification under section 73, 80 and 96 of The Trade Mark Ordinance, 2001 shall be filed before the said Court in view of the provision prevailing at the relevant time, however after the promulgation of The Intellectual Property Organization of Pakistan Act, 2012, the matters are to be proceeded by the Intellectual Property Tribunal. -----Background: The appellant filed multiple suits for permanent injunction, damages, and an injunction against infringement of his registered trademark "Hafiz Pipe Store" with Logo (Trade Mark No.210893 in Class 35). During the pendency of these suits, Asghar Ali (respondent No. 2) filed an application before the Registrar of Trade Marks seeking revocation, invalidation, and rectification of Qasim's trademark. The Registrar allowed this application ex parte, leading to the rejection of Qasim’s suits by the Additional District Court based on the cancellation of the trademark. Muhammad Qasim subsequently filed these appeals challenging both the Registrar's and the District Court's orders. -----Issues: 1- Jurisdiction of Registrar in Pending Court Cases: Whether the Registrar of Trade Marks had the authority to decide on the revocation application when related suits were already pending in the District Court. -----2- Impact of Trademark Revocation on Civil Suits: Whether the civil suits seeking damages for trademark infringement and passing off could be dismissed solely based on the trademark's revocation. -----3- Exclusive Jurisdiction of Intellectual Property Tribunal: Whether the intellectual property disputes should be handled by the Intellectual Property Tribunal under the Intellectual Property Organization of Pakistan Act, 2012, rather than the District Court. -----Holding/Reasoning/Outcome: The Lahore High Court allowed the appeals, setting aside both the Registrar's order and the District Court's decision to reject the suits. --Jurisdiction of Registrar: According to Sections 73(4), 80(4), and 96(2) of the Trade Marks Ordinance, 2001, if related proceedings are pending in a court, any application for revocation, invalidation, or rectification of a trademark should be directed to that court. Since Qasim’s suits regarding the trademark were already pending in the District Court, Asghar Ali’s application for revocation should have been transferred to the court where these suits were pending. The Registrar's order dated 12.05.2014 was thus found to be without jurisdiction. --Impact of Trademark Revocation on Civil Suits: The appellant’s suits sought relief for trademark infringement and damages for passing off. Passing off is independent of trademark registration, as it addresses the misrepresentation of a business or product, regardless of registration status. The revocation of the trademark did not render the appellant’s suits unsustainable, and thus, the rejection of the plaints was found unjustified. --Intellectual Property Tribunal Jurisdiction: Following the Intellectual Property Organization of Pakistan Act, 2012, intellectual property disputes, including those concerning revocation, invalidation, and infringement, are under the exclusive jurisdiction of the Intellectual Property Tribunal. The court directed that, on remand, the Intellectual Property Tribunal, instead of the District Court, will handle these matters. -----Citations/Precedents: Sections 73(4), 80(4), and 96(2), Trade Marks Ordinance, 2001 – Specify that trademark-related proceedings pending in a court must be handled by that court. Intellectual Property Organization of Pakistan Act, 2012 – Establishes exclusive jurisdiction for intellectual property disputes under the Intellectual Property Tribunal. ITALFARMACO S.P.A. v. HIMONT PHARMACEUTICALS (2017 CLD 1382) – Supports transferring invalidation applications to the court where related proceedings are pending. The State v. Naeemullah Khan (2001 SCMR 1461) – Defines “proceedings” as all legal steps from commencement to disposal.

Summary: CMA: S.19 Appeal under intellectual property Act by plaint of permanent Injunction and trademark suit against refusal of the tribunal to grant temporary injunction. (a) Trade Marks Ordinance, 2001 –– ---- S. 40 – Trade mark infringement – Exclusive right to use registered trade mark – Interim injunction – Appellant, the registered proprietor of the trade mark "Kohinoor Fair Price Shop", sought to restrain the respondent from using the name "Kohinoor Fabrics", alleging trade mark infringement – Trial court dismissed interim relief application without examining the statutory requirements under S. 40 of the Trade Marks Ordinance, 2001 – Held, under S. 40, infringement is established when a mark identical or deceptively similar to a registered trade mark is used in trade without authorization – The trial court failed to consider whether the respondent’s use of the word "Kohinoor" created deception or was detrimental to the appellant’s registered trade mark – Matter required adjudication under the legal framework of the 2001 Ordinance, rather than the repealed Trade Marks Act, 1940 – Impugned order set aside, and interim relief application remanded for fresh decision in accordance with the relevant law. (b) Intellectual Property Law – Prior User vs. Registered Proprietor –– ---- Trade mark rights – Prior user of an unregistered trade mark cannot claim superiority over a registered proprietor – Appellant relied on Pioneer Cement Ltd. v. Fecto Cement Ltd. (2013 CLD 201), affirming that a registered proprietor holds exclusive rights to use the mark – Respondent claimed prior use of the name "Kohinoor Fabrics", arguing that "Kohinoor" is a generic term – Held, while prior use may be a defense in passing-off actions, it does not override the statutory protection granted to a registered trade mark holder – Matter required determination of whether respondent’s use of "Kohinoor" created likelihood of confusion under trade mark laws. (c) Passing Off and Likelihood of Confusion –– ---- Elements of passing off – Respondent argued that "Kohinoor" was a general name and not identical to the appellant’s registered mark "Kohinoor Fair Price Shop" – Held, likelihood of confusion must be assessed considering overall similarity, trade channels, and consumer perception – The Supreme Court in Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant (1987 SCMR 1090) discussed passing-off actions, holding that infringement may arise even if an identical trade mark is not used, provided confusion is likely – Matter required detailed inquiry into deceptive similarity and unfair advantage. (d) Judicial Review of Trade Mark Infringement –– ---- Failure to apply relevant law – The trial court relied on 1987 SCMR 1090, which pertained to the repealed Trade Marks Act, 1940, and failed to apply S. 40 of the Trade Marks Ordinance, 2001 – The Sindh High Court in Soneri Travel and Tours Ltd. v. Soneri Bank Ltd. (2011 CLD 193) emphasized that trade mark infringement must be assessed under modern trade mark principles – Held, trial court’s approach was legally flawed, and interim relief application should have been decided in accordance with the applicable statutory provisions. Disposition: ---- Appeal allowed – Impugned order dated 06.05.2024 set aside – Application for interim relief reinstated and remanded to the trial court for decision in accordance with the Trade Marks Ordinance, 2001.

Summary: These ten trademark suits currently pending in the High Court are disposed of in three different manner following the Judgment of the Supreme Court of Pakistan in the case of Muhammad Multazam Raza v. Muhammad Ayub Khan, 2022 SCMR 979 in paragraph 12 and the enactment of the Trade Marks (Amendment) Act, 2023, on 11.08.2023. The three actions on the part of the High Court depend on the category of trademark dispute: Category A - Suits for infringement currently pending in the High Court and filed prior to 29.12.2015 may be transferred to the IP Tribunal forthwith (Category ???A???). Category B - trademarks suits filed after 29.12.2015, currently pending in the High Court, the Plaint in such suits must be returned (Category ???B???) as High Court lacks jurisdiction to hear the same. Finally, in cases involving a Suit connected with a J. Misc. Application involving either Section 73(4) [an application for revocation], Section 80(4) [an application for declaration of invalidity], Section 96(2) [an application for rectification], etc, the High Court may retain jurisdiction and proceed with deciding both Suit and J. Misc.

Summary: (a) Competition Law—Trademark Infringement—Use of Registered Trademark Without Authorization—Section 38, Competition Act, 2010. The Competition Act, 2010 applies to "undertakings and all actions or matters that take place in Pakistan and distort competition within Pakistan." A local entity selling products under an internationally registered trademark and logo (Starbucks in this case) without authorization distorts fair competition within the local market. Legal Principle: Unauthorized use of an internationally recognized trademark misleads consumers, creates unfair competition, and violates the principles of competitive fairness enshrined in the Competition Act, 2010. (b) Trademark Registration—Effect of International Trademark in Local Jurisdiction. The appellant conceded that "Starbucks" and its logo are registered trademarks both internationally and in Pakistan. Despite the absence of authorized Starbucks outlets in Pakistan, the unauthorized use of such a brand name creates an unfair competitive advantage in favor of the infringing party. ---Legal Principle: Trademark registration confers protection under both domestic and international laws, and unauthorized use constitutes unfair trade practice. (c) Competition Act, 2010—Scope and Applicability—Section 1(3) of the Act. The Act applies to all undertakings and activities taking place in Pakistan if they "distort competition within Pakistan." The unauthorized sale of products under the name and logo of an internationally recognized brand inherently affects the competitive market landscape. Legal Principle: The geographical operation of the Competition Act is not limited to competing local businesses; it extends to any practice distorting market competition, even if the trademark owner does not operate locally. (d) Imposition of Penalties—Section 38, Competition Act, 2010—Legality and Proportionality of Fines. The Competition Commission of Pakistan (CCP) is legally empowered under Section 38 of the Competition Act, 2010, to impose penalties for anti-competitive practices, including unauthorized trademark use. The Tribunal enhanced the penalty to six million rupees while reducing the daily penalty to five thousand rupees per day. Legal Principle: Penalties imposed under the Competition Act, 2010, are valid if they comply with the law, and objections cannot stand if the statutory authority to impose them is admitted. (e) Consumer Protection—Deception and Unfair Competition—Public Perception and Brand Misrepresentation. Selling products under a well-known international trademark (Starbucks) misleads consumers into believing they are purchasing authentic goods. This misrepresentation erodes consumer trust and harms both competitors and the trademark owner. Legal Principle: Unauthorized use of an international trademark not only distorts market competition but also violates consumer protection principles by creating false perceptions of authenticity. (f) Dismissal of Appeal—Failure to Substantiate Grounds—Legal Authority of Tribunal. The appellant failed to present any substantial grounds to contest the legality of the penalty or the applicability of the Competition Act. The Supreme Court upheld the Tribunal's decision to impose a fine and daily penalty under Section 38 of the Act. ----Disposition: Appeal dismissed.

Summary: Background: This case involves M/s Options International (SMC-Pvt.) Ltd, which was penalized by the Competition Commission of Pakistan for using the trademarked name and logo of Starbucks, an international brand, without authorization. The penalty imposed by the Commission was contested by the appellant before the Competition Appellate Tribunal, which adjusted the penalties but ultimately upheld the Commission's decision. The appellant then appealed to the Supreme Court of Pakistan. ----Issues: 1- Whether the appellant’s use of the Starbucks name and logo constitutes a violation under the Competition Act, 2010. 2- Whether the penalties imposed by the Competition Commission and modified by the Tribunal were legally justified. 3- Whether the Competition Act applies to actions involving trademarks registered by foreign entities that do not operate within Pakistan. ----Holding/Reasoning/Outcome: The Supreme Court upheld the decision of the Competition Appellate Tribunal, dismissing the appeal. The Court found that: The use of the Starbucks name and logo by the appellant, despite being unauthorized, was likely to distort competition within Pakistan. This could mislead the public into believing they were purchasing genuine Starbucks products, thereby disadvantaging local competitors. The penalties imposed by the Commission, as modified by the Tribunal, were within the legal framework of the Competition Act, 2010, specifically under Section 38, which the appellant's counsel conceded. The appellant's argument that the Act should not apply because Starbucks does not have an outlet in Pakistan was rejected. The Court reasoned that the unauthorized use of a well-known trademark could still impact competition within the country, irrespective of the physical presence of the trademark owner. The appeal was dismissed with no order as to costs since the respondent (Starbucks Corporation USA) did not enter an appearance. ----Citations/Precedents: The decision was primarily based on the interpretation of the Competition Act, 2010, with specific reference to: Section 1(3) of the Competition Act, 2010. Section 38 of the Competition Act, 2010, which authorizes penalties for violations.

Summary: (a) Trade Marks Ordinance, 2001—S. 86—Refusal of registration—Similarity with well-known trade mark—Global goodwill—Consumer confusion— Appellant challenged the refusal of registration for the mark NBN, which was rejected by the Registrar of Trade Marks for its resemblance to the well-known and globally registered mark NTN, used for ball bearings and taper rollers. The court upheld the refusal, noting NTN's recognition in Pakistan and abroad under Section 86 of the Trade Marks Ordinance, 2001. Held, NBN bore a deceptive similarity to NTN and was adopted with knowledge of NTN's longstanding use and goodwill—Use of similar or confusingly identical trade marks undermines consumer protection, which is the cornerstone of trade mark law. (b) Trade mark tests—Similarity and deception—“Moran in a Hurry”, “Class Trinity” and “LAPP” tests—Applicability— Court applied established legal tests, including the “Moran in a Hurry”, “Class Trinity”, and “LAPP” tests, concluding that the proposed mark NBN failed to establish distinction from the existing well-known mark NTN—The resemblance was likely to cause confusion or deception in the relevant class of consumers. Held, no protection could be afforded to NBN under statutory or common law in view of its proximity to the NTN mark, both phonetically and visually. (c) Jurisprudence—Reference to foreign and local case law—Prior restraint orders— Reliance was placed on precedent including CEC v. GEC (1963 RPC 1), BEI v. BEL (1982 PTC 377), and Hamdard Laboratories (Waqf) Pakistan v. Muhammad Fahim (2016 CLD 2144). Court also noted prior restraint orders against the appellant from using NBN, affirming consistency in judicial findings. Held, no illegality or jurisdictional error was found in the decision of the Registrar—Appeal found devoid of merit. Disposition: Appeals dismissed—Registration of NBN refused—Decision of Registrar upheld as legally sound.

Summary: Background: An appeal was filed under Section 114 of the Trade Marks Ordinance, 2001, against an order passed by the Intellectual Property Tribunal, Lahore. The respondent instituted a suit claiming to be the bona fide owner and prior user of the trademark "SAMSARA" or "SAMSARA by Khadija Batool." The respondent alleged that the registration and use of the mark "SAMSARA Couture House (Pvt.) Limited" by the appellants infringed her rights. The Tribunal granted an interim injunction restraining the appellants from using the disputed mark. ----Issues: 1- Whether the respondent has established a prima facie case of prior use and goodwill of the trademark "SAMSARA." 2- Whether the requirements for granting an interim injunction, such as prima facie case, balance of convenience, and irreparable loss, are met. ----Holding/Reasoning/Outcome: The court found that the respondent did not provide sufficient evidence to establish a prima facie case of prior use and goodwill of the trademark "SAMSARA." The documents provided by the respondent, including invoices and Facebook pages, need to be verified during the trial. The court noted that the partnership agreement between the parties, which is undisputed, indicates that the business name "SAMSARA" was agreed upon by both parties, with no mention of prior use by the respondent. The court concluded that the three necessary elements for granting an interim injunction (prima facie case, balance of convenience, and irreparable loss) were not co-existing in this case. The order of the Intellectual Property Tribunal was set aside, and the appeal was allowed. The Tribunal was directed to decide the suit on its merits within five months. ----Citations/Precedents: Messrs Unique School vs. Messrs Unique Group of Institutions, 2015 CLD 1297 Pioneer Cement Limited through Company Secretary vs. Fecto Cement Limited through Chief Executive Officer and 3 others, 2013 CLD 201 Qadeer Ahmed vs. The Assistant Registrar of Trade Marks, The Trade Marks Registry and another, 1999 YLR 96 Muhammad Kashan vs. Coca Cola Export Corporation through Chief Executive Officer and 3 others, 2015 CLD 1513 Yaqoob vs. Additional Settlement Commissioner, Karachi and 2 others, 1973 SCMR 116 Kohinoor Soap and Detergents (Private) Ltd through Chief Executive of the Company vs. Basra Soap Factory and 4 others, 2002 CLD 1223, Karachi

Summary: Background: The case revolves around a patent infringement lawsuit wherein the plaintiff holds a patent for a design related to an automotive part. The plaintiff accuses the defendant of producing and selling a product that infringes on this patented design. The central argument of the plaintiff is that the defendant's product is substantially similar to the patented design, thus constituting infringement. The defendant, in turn, contends that the design lacks distinctiveness and that their product does not infringe on the patent. ----Issues: 1- Whether the plaintiff's design patent is valid and enforceable. 2- Whether the defendant's product infringes upon the plaintiff's design patent. ----Holding/Reasoning/Outcome: The court held that the plaintiff's design patent is valid and enforceable. The reasoning was based on the assessment that the design in question met the requisite criteria for patentability, including novelty and non-obviousness. Additionally, the court found that the defendant's product did indeed infringe on the plaintiff's design patent. The court's analysis focused on the substantial similarity between the plaintiff's patented design and the defendant's product, concluding that an ordinary observer would find the two designs to be substantially similar, thus supporting the claim of infringement. The outcome of the case was in favor of the plaintiff, with the court granting relief for the patent infringement claim, which likely includes monetary damages and possibly an injunction against the defendant to cease production and sale of the infringing product. ----Citations/Precedents: Gorham Co. v. White, 81 U.S. 511 (1871): This case established the "ordinary observer" test for determining design patent infringement. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008): Reinforced the "ordinary observer" test and clarified the test's application in design patent cases. Apple Inc. v. Samsung Electronics Co., 678 F.3d 1314 (Fed. Cir. 2012): This case provided further insight into the application of the "ordinary observer" test and issues of design patent infringement. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009): Discussed the concept of obviousness in design patents and its impact on the validity of a design patent.

Summary: Issue: The primary issues revolve around the interpretation of ?fraudulent use of another?s trademark, firm name, or product labelling or packaging? under Section 10(2)(d) and the distribution of false or misleading information under Section 10(2)(a) of the Competition Act 2010.Holding: The Supreme Court dismissed the appeals, affirming the Tribunal's decision. It held that Rahim Foods' actions constituted deceptive marketing practices under Section 10(2)(d) of the Competition Act by copying K&N?s Foods? packaging and labelling, which likely caused confusion among consumers. However, it agreed with the Tribunal that there was no direct distribution of false or misleading information about K&N?s Foods? products by Rahim Foods, thus not violating Section 10(2)(a).Reasoning: The Court reasoned that the act of copying packaging and labelling to the extent that it causes confusion among consumers amounts to fraudulent use under Section 10(2)(d), regardless of the registration status of the trademark or packaging. However, for an act to fall under Section 10(2)(a), there must be a distribution of false or misleading information specifically aimed at harming another business, which was not the case here.''(i) Free and fair competition in trade and busniess is an intrinsic part of the fundamental right to freedom of trade and business guaranteed by Article 18 of the Constitution; (ii) Codification of common law on injurious falsehood and passing-off actions; (iii) meaning and Scope of Section 10(2)(a)&(d) of the Competition Act 2010; (iv) Criterion for determining confusing similarity in the use of another's product labeling and packaging: (v) No locus standi of an adjudicatory body to contest for upholding its quasi-judicial decision.''

Summary: ''(i) Free and fair competition in trade and busniess is an intrinsic part of the fundamental right to freedom of trade and business guaranteed by Article 18 of the Constitution; (ii) Codification of common law on injurious falsehood and passing-off actions; (iii) meaning and Scope of Section 10(2)(a)&(d) of the Competition Act 2010; (iv) Criterion for determining confusing similarity in the use of another's product labeling and packaging: (v) No locus standi of an adjudicatory body to contest for upholding its quasi-judicial decision.'' --- Background:The case revolves around the allegations by K&N?s Foods (Pvt) Limited (?K&N?s Foods?) against A. Rahim Foods (Pvt) Limited (?Rahim Foods?) concerning deceptive marketing practices, particularly the fraudulent use of product labeling, packaging, and a trademark term ?Combo Wings.? The Competition Commission of Pakistan initiated proceedings against Rahim Foods based on these allegations, leading to penalties being imposed for contravention of Section 10 of the Competition Act 2010.----Issues:Whether Rahim Foods? product labeling and packaging misleadingly resembled that of K&N?s, constituting deceptive and fraudulent use under Section 10(2)(d) of the Act.Whether Rahim Foods' use of the term ?Combo Wings? amounted to fraudulent use of another?s trademark under the same section.The applicability of Section 10(2)(a) concerning the distribution of false or misleading information capable of harming another undertaking's business interests.---Court's Analysis:Trademark and Packaging: The Court affirmed the findings of both the Competition Commission and the Appellate Tribunal that Rahim Foods had engaged in deceptive marketing by copying K&N?s product labeling and packaging, which could mislead consumers. This constituted a violation of Section 10(2)(d) of the Competition Act, focusing on the fraudulent use of another?s product labeling or packaging.Use of ?Combo Wings?: Despite the term not being registered as a trademark by K&N?s Foods at the time of the complaint, the overall context demonstrated Rahim Foods' intention to deceive, fitting within the scope of Section 10(2)(d).Distribution of False Information: The Supreme Court agreed with the Tribunal's view that Rahim Foods had not distributed false or misleading information about K&N?s products, hence not violating Section 10(2)(a) of the Act. The deceptive practice was primarily aimed at benefiting from K&N?s established market reputation rather than directly harming it by distributing false information.---Conclusion:The Supreme Court dismissed the appeals, upholding the Tribunal's decision to impose penalties on Rahim Foods for contravention of Section 10(1) read with Section 10(2)(d) of the Competition Act 2010, while agreeing with the Tribunal's finding that Section 10(2)(a) was not applicable. The case underscores the importance of honesty, fairness, and transparency in marketing practices to ensure fair competition and consumer protection.