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: 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: Background: Meezan Beverages (Pvt.) Limited (the Petitioner) challenged a notice dated 30.08.2018, a show cause notice dated 07.07.2021, and subsequent actions taken by the Competition Commission of Pakistan (CCP) on the grounds that these actions were unlawful, illegal, and without jurisdiction. The Petitioner, a manufacturer of beverages, including the energy drink 'Storm,' was accused by PepsiCo (the Complainant) of deceptive marketing practices for packaging 'Storm' in a manner allegedly similar to PepsiCo's 'Sting.' The CCP initiated an inquiry and issued a show cause notice after finding prima facie violations. ----Issues: 1- Whether the impugned Notice has been issued by the CCP after complying with the requirements of Section 37 of the Act? 2- Whether the jurisdiction of the CCP with respect to deceptive marketing practices in terms of Section 10 of the Act is distinct and separate from the jurisdiction vested in the Intellectual Property Tribunal under the IPO Act? ----Holding/Reasoning/Outcome: ---Issue 1: Compliance with Section 37 of the Act The court held that the CCP had complied with the requirements of Section 37 of the Competition Act, 2010. The CCP issued a notice to the Petitioner with sufficient details of the complaint and the reasons for initiating an inquiry. This was consistent with the precedent set by the Supreme Court in the Dalda Foods case, which emphasized that the CCP must communicate the gist of reasons for initiating an inquiry. ---Issue 2: Jurisdiction of CCP vs. Intellectual Property Tribunal The court found that the jurisdiction of the CCP under the Competition Act, 2010, and the Intellectual Property Tribunal under the IPO Act is distinct and separate. The IPO Act consolidates the regulation of intellectual property rights and grants exclusive jurisdiction to the Tribunal for infringement matters. In contrast, the Competition Act addresses anti-competitive practices, including deceptive marketing. The court noted that the CCP's focus on deceptive marketing does not overlap with the intellectual property rights governed by the IPO Act. Therefore, the CCP's actions were within its jurisdiction and did not encroach upon the domain of the Intellectual Property Tribunal. -----Citations/Precedents: Competition Commission of Pakistan and others v. Dalda Foods Limited, Karachi (2023 SCMR 1991): Established the CCP’s mandate and procedural requirements for initiating inquiries under the Competition Act, 2010. Commissioner Inland Revenue and others v. Jahangir Khan Tareen and others (2022 SCMR 92): Emphasized the principle that constitutional jurisdiction should not be invoked prematurely when statutory remedies are available. ----Quote: Notice under Section 37(2) of the Competition Act, 2010 indicating gist of reasons or nature of alleged violations justifying order of inquiry accompanied with the complaint itself is sufficient compliance of requirements of the said Section. Further, the scope, mandate and ambit of jurisdiction of the Competition Commission of Pakistan with respect to deceptive marketing practices under Section 10 of the Competition Act is distinct and separate from the jurisdiction of the Intellectual Property Tribunal under Sections 16 and 18(1) of the Intellectual Property Organization of Pakistan Act, 2012 (IPO Act) regarding trial of offences and adjudication of suits for breach or infringement of intellectual property laws included in the schedule of the IPO Act.

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: (a) Civil Procedure Code (V of 1908) ––– ---Order VII, Rule 11---Rejection of plaint---Fresh suit after return of plaint--- Court held that a plaintiff whose plaint has been returned under Order VII, Rule 10, C.P.C. is not obligated to file the same plaint and may present a fresh suit with additional claims, provided it is within the limitation period---This principle aligns with precedents from higher courts, including Mst. Hawabai v. Abdus Shakoor (PLD 1981 Karachi 277) and Abdus Shakoor v. Mst. Hawabai (1982 SCMR 867). (b) Limitation Act (IX of 1908) ––– ---S. 23---Continuing breaches and wrongs--- In cases of recurring infringements, a fresh period of limitation arises with each act of infringement---Court held that alleged infringement of copyright constitutes a continuing wrong under S. 23 of the Limitation Act, 1908, providing a new cause of action for each occurrence. (c) Intellectual Property Law ––– ---Copyright infringement and recurring cause of action--- Plaintiff alleged infringement of copyright in her novels and sought declaratory and injunctive relief, as well as damages---Court held that recurring acts of infringement provide continuous cause of action, making the suit maintainable despite allegations of being time-barred---Reliance placed on M/S Bengal Waterproof Ltd. v. M/S Bombay Waterproof Manufacturing Company (AIR 1997 SC 1398). (d) Declaratory Relief ––– ---Order II, Rule 2, C.P.C.---Scope and applicability--- Court clarified that a fresh suit for declaratory relief, arising from a recurring cause of action, is not barred under Order II, Rule 2, C.P.C., as long as new claims are based on subsequent infringements or breaches. (e) Mixed Question of Law and Fact ––– ---Bar of limitation--- Court determined that whether the suit or specific claims are barred by limitation is a mixed question of law and fact, requiring trial and framing of specific issues---Held, rejection of the plaint at the preliminary stage is unwarranted. ----Cited Cases: Mst. Hawabai v. Abdus Shakoor, PLD 1981 Karachi 277 Abdus Shakoor v. Mst. Hawabai, 1982 SCMR 867 M/S Bengal Waterproof Ltd. v. M/S Bombay Waterproof Manufacturing Company, AIR 1997 SC 1398 ----Disposition: Application under Order VII, Rule 11, C.P.C. dismissed; suit held to be maintainable for adjudication on merits.

Summary: Background:In F.A.O No. 72708 of 2023, Muhammad Zulfiqar Ali appealed against the order dated 12.10.2023 of the Intellectual Property Tribunal, Lahore. The legal proceedings began with a first suit filed by Rashid Mehmood Sidhu against the appellant in Islamabad, which was later withdrawn with permission to refile after rectifying formal defects. Subsequently, a second suit was filed on the same day, leading to a series of appeals concerning the admissibility and procedure of both suits, particularly focusing on the application of Order XXIII Rule 1 and Order II Rule 2 of the Civil Procedure Code, 1908 (CPC).------IssuesWhether the second suit filed by the respondent, following the withdrawal of the first suit, is permissible under Order XXIII Rule 1(3) of the CPC.Whether the filing of the second suit was a strategy to circumvent the legal barriers set by Order II Rule 2 of the CPC, potentially defeating the purpose of the legislature.----Holding/Reasoning/Outcome:The Lahore High Court held that the second suit filed by the respondent was legally permissible and not barred by Order XXIII Rule 1(3) of the CPC. The court determined that the rule did not apply because the second suit was already pending at the time the first suit was withdrawn. The Tribunal's decision to allow the second suit to proceed was found to be in line with established legal principles that aim to prevent multiplicity of litigation but also ensure justice is not denied by procedural technicalities. The appeal was dismissed, confirming the Tribunal's order.-----Citations/Precedents:Trustees of the Port of Karachi Versus Organization of Karachi Port Trust Workers and Others (2013 SCMR 238)Ghulam Abbas and Others Versus Mohammad Shafi through LRs and Others (2016 SCMR 1403)Shahbaz Khan vs. Additional District Judge, Ferozewala and others (2017 SCMR 2005)Khawaja Bashir Ahmed and Sons Pvt. Ltd. Versus Messrs Martrade Shipping and Transport and Others (PLD 2021 Supreme Court 373)Malik Ehsan Ullah etc. Versus Province of the Punjab etc. (PLJ 2021 Lahore 352)Nasir Ali vs. Muhammad Asghar (2022 SCMR 1054)Kamilaaamir and another Versus Additional District & Session Judge and Others (PLJ 2023 Lahore 735)Ghulam Nabi and others vs. Seth Muhammad Yaqub and others (PLD 1983 SC 344)The Commissioner of Income Tax N.C.A. Circle, Karachi and another vs. Haji Ashfaq Ahmad Khan and 10 others (PLD 1973 SC 406)Virgo Industries (ENG.) Private Limited vs. Venturetech Solutions Private Limited ((2013) 1 Supreme Court Cases 625)

Summary: Background: The case involved a dispute over the ownership of intellectual property rights related to a groundbreaking technology developed by an employee during their tenure at a company. The technology in question was deemed to have significant commercial value, leading to a contentious legal battle over the rightful ownership and control of the intellectual property. ----Issues: 1. Whether the technology developed by the employee falls within the scope of their employment duties. 2. Whether there was a valid agreement, either explicit or implied, regarding ownership of intellectual property rights. 3. Whether the company had taken appropriate measures to protect its proprietary interests in the technology. ----Holding/Reasoning/Outcome: The court held that the technology developed by the employee during their employment was sufficiently related to their duties to be considered the property of the company. The court reasoned that the nature of the work performed, the resources provided by the company, and the context of the employment relationship all pointed to the company's rightful claim to the intellectual property. Furthermore, the court found that there was an implicit understanding between the parties regarding ownership of intellectual property rights, supported by company policies and industry norms. The court emphasized the importance of clear and unambiguous agreements in such matters but ultimately concluded that the company had a valid claim to the technology. As a result, the court ruled in favor of the company, granting it ownership of the intellectual property rights associated with the technology developed by the employee during their employment.

Summary: Muhammad Akram Rahi filed an appeal against the Copyright Board's order, communicated on July 4, 2022, which accepted a rectification application filed by Respondents No. 2-a to 2-c. The order resulted in the expunging and cancellation of copyright registration No. 40552-Copr dated February 19, 2020, for the poetry book titled “IK AKRAM RAHI” in favor of the appellant. ---Issues: 1) Whether the Copyright Board had jurisdiction to hear and decide rectification applications based on claims of infringement of intellectual property rights. --2) Whether the rectification application was properly adjudicated under the relevant provisions of the Copyright Ordinance, 1962. ----Holding/Reasoning/Outcome: Jurisdiction: The Lahore High Court held that the Copyright Board did not have jurisdiction to entertain and adjudicate upon the rectification application, as jurisdiction regarding infringement of intellectual property rights is vested in the Intellectual Property Tribunal established under the Intellectual Property Organization of Pakistan Act, 2012 (IPO Act). The Court noted that the IPO Act consolidates jurisdiction over intellectual property matters, including infringement disputes, within the Tribunal, thereby overriding previous jurisdictions of other bodies under intellectual property laws. Rectification Application: The rectification application by the Respondents was based on allegations that the appellant's poetry book contained plagiarized content. The Court found that such claims involve issues of infringement of intellectual property rights, which fall under the exclusive jurisdiction of the Tribunal, not the Copyright Board. Consequently, the Copyright Board’s order was declared void ab initio and without jurisdiction. ----Citations/Precedents: IZHAR ALAM RAROOQI, ADVOCATE vs. Sheikh ABDUL SATTAR LASI and others (2008 SCMR 240) Rashid Ahmed v. State (PLD 1972 SC 271) Syed MUHAMMAD HUSSAIN SHAH vs. ABDUL QAYYUM and others (2011 SCMR 743) MUNAWAR HUSSAIN and 2 others vs. SULTAN AHMAD (2005 SCMR 1388) Pir SABIR SHAH vs. SHAD MUHAMMAD KHAN, MEMBER PROVINCIAL ASSEMBLY, N.-.W.F.P. and another (PLD 1995 Supreme Court 66) Muslim Commercial Bank Limited versus Muhammad Anwar Mandokhel and others (2024 SCMR 298) Dr. Tahir Masud versus Amjad Ali Khan and 4 others (2019 PLC (C.S.) 1167) WAPDA through Chairman and 3 others versus Khalid Pervaiz (2015 YLR 1598) Messrs Shaheen Chemist through Proprietors and 3 others versus Zahid Mehmood Chaudhry and another (2023 CLD 1) Muhammad Multazam Raza versus Muhammad Ayub Khan and others (2022 SCMR 979) Mahile Engine Components Japan Corporation versus Azam Autos and others (Suit No. 2058 of 2019)

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