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: (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: 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: 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: Background: The petitioners, a multinational company, filed a revision petition challenging the judgment of the Additional District Judge, Lahore, who had set aside the Civil Judge's order and remanded the case for a fresh decision on the merits. The respondents had initially filed a suit seeking damages of Rs. 14 million, alleging copyright infringement concerning a song they had created and composed. The Civil Judge had earlier returned the plaint under Order VII Rule 10 of the Civil Procedure Code (CPC) for lack of jurisdiction. However, the Additional District Judge had overturned this decision and remanded the case back to the trial court. -----Issues: 1- Whether the Civil Court has jurisdiction to entertain the respondents' claim of copyright infringement and passing off. ----2- Whether the matter falls under the exclusive jurisdiction of the Intellectual Property Tribunal as per the Intellectual Property Organization of Pakistan Act, 2012. -----Holding/Reasoning/Outcome: The court held that the respondents' claim involved allegations of copyright infringement, which fall under the purview of intellectual property laws. The Copyright Ordinance, 1962, provides exclusive rights related to literary, musical, and artistic works, which were allegedly violated in this case. The court ruled that the Intellectual Property Tribunal has exclusive jurisdiction over all intellectual property disputes, including copyright infringement, as outlined in Section 18 of the Intellectual Property Organization of Pakistan Act, 2012. The court emphasized that the Civil Court has no jurisdiction to hear cases related to intellectual property infringement, as these matters must be addressed by the specialized tribunal. The revision petition was allowed, and the judgment of the Additional District Judge was set aside. The respondents’ plaint was ordered to be returned for presentation before the Intellectual Property Tribunal. -----Citations/Precedents: Muhammad Multazam Raza v. Muhammad Ayub Khan (2022 SCMR 979) Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant (1987 SCMR 1090) Messrs Shaheen Chemist through Proprietors v. Zahid Mehmood Chaudhry (2023 CLD 1) Messrs Ferozesons Pvt. Ltd. v. Dr. Col. Retd. K.U. Kureshi (2003 CLD 1052) Glaxosmithkilne Services Ltd. v. Anfords Pakistan (SBLR 2017 Sindh 1537)

Summary: The case revolves around the registered trademark "Ranchers," jointly owned by the petitioner, Muhammad Multazom Roza, and respondent No.1, Muhammad Ayub Khan. The trademark was registered under the Trade Mark Ordinance 2001 in Pakistan. The petitioner and respondent No.1 had formed a partnership firm called Zakori International, which operated successful brands like "Mr. COD" and "Ranchers" in the country. The Intellectual Property Tribunal, in its order dated 11.03.2020, returned the petitioner's plaint under Order VII Rule 10 of the Civil Procedure Code (CPC). The tribunal concluded that since respondent No.2 had not physically used the trademark in the course of trade, the suit was not maintainable under section 46(1) and (2) of the Trade Mark Ordinance 2001. The tribunal also stated that the dispute between the co-owners of a trademark could not be agitated before the tribunal.The petitioner appealed the tribunal's decision before the Islamabad High Court. The court, through its judgment dated 26.02.2021, dismissed the petitioner's appeal, affirming the tribunal's decision. The court held that the acts complained of by the petitioner fell within the exclusive jurisdiction of the tribunal, as prescribed by the Intellectual Property Organisation at Pakistan Act, 2012 (IPO Act 2012). The case highlights the significance of intellectual property protection for businesses operating in Pakistan. By registering trademarks and enforcing their rights, businesses can safeguard their brand identities and prevent unauthorised use. It is essential for businesses to understand the legal framework surrounding intellectual property laws and seek legal remedies in case of infringement or passing off. Petition was converted into an appeal, and the same was allowed. The impugned judgment was set-aside and the case was remanded back to the tribunal.

Summary: (a) Copyright Ordinance (XXXIV of 1962)-------S. 45---Constitution of Pakistan, Art. 37---Petitioner sought direction to the FederalGovernment to constitute Copyright Board as required under S. 45 of the CopyrightOrdinance, 1962 in order to safeguard his right of appeal against the order passed byRegistrar of Copyrights---Validity---Right of appeal, when provided under the law, was asubstantive right and denial of such substantive right was against the dictates of Art. 37(d) ofthe Constitution which mandated that the State would ensure provision of inexpensive andexpeditious justice to the people---Appeal was not merely a formality but a substantive toolof re-examination of a higher pedestal to either rectify and correct any probable error orapplication of law in the orders passed by the lower forum or to endorse the same being rightand thus further enhance its credibility---High Court directed the Federal Government to takeup the matter regarding appointment of the Chairman of the Copyright Board on prioritybasis---Constitutional petition was disposed of accordingly.Presson-Descon International (Private) Limited and others v. Joint Registrar of CompaniesPLD 2020 Lah. 869 = 2020 CLD 1128 ref.Ghulam Qadir and others v. Sh. Abdul Wadood and others PLD 2016 SC 712 and OvexTechnologies (Private) Limited v. PCM PK (Private) Limited and others PLD 2020 Isl. 52rel.(b) Constitution of Pakistan-------Art. 4--- Right of individuals to be dealt with in accordance with law---Scope---Everycitizen of the country has a right of access to justice and dispensation of justice in a timelyfashion---Every citizen had an inalienable right to enjoy protection of law and to be treated inaccordance with law and no action detrimental to the life, liberty, body reputation or propertyof any person shall be taken except in accordance with law.Watan Party and another v. Federation of Pakistan and others PLD 2011 SC 997 rel.(c) Constitution of Pakistan-------Art. 5---Loyalty to State and obedience to Constitution and law---Scope---Obedience tothe Constitution and law is inviolable and it is the duty of the State to obey the laws.

Summary: Trademark---The case involved disputes over the use of design and trademark. ORO Industries sought an injunction against Muhammad Hanif from using the design of Design owned by ORO Industries and using the trademark "ZORRO" on the basis of alleged similarity to their registered trademark "ORO." The court acknowledged that ORO Industries possessed the registered trademark "ORO" and the design of pencils under dispute, registered as per the Registered Designs Ordinance, 2000. The court reviewed evidence of the alleged similarities between the pencils manufactured by the Defendant and those of ORO Industries, including the use of the "ZORRO" trademark. The court emphasized that for a design to be registered, it must exhibit newness or originality under the Ordinance, and the lack of such elements precludes registration. The court cited the definition of "design" in the Ordinance and explained the requirement of global newness or originality for registration under the 2000 Ordinance. In assessing the case, the court noted that triangular-shaped pencils, similar to those registered by ORO Industries, were widely available for decades and not new or original. The court cited a lack of creative ingenuity and novelty in the design and ruled in favor of the Defendant in the cancellation case. However, in the context of the trademark dispute, the court found that the Defendant's pencils bore a striking resemblance to those of ORO Industries, using a similar color scheme and the "ZORRO" trademark that closely resembled ORO Industries' "ORO" trademark. As a result, ORO Industries' application for an injunction against the Defendant's use of the "ZORRO" trademarked pencils succeeded, despite the cancellation of their design registration.