Summary: Issue:The primary issue was whether the petitioner could register ?FAROOQ?S Hayat? as a trademark for its products, given the prior application and use of ?HAYAT? by IFFCO.Judgment:The Supreme Court dismissed the petitions filed by Farooq Ghee & Oil Mills (Pvt.) Ltd, upholding the decisions of both the Registrar of Trade Marks and the Sindh High Court. The Court found that IFFCO had established its prior use and registration of the ?HAYAT? trademark in various jurisdictions and that the petitioner's mark ?FAROOQ?S Hayat? was not sufficiently distinct, leading to possible confusion or deception.Reasoning:The Court highlighted that the addition of the prefix ?FAROOQ?S? to the dominant feature ?HAYAT? did not sufficiently differentiate the petitioner?s mark from IFFCO?s established trademark. It emphasized the protection of consumers and the integrity of the trademark system against unfair practices that might lead to confusion. The Court also dismissed the petitioner's argument that their copyright registration for the artistic work ?FAROOQ?S Hayat? should grant them rights to the trademark, clarifying that copyright and trademark rights serve different legal purposes and protections.Conclusion:The Supreme Court?s decision reinforced the principles of trademark law, particularly the protection of established trademarks against potentially confusing or deceptive new registrations. It also underscored the importance of distinguishing between copyright and trademark rights in intellectual property law. --- ''The petitioners have adopted the trade mark "FAROOQ'S Hayat" which encompasses the mark "HAYAT" and is the striking or dominating feature of the trade mark of IFFCO. Adoption of dominant feature being "HAYAT" is not only strikingly similar but is identical. Merely adding prefix of "FAROOQ'S" in inconspicuous manner to the dominant or striking feature of the existing trademark HAYAT is of no consequence. The prefix "FAROOQ'S" as used by the petitioner does not eclipse, overshadow or obscure the dominating mark HAYAT in a way that may distinguish his goods with that of the goods of the IFFCO. If the competing trade mark of the petitioner is allowed registration, it would not only be encouraging unscrupulous traders to steal someone else's goodwill and (intellectual) property, but at the same time unwary purchaser would be exposed to more than reasonable probabilities of confusion and deception.''

Summary: Section 40 (5) Trade Mark Ordinance, 2001. Infringement of Trade mark---(a) Trade Marks Ordinance (XIX of 2001)-------S. 40(5)---Trade mark---Infringement---Scope---Act of infringement only takes placewhen there is a registered trade mark--- In absence of registration, act of infringement isnowhere.(b) Trade Marks Ordinance (XIX of 2001)-------Ss. 39, 40 & 41---Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 & 2---Infringement of trade mark---Interim injunction---Pre-conditions---Plaintiff claimed thattrade mark in question was registered in his name and use of the same by defendant wasan act of infringement---Interim injunction was granted by Trial Court in favour ofplaintiff---Plea raised by defendant was that no trade mark was registered in favour ofplaintiff---Validity---In absence of Certificate of Registration of Trade Mark, no rightaccrued in favour of plaintiff, infringement of which could be claimed---No prima faciecase existed in favour of plaintiff and balance of inconvenience was also not in hisfavour---In absence of other two ingredients, suffering of irreparable loss was out ofquestion---Trial Court did not properly appreciate the facts thus arrived to the conclusionwhich was not in accordance with law and facts, therefore, the same was not sustainable---High Court in exercise of appellate jurisdiction, set aside the order passed by Trial Courtand application of interim injunction filed by plaintiff was dismissed---Appeal wasallowed, in circumstances.

Summary: (a) Trade Marks Ordinance (XIX of 2001)—S. 40—Civil Procedure Code (V of 1908), O. XXXIX, Rr. 1 & 2—Interim injunction—Trademark infringement—Prima facie case—Appellant was registered proprietor of trademark ‘Kohinoor Fabrics’ under Class-35—Respondent operating business under the name ‘Kohinoor Fair Price Shop’—Held, Trial Court dismissed appellant’s injunction application without properly examining provisions of S.40 of Trade Marks Ordinance, 2001—Trial Court relied on precedent under repealed Trade Marks Act, 1940, without considering statutory test for infringement under 2001 Ordinance—Test includes deceptive similarity, use in course of trade, dissimilar goods, and detriment to distinctive character—Mere commonality of generic word ‘Kohinoor’ insufficient to decide claim without complete inquiry—Impugned order set aside—Matter remanded for fresh decision on merits. (b) Trade Marks—Infringement—Statutory test—Principles—Conditions for establishing infringement under S. 40(4), Trade Marks Ordinance, 2001, require: (i) use of mark in course of trade; (ii) deceptive similarity or identity; (iii) goods/services not similar to those covered by registration; (iv) trademark having reputation in Pakistan; (v) use without due cause; and (vi) use taking unfair advantage of or being detrimental to the distinctive character—Held, burden lies on trademark proprietor to establish these elements to justify interim or permanent relief—Trial Court’s failure to apply these standards constituted material irregularity. (c) Trade Marks—Prior user vs. registered proprietor—Scope—Respondent’s claim to be prior user of ‘Kohinoor’ not sufficient to defeat exclusive rights of appellant under registered trademark—Held, prior use of a common word cannot override statutory rights conferred upon a registered proprietor—Reliance placed on Pioneer Cement Ltd. v. Fecto Cement Ltd. 2013 CLD 201 and Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant 1987 SCMR 1090—Doctrine of passing off distinguished from statutory infringement—Registration creates statutory presumption of ownership and exclusivity. (d) Trade Marks—Generic words—Effect—Use of generic or public juris terms such as ‘Kohinoor’—Held, protection may still be available where overall mark or its presentation has distinctiveness or acquired reputation—Phonetic or visual similarity must be assessed with reference to entire mark including logo, layout, and trade dress—Case law reviewed including Novartis AG v. Nabiqasim Industries 2015 CLD 1162, Rupali Polyester Ltd. v. Baba China Builders 2014 CLD 1601—Prima facie similarity or confusion to be evaluated after evidence. Disposition: Appeal allowed; case remanded for decision afresh.

Summary: (a) Intellectual Property Law – Trademark Infringement in Pharmaceuticals: ---- Trademark Rights – Infringement – Whether registration of a drug can override trademark rights – The petitioner’s trademark FERINJECT was registered in 2005, whereas the respondent’s drug FERIJET was registered in 2005 by the Drug Registration Board – The Intellectual Property Tribunal decreed that FERIJET was deceptively similar to FERINJECT and restrained the respondent from manufacturing, marketing, and selling the drug – Held, that registration of a drug under Drugs Act, 1976 does not override intellectual property rights under the Trade Marks Ordinance, 2001 – Executive bodies such as the Drug Regulatory Authority of Pakistan (DRAP) cannot override or disregard the findings of a court of competent jurisdiction in intellectual property matters. ----Cited Cases: • Novartis AG v. Nabiqasim Industries (Pvt.) Ltd. (2017 CLD 1136) • The Welcome Foundation Ltd. v. Messrs Karachi Chemical Industries (Pvt.) Ltd. (2000 YLR 1376) • Pfizer Ltd. v. Wilson's Pharmaceuticals (2002 CLD 1653) • Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd. (2001(5) SCC 73) (b) Administrative Law – Regulatory Jurisdiction of DRAP: ---- Jurisdiction of DRAP – Whether DRAP can override Intellectual Property Tribunal decisions – The Drug Registration Board refused to cancel the registration of FERIJET despite the Intellectual Property Tribunal’s finding of trademark infringement – Held, that DRAP is an executive regulatory authority, not a judicial body – It has no power to sit in judgment over a decree of the Intellectual Property Tribunal – Where a trademark infringement ruling exists, DRAP must enforce it under Sections 7(11) and 23 of the Drugs Act, 1976 – Failure to do so amounts to undermining judicial authority and violates the principle of legality. ----Cited Cases: • Dawakhana Hakim Ajmal Khan (Pvt.) Ltd. v. Federation of Pakistan (PLD 2020 Lahore 899) • Soneri Travel & Tours Ltd. v. Soneri Bank Ltd. (2011 CLD 193) • Sandoz Ltd. v. Pakistan Pharmaceutical Products Ltd. (1987 CLC 1571) (c) Consumer Protection – Public Health Risks in Trademark Disputes: ---- Public Health – Likelihood of consumer confusion in drug trademarks – Confusion between pharmaceutical trademarks can lead to serious health risks – Held, that a stricter test must be applied in cases of pharmaceutical trademark infringement due to potential life-threatening consequences – Even minor phonetic or visual similarities between drug names can lead to misuse or incorrect prescriptions – Consumer protection takes precedence over regulatory convenience – DRAP failed to recognize the impact of public safety in its decision. ----Cited Cases: • Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd. (2001(5) SCC 73) • Sanofi-Aventis v. GlaxoSmithKline Biologicals SA ((2010) 89 CPR (4th) 378 (TMOB)) • Novartis AG v. Nabiqasim Industries (Pvt.) Ltd. (2017 CLD 1136) (d) Interpretation of Laws – Harmonization of Drug & Trademark Laws: ---- Statutory Interpretation – Whether Drug Laws Override Trademark Laws – The Drugs Act, 1976 and the DRAP Act, 2012 regulate drug safety, efficacy, and registration – The Trade Marks Ordinance, 2001 protects trademark rights and prevents consumer deception – Held, that both statutes must be read harmoniously – There is no conflict between drug registration laws and trademark laws, as counterfeit drugs are explicitly prohibited under Section 23 of the Drugs Act – Regulatory authorities must give effect to final judicial determinations regarding trademark infringement. ----Cited Cases: • Bayer Corporation & ORS v. UOI & ORS (ILR (2009) SUPP. 2 Delhi 145) • Getz Pharma (Pvt.) Ltd. v. Servier Laboratories (France) (2016 CLD 2229) (e) Disposition: ---- Impugned orders set aside – Drug FERIJET declared a counterfeit drug – Registration cancelled under Section 7(11) of the Drugs Act – DRAP directed to enforce the Intellectual Property Tribunal’s judgment – Respondent No.4 ordered to change the name of its drug before applying for re-registration – Costs of Rs.50,000 imposed on Respondent No.4, payable to the Petitioner within 4 weeks.

Summary: (a) Specific Relief Act (I of 1877): ---- S. 54 – Permanent injunction – Trade mark infringement – Use of identical trade mark and domain name – Passing off – Protection of well-known marks – Ex parte decree. Plaintiff, a globally recognized manufacturer of computer products, sought a permanent injunction against the defendant, restraining the latter from using the trade mark "Acer" in relation to internet, telecommunication, satellite, and computer-related goods, services, and business. Plaintiff had been using the trade mark "Acer" since 1987, which was internationally reputed and registered under the relevant laws of Taiwan. Defendant adopted the same trade mark, "Acer," and registered the domain name www.acer.com.pk, launching a website to sell computer-related products. Defendant's actions were alleged to be deliberate, unauthorized, and mala fide, aimed at misleading the public and passing off its business as that of the plaintiff. Defendant failed to appear despite summons being served through publication, and the matter proceeded ex parte. Held, that the defendant’s use of the identical trade mark and domain name amounted to trade mark infringement and passing off. Given the rapid advancement in e-commerce, an ordinary purchaser searching for "Acer" online could mistakenly access the defendant’s website, assuming it to be affiliated with the plaintiff. Plaintiff, having a well-established and globally recognized trade mark, was entitled to protection against such infringement. Suit decreed to the extent of prayer clauses (i) and (ii), restraining the defendant from using "Acer" as a trade mark, trade name, or domain name. (b) Intellectual Property – Domain Name Disputes – Likelihood of confusion in e-commerce: With the evolution of internet-based commerce, domain names have acquired significant commercial importance. Consumers frequently search for products online and may place orders through websites bearing a similar or identical name to a known brand. Defendant’s registration of www.acer.com.pk posed a high likelihood of confusion, misleading potential buyers into believing that the website belonged to or was affiliated with the plaintiff. Held, that unauthorized use of a trade mark as a domain name constituted an act of deception, violating the rights of the legitimate trade mark owner. ----Disposition: Suit decreed ex parte in favor of the plaintiff, restraining the defendant from using the trade mark "Acer" or an identical name in any form, including as a trade mark, trade name, or domain name. No order as to costs.

Summary: (a) Trade Marks Act (V of 1940): ---- Ss. 6, 8, 14, 37(1)(a)(b), 46(2) – Rectification of trade mark register – Expunging of trade mark – Non-use of registered mark – Bona fide use – Foreign trade mark owner’s rights – Passing off – Likelihood of confusion. Applicant, a well-known international company, sought rectification of the trade marks register under S. 37(1)(a)(b) & S. 46(2) of the Trade Marks Act, 1940, seeking expungement of the trade mark "GAP" registered by the respondent in Class 3 (washing powder and detergent) on the ground of non-use. Applicant, claiming global ownership of the trade mark "GAP" in respect of clothing, leather goods, toiletries, and personal care products, contended that respondents’ registration was fraudulent, lacking bona fide use, and created confusion by misleading consumers into believing that respondent’s goods originated from or were affiliated with the applicant. Respondents failed to appear despite repeated notices, and service was held good. Held, that under S. 37(1)(a), 37(1)(b), and 46(2) of the Trade Marks Act, a registered trade mark may be removed if it was registered without a bona fide intention of use or remained unused for a continuous period of five years. The applicant proved extensive global reputation and use of the "GAP" mark, while the respondents failed to establish any actual or bona fide use of their registration. The registration obstructed the applicant’s legitimate rights and was liable to be expunged. Application allowed – Trade mark registration No. 97650 in Class 3 expunged from the Trade Marks Register. (b) Intellectual Property – Protection of globally recognized trade marks – Doctrine of bona fide use – Requirement of active commercial use: A trade mark registration cannot be maintained merely for defensive purposes or to obstruct legitimate rights of well-known international brands. Held, that absence of bona fide use for an extended period, coupled with failure to defend the registration, justified cancellation. Courts must ensure that trade marks are not registered or maintained in bad faith to exploit renowned brands. ---Disposition: Application allowed – Respondent’s trade mark "GAP" expunged from the Trade Marks Register.

Summary: (a) Trade Marks Act (V of 1940) – Ss. 21 & 25: Trade mark infringement—Exclusive rights of registered proprietor—Prior use—Passing off—Trans-border reputation—Effect. Plaintiff, a UAE-based company, sought an injunction to restrain the defendants from infringing its registered trade mark "MAAZA" (registered under No. 142298 in Class 32 for beverages, juices, and soft drinks) and from passing off identical trade mark products as its own. Defendant No.1 contested the claim, asserting prior use in Pakistan since 1997 and invoking S.25 of the Trade Marks Act, 1940, to protect vested rights. Held, that the registration of a trade mark grants exclusive rights under S.21, and any unauthorized use of an identical or deceptively similar mark constitutes infringement. The plaintiff established a strong prima facie case based on international reputation and registration in multiple jurisdictions, including Pakistan. The defendant failed to prove prior use, as its trade mark application was filed on a "proposed to be used" basis, contradicting its claims of continuous use. Furthermore, the concept of trans-border reputation applied, as the plaintiff’s mark had global recognition due to extensive marketing, including in Pakistan, through advertising, international trade, and media exposure. (b) Trade Marks Act (V of 1940) – Ss. 10(2) & 25: Prior user rights—Bona fide adoption—Defendant’s claim of concurrent use—Failure to establish prior rights. The defendant argued that it had been using the "MAAZA" mark for fruit juices since February 1997 and had acquired goodwill and market share. However, documentary evidence, including tax records and invoices, failed to establish prior user rights before the plaintiff’s trade mark registration in 1997. Additionally, the defendant's trade mark application stated "proposed to be used," contradicting its prior use claim. Held, that mere use of a similar mark does not override the proprietary rights of a registered trade mark owner unless bona fide prior adoption is proved. The lack of documentary evidence before the trade mark registration date invalidated the defendant’s claim of concurrent rights. (c) Civil Procedure Code (V of 1908) – O.XXXIX, Rr.1 & 2: Temporary injunction—Balance of convenience—Irreparable loss—Grant of relief to trade mark proprietor. For an injunction under O.XXXIX, Rr.1 & 2, C.P.C., the court considered: (i) prima facie case, (ii) balance of convenience, and (iii) irreparable loss. Plaintiff demonstrated proprietary rights through international and local trade mark registrations and continuous use of the mark. The defendant’s adoption of an identical trade mark created likelihood of deception, which could mislead consumers. Held, that balance of convenience favored the plaintiff, as allowing continued unauthorized use would damage its brand reputation. Furthermore, irreparable loss was established, as unauthorized use of the mark would erode brand exclusivity and goodwill. The defendant could not claim honest concurrent use, as its adoption of the mark was not bona fide. (d) Words and Phrases—Acquiescence: Failure to act against infringer—Effect on proprietary rights. Defendant argued that the plaintiff had acquiesced to its use of "MAAZA" in Pakistan since 1997 and was estopped from claiming exclusive rights. Held, that mere delay in bringing an action does not bar a trade mark owner’s rights unless it is accompanied by encouragement or consent to the infringer. Plaintiff took legal action upon becoming aware of the defendant’s infringement, thus acquiescence did not apply. Fraudulent adoption of a well-known trade mark negates any claim of acquiescence. (e) Disposition: Plaintiff’s application for injunction granted. Defendant No.1’s application for recall of the interim injunction dismissed. ----Cited Cases: Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant 1987 SCMR 1090 Mars Incorporated v. Pakistan Mineral Water Bottling Plant (Pvt.) Ltd. 2001 MLD 39 Dabur India Ltd. v. Hilal Confectionary (Pvt.) Ltd. PLD 2000 Karachi 139 Cooper’s Incorporated v. Pakistan General Stores 1981 SCMR 1039 National Detergents Limited v. MOD and International (Pvt.) Ltd. 1993 MLD 590 J. N. Nichols (Vimto) PLC v. Mehran Bottlers (Pvt.) Ltd. PLD 2000 Karachi 192

Summary: (a) Contract Act (IX of 1872): ----S. 202---Termination of agency where agent has an interest in the subject matter---Scope---Exclusive bottling appointment agreement between PepsiCo and Bolan Beverages was terminated by PepsiCo, leading Bolan Beverages to file a suit claiming that an interest in the franchise had been created under S. 202 of the Contract Act, rendering the agreement irrevocable---Held, the relationship between the parties was not that of principal and agent but of buyer and seller, as Bolan Beverages operated its business independently without representing PepsiCo in dealings with third parties---No interest was created in the subject matter of the agreement as required under S. 202 of the Contract Act---Provisions of S. 202 were, therefore, not attracted. (b) Contract Act (IX of 1872): ----Ss. 182, 211, 213, 216, 217, & 218---Agency---Essential ingredients---Scope---Bolan Beverages failed to qualify as an agent under the Contract Act as it was not obligated to represent PepsiCo in dealings with third parties, render accounts, or share profits or losses with PepsiCo---All benefits and risks were borne solely by Bolan Beverages, indicating the absence of an agency relationship. (c) Specific Relief Act (I of 1877): ----Ss. 21(a), 21(g) & 56(f)---Specific performance---Temporary injunction---Scope---Bolan Beverages sought a temporary injunction against the termination of its agreement with PepsiCo---Held, temporary injunctions are not granted where compensation in money constitutes an adequate remedy, as per S. 21(a) of the Specific Relief Act---The agreement involved a continuous duty extending beyond three years, which under S. 21(g) could not be specifically enforced---Issuance of a temporary injunction was not in the interest of justice, as it would effectively resurrect a terminated contract. (d) Trade Marks Ordinance (XIX of 2001): ----S. 46---Infringement of trademark---Allegations of marketing spurious products---Scope---PepsiCo alleged that Bolan Beverages had violated trademark rights by selling spurious products under the Pepsi trademark after ceasing to purchase Pepsi concentrate---Held, the sale of spurious products posed a serious risk to PepsiCo’s goodwill, further justifying the refusal of a temporary injunction. (e) Administration of justice---Ad interim injunction---Undue benefit from prolonged interim relief---Effect---Appellant continued to enjoy the benefits of the terminated agreement under the force of an ad interim injunction since 1999, causing significant prejudice to PepsiCo---Held, continuation of such an injunction was unjustified, and temporary relief was rightly refused. ---Disposition: Appeal dismissed. Temporary injunction refused. ---Cited Statutes: • Contract Act (IX of 1872), Ss. 182, 202, 211, 213, 216, 217, & 218 • Specific Relief Act (I of 1877), Ss. 21(a), 21(g), & 56(f) • Trade Marks Ordinance (XIX of 2001), S. 46 ---Judgment Reference: 2004 CLD 1530 (Supreme Court)

Summary: (a) Trade Marks Act, 1940 (V of 1940): ----Ss. 8(a), 10(1), 20 & 21 Trade mark infringement—Exclusive right to use—Protection of registered trade mark—Likelihood of deception or confusion Appellant, Societe Des Produits Nestle S.A., owned the registered trade mark "MILO" since 1950 under registration number 10168 for food products—Appellant filed a suit seeking a permanent injunction against the respondent, Food International (Pvt.) Ltd., restraining it from using the trade mark "MILO" for bread, bakery products, and other food items—Appellant contended that the respondent was unlawfully using the trade mark "MILO" for bread, misleading consumers, and infringing upon its exclusive rights—Trial Court dismissed the suit on the ground that the appellant did not manufacture or sell bread, and thus, the respondent's use of "MILO" for bread did not create confusion—High Court disagreed, holding that the law protects registered trade marks against unauthorized use, even for different categories of goods, if such use is likely to deceive or cause confusion among consumers—Held, that the use of an identical trade mark for food products, even if not identical to those sold by the registered proprietor, was likely to mislead consumers and amounted to infringement—Permanent injunction granted in favor of the appellant. ----Cited Cases: Seven-Up Company v. Kohinoor Thread Ball Factory, PLD 1990 SC 313 Messrs Alpha Sewing Machine Company v. Registrar of Trade Marks, PLD 1990 SC 1074 Kabushiki Kaisha Toshiba v. Ch. Muhammad Altaf, PLD 1991 SC 27 Unilever Limited v. Sultan Soap Factory, PLD 1991 SC 939 Unilever PLC v. R.B. Oil Industries (Pvt.) Ltd., 1999 MLD 1447 Mars Incorporated v. Pakistan Mineral Water Bottling Plant (Pvt.) Ltd., 2001 MLD 39 (b) Trade Mark Protection—Scope of Protection: ----Same description of goods—Unfair competition—Public deception Respondent's argument that "MILO" was a generic term referring to a type of grain was rejected—High Court held that the word "MILO" had acquired distinctiveness as a trade mark associated with the appellant's products—Respondent's bread was not made from milo grain, further negating its argument—Held, that trade mark protection extends to goods that, although not identical, belong to the same broad category (i.e., food products) and are marketed through similar trade channels—Unauthorized use of a registered trade mark, particularly when associated with low-quality products, can harm the goodwill and reputation of the original proprietor—Use of "MILO" for bread, therefore, constituted infringement. (c) Trade Mark Rights—Public Policy Considerations: ----Ensuring stability of registered trade marks—Consumer protection—Elimination of deceptive practices Court emphasized that once a trade mark has been duly registered and established in the market, it should not be allowed to be misappropriated—Held, that trade mark law is designed to prevent consumer deception and unfair competition—Protection of a registered trade mark is essential to maintain trust in commercial branding and prevent unauthorized parties from benefiting from another's established goodwill. ----Disposition: Appeal allowed—Permanent injunction granted in favor of the appellant—Respondent restrained from using the trade mark "MILO" for bread and related products—No order as to costs.