Summary: [TRADE MARK, Takaful Rules, 2012 (Rule 2)] Section 39 of the Trademark Ordinance, 2001 relates to the rightsconferred by registration whereas Section 40 of the Ordinance deals with the infringement of the registered trademark. In terms of Section 40 subsection 3(c) of the Ordinance a person shall infringe a registered trademark if the person uses in the course of a trade a mark which is identical with, or deceptively similar to, the trademark in relation to services of the same description as that of service in respect of which a trademark is registered. The proposition thus appears to be simple that service which is being dealt with by both the plaintiff and the defendant whether is of same description or otherwise to attract the provisions as referred above. I may refer to the international classification of goods and services and it seems that it is being dealt with by class-36 and there is no dispute in this regard as the defendant himself chooses to apply under the same class. The defence that they have been dealing with takaful business would not turn much as it is being dealt with by the same classification

Summary: Issue:Whether the trademarks registered by Wella should be removed from the register due to non-use, despite the import bans that prevented the sale of their products in Pakistan.Holding:The Supreme Court of Pakistan held that the trademarks should not be removed. The non-use of trademarks by Wella was due to special circumstances (import bans) beyond their control, not due to any intention to abandon the trademarks.Reasoning:The Court noted that the import bans issued by the Government of Pakistan constituted special circumstances that justified the non-use of Wella's trademarks. The Court relied on the principle that non-use due to circumstances affecting the entire trade, and beyond the control of the trademark owner, does not warrant the removal of trademarks. The Court referred to the case of Cooper's Incorporated v. Pakistan General Stores & Another (1981 SCMR 1039) and Procter and Gamble Ltd. v. Registrar of Trade Marks (1988 CLC 252) to support its reasoning.Judgment:The Supreme Court allowed the appeals, set aside the judgment of the High Court of Sindh and the orders of the Registrar of Trademarks, dismissed the rectification cases, and restored Wella's registered trademarks.--- ''For seeking the relief of removal/revocation of a registered trade mark under S. 37(1)(b) of the Trade Marks Act, 1940, specific minimum timeframe of five years has been provided during which there has been no bona fide use of such trademark by its proprietor, which is to be computed from a date one month before the date of application submitted by any aggrieved person in such regard. Burden of proof as to whether there was no bona fide use of the registered trademarks for a continuous period of five years up to a date one month before the date of the application without any lawful excuse or special circumstances as envisaged under S. 37(3) of the Trade Marks Act, 1940, is squarely upon the aggrieved party/applicant which has submitted the application for removing the trademark from the Register of Trademarks.''

Summary: "Trade Marks Ordinance (XIX of 2001)-------Ss. 8(1) & 40---Civil Procedure Code (V of 1908), O. XXXIX, Rr.1 & 2---Specific Relief Act (I of 1877), S. 54---Infringement of trade mark---Permanent Injunction---Application for grant of interim injunction under O. XXXIX, Rr. 1 & 2, C.P.C.---Similarity and deceptivity in trade marks, determination as to--- Plaintiffs, pharmaceutical company owned trade mark ""LESCOL"" and got the same registered in year 1991---Trade mark ""DESCOL"" belonged to defendant, also a pharmaceutical company, which was registered in 2003---Plaintiff sought permanent injunction against use of defendant's trade mark and running of business thereunder contending that defendant's trade mark was phonetically, visually and structurally deceptive and confusingly similar and/or resembled plaintiff's trade mark and defendant's product was likely to pass off as that of plaintiff's product---Both trade marks involved sale of almost same medicinal product---Validity---Prescription of doctor and his expert opinion would be important factor in recommending medicine---Persons prescribing, dealing and offering medicines were specialist meant to protect passing of such medicine available at shop and sale of such medicine were carried out by authorized or licensed persons---Partially phonetically both trade marks were similar, but, for pharmaceutical products, the assigned names were given on basis of generics---No one could claim any proprietary right regarding such generic words as to its exclusive use---Trade mark was to be seen with complete getup, colour scheme, design and printing---Plaintiff's claim related to phonetic similarity between the two trade marks and not to the whole word or design or getup---No deceptive similarity existed between the two trade marks when seen as a whole---Pharmaceutical products were not ordinary goods which a person could point out at shop and buy at his choice---No case was made out for injunction---Application was dismissed, in circumstances."

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) 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: Intellectual property, Immovable and immovable in and their standing in succession.