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28 May 2018
In a recent case of the Lahore High Court, the appellant (Hilal Confectionery) challenged the Additional District Court's decision to dismiss a permanent injunction issued against the respondent (Naveed Enterprises) for its adoption of a confusingly similar mark (NAVEED KHOPRA CANDY SWEETS) to that of the appellant (HILAL KHOPRA CANDY SWEETS).
The appellant claimed that it had been manufacturing and marketing sweets and candies using the HILAL KHOPRA CANDY SWEETS trademark and packaging, which featured a particular design and colour scheme, for many years. As a result, it had developed its reputation and goodwill due to the high-quality product bearing said trademark.
The HILAL KHOPRA CANDY SWEETS trademark, along with its colour scheme and design, was pending registration in Class 30 under Application 147,128. As a result, the Hilal Khopra Candy Sweets packaging was duly protected under trademark and copyright laws.
The respondent was accused of infringing the appellant's trademark rights and passing off its goods as those of the appellant. In its defence, the respondent argued that:
In addition, the respondent refuted that its product or packaging was similar to the appellant's and argued that each product used different colour schemes and designs.
Notably, in the absence of exclusive rights, an appellant cannot seek to restrain a respondent.
Having considered the above issues, the learned judge set aside the trial court's impugned order based on the following observations.
Upon analysing the evidence, it was proven that the appellant had been using its trademark and packaging (including the colour scheme, design and get-up) since 1993. Therefore, the appellant's prior user of its trademark and packaging was established.
The judge also found that:
Based on the following observations, the court found that the defendant's trademark and packaging (ie, colour scheme, design and get-up) were deceptively and confusingly similar to those of the appellant.
In light of the above, it was held that the respondent's mark and packaging were deceptively or confusingly similar to the appellant's and were therefore likely to confuse and deceive unwary customers. Further, the court found that the appellant was the prior user of the HILAL KHOPRA CANDY SWEETS mark and packaging and that the respondent was likely to pass off its goods as those of the appellant, which was likely to suffer damage to its reputation and goodwill, as well as lost sales.
The appeal was decided in the appellant's favour and the trial court's impugned order was set aside.
The decision reflects that unregistered trademark rights can be protected through a passing-off claim where it can be established that the trademark has gained distinctiveness as a result of its continuous use over time. Further, each feature of a trademark is distinctive and if one such feature is misappropriated by an infringing party, it may violate such rights despite there being a disclaimer on certain generic features.
For further information on this topic please contact Seema S Mansoor at Vellani & Vellani by telephone (+92 21 3580 1000) or email (firstname.lastname@example.org). The Vellani & Vellani website can be accessed at www.vellani.com.
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