The Patents Ordinance 2000 is a consolidated amended law relating to the protection of inventions and patents in Pakistan. As a registered patent owner, a patentee can authorise or prevent third parties from using its patent or manufacturing a product or offering to sell a product or service that uses its patented invention, subject to certain limitations.
The Lahore High Court recently heard an appeal of the registrar of trademarks' decision to delete a mark on the grounds of non-use. The appellant had failed to provide sufficient evidence to prove its mark, whereas the respondent had filed extensive documentary evidence to show that it was a bona fide manufacturer and user of the relevant trademark.
The Intellectual Property Tribunal recently vacated an interim injunction granted in a case brought by Brands for Less LLC against another retailer concerning its use of the BRANDS 4 LESS mark. The tribunal found that Brands for Less had failed to make an adequate case for granting an interim injunction and stated that a well-known mark may be a good ground for registering IP rights in another territory, but not for injunctive relief, unless a balance of convenience can be established.
In order to integrate and upgrade Pakistan's IP infrastructure and improve its services, public awareness and IP enforcement, the Intellectual Property Office recently proposed draft amendments to the Patents Ordinance. The proposed amendments, which aim to align the ordinance with the Intellectual Property Organisation of Pakistan Act, standardise office practices and streamline procedures, have been published on the office's website for public comment but have yet to be finalised.
The Sindh High Court recently overturned a registrar of trademarks' decision following an appeal by Moonlite Trading and rejected MF Enterprises' application to register its infringing FASTER BLACK COBRA mark. The decision applied the concept of totality of impression and the average consumer test to ascertain whether the registration of the FASTER BLACK COBRA mark would infringe Moonlite Trading's COBRA mark.
Aldo Group International AG filed a suit for trademark infringement and passing off against Aldo Shoes to restrain it from using the name and trademark ALDO in Pakistan in relation to its shoe business. While the single bench of the High Court of Sindh refused to grant injunctive relief to Aldo Group International AG, the court's appellate bench recently allowed its appeal against Aldo Shoes.
The High Court of Sindh recently allowed an appeal filed by Novartis AG against Nabiqasim Industries (Private) Limited and restrained the latter from using the trademark DESCOL on account of its similarity with Novartis's prior registered trademark LESCOL. The court's appellate bench asserted that in the case of pharmaceutical products, the public must be protected from the possibility of confusion at all times.
The Patent Cooperation Treaty (PCT) provides the best option for obtaining an international patent. Pakistan plans to accede to the Madrid Protocol in 2019 and become a contracting member of the PCT in 2020. In this regard, the Intellectual Property Organisation of Pakistan is in the process of updating its IP laws, including the Patent Ordinance 2000, to incorporate the relevant PCT provisions.
In a recent case, the appellant challenged the Additional District Court's decision to dismiss a permanent injunction issued against the respondent for its adoption of a mark that was confusingly similar to that of the appellant. 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.
An appellant filed an appeal in the High Court challenging a district judge's decision dismissing an application for the grant of a temporary injunction against the respondent's use of a trademark. The appellant had registered a similar mark subject to a disclaimer regarding exclusivity. However, the court found that such a disclaimer limits the extent of the exclusive rights that a registration may provide a rights holder and dismissed the appeal.
IP enforcement agencies recently held a meeting at the Intellectual Property Organisation to discuss how to improve Pakistan's international IP image. At the meeting, certain proactive approaches were adopted, including improving coordination between different government organisations and providing timely IP reports to Pakistan's missions abroad. These measures will allow Pakistan to keep up to date with progress in the protection of IP rights and provide a basis for comparison with other international standards.
When deciding an appeal regarding infringement and passing off of the appellant's mark, the Sindh High Court applied the standard 'moron in a hurry', Lapp and classic trinity tests to determine the get-up and similarity of the marks in question. The high court decided in favour of the appellant and overruled the lower court's decision by disallowing registration of the defendant's competing mark.
A new chapter regarding IP rights enforcement has been added to the Customs Rules 2001. The new chapter provides a mechanism by which rights holders with valid grounds for suspicion that infringing goods are being imported into Pakistan can make an application (in the prescribed format) to the Directorate General of IP Rights when the goods arrive at the notified customs station.
Following consultation with stakeholders, the Intellectual Property Organisation of Pakistan recently published the Draft Geographical Indication Protection Bill 2016 on its website for discussion. As there are minimal provisions relating to geographical indication protection in existing IP legislation, there is a need for comprehensive legislation to provide improved protection and public awareness of geographical indication products in Pakistan.
The Intellectual Property Organisation recently announced that it has signed a memorandum of understanding with the Federal Board of Revenue for data sharing and further cooperation. The memorandum of understanding marks a major collaboration with the Federal Board of Review's IP rights enforcement agencies and aims to address the violation of IP rights and issues of piracy and counterfeiting in Pakistan.
A recent Supreme Court case found that adding a prefix to an existing trademark or the dominant feature of an existing trademark is not enough to prevent a trademark registration being refused. The court noted a growing tendency to misappropriate trademark rights by seeking protection under copyright law. The decision highlights the proactive approach that the Pakistan judiciary has adopted towards protecting IP rights in trademarks.
The federal government recently established IP tribunals in Punjab, Sindh and Islamabad Capital Territory to adjudicate on IP disputes under presiding officers selected from high court, district and session court judges or attorneys who qualify for appointment through their expert knowledge of IP law. The act also provides that in cases of a technical nature, tribunals may be assisted by IP rights experts.
The Sindh High Court recently refused to grant interim injunctive relief to Aldo and allowed a local company to sell shoes under the brand The Aldo Shoes. In its decision, the court gave due weight to the fact that Aldo has no stores in Pakistan and that the defendant's shoes are sold only through its own store; therefore, the goods concerned reach the market through different trade channels.
The Directorate General of Intellectual Property Rights (Pakistan Customs) was recently established. This body will primarily focus on the enforcement of Pakistan's IP laws – in particular, the import or export of counterfeit products. It will also be the Federal Board of Revenue's centralised contact office for national and international organisations working for the promotion of IP rights.
The High Court of Sindh has issued a significant decision addressing company trademark applications that are filed in all classes of the Nice International Classification of Goods and Services. The case confirms that the classes of goods and services for which registration is sought must relate to the objects clause of the applicant's memorandum of association.