Protection of trademarks
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public in Pakistan.86(3) of the Ordinance provides that the owner of a well known trademark is entitled to restrain, by injunction, the use in Pakistan of a trademark which or essential part of which is identical/deceptively similar to the well known trademark:
1.in relation to identical/similar goods or services where such use is likely to cause confusion; or
2.where such use causes dilution of the distinctive quality of the well known trademark.
2. Well Known Trademarks and Non-Competing Goods
The most important aspect of well known trademarks is that the protection extends beyond the class of goods/services. The Ordinance provides for this as a special right for well known marks in Section 17 which deals with the "relative grounds of refusal" of a trademark. Section 17(3) of the Ordinance reads:
"A trade mark which- (a) is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered. shall not be registered if, or to the extent that, the earlier trade mark has a reputation in Pakistan and the use of the later mark without due cause would take unfair advantage of, or be detrimental to , the distinctive character or the repute of the earlier trade mark".
Section 18(1)( c) of the Ordinance provides that an earlier trademark means a trademark which was entitled to protection under the Paris Convention as a well known trademark.40 (4) of the Ordinance provides that a person shall infringe a registered trade mark if the person uses in the course of trade mark which- (a) is identical with or deceptively similar to the trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered. Where the trade mark is a well known trade mark, or has a reputation in Pakistan, and the use of the mark being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
3. Protection of Unregistered Well Known Trademarks under the Law of Passing Off:
Passing off is a common law . In passing off, the plaintiff is required to meet certain well entrenched qualifications in order to succeed. These test evolved as a result of successive court dicta, takes various forms ranging from the most basic ones calling for meeting of only the bare essential to more elaborate mandating the proof of supplementary conditions. The three essential constituents, viz., goodwill, misrepresentation and the damage are the primary elements, a successful claimant must prove, and are collectively referred to as the classical trinity of passing off.courts have been applying the common law action of passing off for the protection of well known trademarks in Pakistan for years. Keeping in mind the development in the protection of unregistered well known trademarks through passing off actions, the Ordinance under Section 17(4)(a) provides:
"A trade mark shall not be registered if, or to the extent that, its use in Pakistanliable to be prevented-
(a) by virtue of any law, in particular, the law of passing off, protecting an
unregistered trade mark or other mark used in the course of trade".
Section 46 (3) of the Ordinance provides that nothing in the Ordinance shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or services as services provided by another person, or the remedies in respect thereof.
Also, Subsection 3 of Section 39 states that without prejudice to the right of the proprietor of a registered Trade Mark to obtain any relief under any other law for the time being in force, the proprietor shall also have the right to obtain relief under this Ordinance if the Trade Mark is infringed.
4. Protection of Well Known Trademarks under Unfair Competition
The Trademarks Ordinance, 2001 also provide protection to the well known trademarks under the law of unfair competition. Section 67 of the Ordinance provides that any act of competition contrary to honest business practices in industrial or commercial matters such as fraudulently registering or applying for registration of a trade mark is an act of unfair competition. And an action against unfair competition may be brought before a District Court of competent jurisdiction.14(4) of the Ordinance, which deals with the absolute grounds for refusal of registration, provides that a trade mark shall not be registered if or to the extent that the application is made in bad faith.
However, subsection 4 of Section 86 of the Ordinance provides that the continuation of any bona fide use of a trademark begun before the commencement of the Ordinance shall not be effected by the provisions of this Ordinance.
5. Opposition to Registration of a Trademark by Proprietor of a Well-Known Trademark
Pakistan Trademark Ordinance, 2001 provides an opportunity to the proprietor of a well known trademark to oppose an application for registration of trademark which is identical/deceptively similar to the well known trademark in Pakistan and the use of which is likely to cause dilution/confusion. Section 29 of the Ordinance provides grounds on the basis of which registration of a trademark may be opposed. Section 29(4) reads as follows:
"The registration of trade mark in respect of particular goods or services may be opposed on the grounds that- (a) it is substantially identical with, or deceptively similar to, a well known trade mark to a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Pakistan; and (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would cause dilution or would be likely to deceive or cause confusion".
6. Approach of the National Courts
The Pakistani courts have long acknowledged the importance of protecting the rights of IP owners and have extended protection to well-known foreign trademarks far beyond the traditional scope of such protection. Their approach when dealing with issues relating to IP rights has been forward looking.first key judgment in this area was given in 1979 by the Sindh High Court in Societ De Fabrication v Deputy Registrar of Trademarks. In protecting an international trademark the court observed: "The conduct of the respondent in appropriating trademarks of foreign owners is not properтАж It is common knowledge that trade in French perfumery is of international character. With the revival of international trade and international publicity, the rights of owners of foreign trademarks ought to receive some safeguard unless it is clear from the evidence that the foreign owners have abandoned their intention of marketing their products under the mark in this country." This trend was confirmed in Alpha Sewing Machine v Registrar of Trademarks, in which the Supreme Court of Pakistan approved the following observations of the Lahore High Court: "With the proliferation of the means of communication media the names and products of major world-renowned companies are getting the attention of the public at large in all civilized countries of the world and Pakistan is no exception. Extensive travelling abroad in the recent past has made it possible for the people of Pakistan to have knowledge of internationally renowned companies and their products." This judicial trend was explained by the Sindh High Court in Morphy Richards Ltd v Registrar of Trademarks as follows: "An enactment on trademarks is essentially an international statute, catering to national and international sensibilitiesтАж We are living in an information age where the world has become a veritable global village." Globalisation thrives on the honesty of business practices. The judgments delivered by the Pakistani courts on IP rights (particularly in relation to the adoption and use of marks, the marketing of novel products and the use of