Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

The Trade Marks Ordinance 2001 makes provision for civil and criminal remedies against infringement of a trademark for relief in a suit for infringement or passing-off, a penalty for falsely representing a trademark as registered, falsification of entries in the Register and applying a false trade description.

Under the Intellectual Property Act 2012, specialised IP tribunals had been devised at the provincial as well as federal level with exclusive jurisdiction to deal with IP matters. All the tribunals are now operational and all IP cases from all the courts have been transferred to the tribunals. However, IP cases in Sindh, for which the pecuniary jurisdiction vests with the Sindh High Court in Karachi, continue to be filed before the said court.

Moreover, as per the Trade Marks Ordinance 2001, the proprietor of the registered trademark may give notice in writing to the Collector of Customs to treat the infringing goods, material or articles as prohibited goods. As a result, the Collector of Customs shall seize and destroy such goods from the customs authorities as per the prescribed procedures.

Pakistan added a new chapter to the 2001 Customs Rules pertaining to intellectual property that is the result of the ongoing reforms to enhance IP rights protection in Pakistan and has some notable features. First, the new chapter also stipulates that the database maintained by the Trademarks Registry, Copyright Office and Patent Office containing the details of the IP rights registered or applied for by rights holders will be shared with the Directorate General of IP Rights Enforcement. Second, the new provisions enable brand owners to notify the customs authorities of potential goods being imported into Pakistan that may infringe their trademark rights. Once this application has been made with the Directorate General of IPR Enforcement, it would then verify the rights claimed with the relevant database and if validated, the directorate will order appropriate action to be taken. Moreover, the chapter further requires customs officials to inform the directorate in the event they suspect (ie, ‘have reasons to believe’) that goods being imported into Pakistan infringe the Trademarks Ordinance 2001 or the Copyright Act 1962.

Procedural format and timing

What is the format of the infringement proceeding?

Civil proceedings

The plaint must be filed in the tribunal or court possessing territorial and legal jurisdiction. The plaint may be, and usually is, accompanied by applications seeking an urgent hearing and interlocutory relief. After institution of a plaint, the tribunal or court conducts a preliminary hearing as to the maintainability of the suit.

If the tribunal or court finds that the plaint raises triable issues, the tribunal or court orders the summoning of the defendant on a particular date and also mentions in the order the manner and the mode by which the summons or notices must be served upon the defendant.

The defendant, upon appearance in the tribunal or court, either personally or through counsel, is usually granted time, which may extend to one month or more, to file its defence to the proceedings, in the form of a written statement as well as defence to any application for an interlocutory injunction. The time granted for filing a defence to an interlocutory injunction application is usually shorter. Once the defence has been filed, the tribunal or court sets a date for the hearing of arguments and a decision on the grant of an interlocutory injunction or orders. Parallel to this, the tribunal or court conducts proceedings on the main suit so that the main defence is filed by the defendant.

Once the main defence has been filed, but usually after the decision on any interlocutory injunction application, the tribunal or court sets down a date for framing the issues. After the issues have been framed, the plaintiff is first required to produce its evidence through witnesses, and thereafter the defendant. The evidence must be submitted by both the parties. Discovery is allowed and testimony as a rule is live. Expert witnesses are also allowed but their evidence must be limited to the matters in which they have expertise. Upon completion of the examination and cross-examination of witnesses of the parties, the case is set down for final arguments and judgment on the main legal proceedings.

The time frame for an injunction in a civil suit is approximately two to six months. Nevertheless, the final hearing of a suit might take around two to six years.

Criminal proceedings

The criminal enforcement mechanism is governed by the Criminal Procedure Code 1898. The complainant may either file a private complaint before the judicial magistrate or a formal complaint with the police.

The private complaint before the judicial magistrate is examined, and on being satisfied over its admissibility, the magistrate issues summons to the accused infringer to appear in front of the magistrate.

A complaint with the police results in the drawing up of the first information report by the police and thereafter the police institute an action and remand the infringer into custody, producing them before a judicial magistrate. The police thereafter prepare a final report and file it before the judicial magistrate, whereupon trial will commence.

The conclusion of a criminal case cannot be speculated on, as that depends on the conclusion of various procedural compliances.

Burden of proof

What is the burden of proof to establish infringement or dilution?

The certificate of registration is the most substantial proof of title in an action for infringement of trademark or dilution of reputation, and the proprietor of a registered trademark can rely on the certificate of registration to establish their case. However, it is also necessary to show that the unauthorised use of the mark by the defendant constitutes an infringement as laid down in section 40 of the Trade Marks Ordinance 2001.

With regard to passing off proceedings, the burden of proof is upon the claimant to show that there is an equitable interest or right, such interest is being violated and the violation is causing confusion or deception, or both, among consumers.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A proprietor of the registered trademark, a licensee or registered user, and a proprietor of an unregistered trademark may seek remedy for an alleged trademark violation by way of an infringement or passing-off action.

A licensee may not be able to sue for an action for trademark violation unless the licensor refuses to do so or does not do so within two months of being notified of the infringement as laid down in section 75 of the Ordinance, or unless the licence specifically grants a licensee with the right to initiate infringement proceedings.

The proprietor of the registered trademark and registered user under the registered user agreement may bring a criminal complaint, but the proprietor of an unregistered trademark may only bring an action in passing off, which is a common law remedy.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Activities that take place outside the country of registration can support a charge of infringement or dilution. In the event that infringement is occurring outside Pakistan, factors such as where the goods are being manufactured, sold or advertised need to be taken into account. In other words, the cause of action needs to be established to bring about a case in Pakistan. If no such evidence can be produced, the proprietor of a trademark may bring about an action in the country where infringement is taking place provided that the country is a signatory to TRIPS and the Paris Convention. As mentioned above, Pakistan can also implement border enforcement mechanisms allowing the proprietor of the trademark to inform the customs authorities of the infringement of the trademark in order to suspend the clearance of counterfeit or infringed goods in accordance with the new rules.

In addition to the above, the Drugs Act of 1976 dictates the definition of a counterfeit drug as a drug the label or outer packing of which is an imitation of, or resembles or so nearly resembles as to be calculated to deceive the label or outer-packing of a drug of another manufacture, the Act empowers the Drug Regulatory Authority of Pakistan to penalise the import, marketing or sale of a product bearing a deceptively similar trade dress or packaging that is another extension to the protection of trademarks or trade dress. In addition to the above, as per section 3CC of the Customs Act of 1969, the office of Directorate General of Intellectual Property Rights Enforcement was created for the enforcement of IPR laws of Pakistan especially at the import and export stages. The Customs Act and subsequent amendment to the 2001 Rules and the issuance of SRO 170(1)/2017 empower customs officers in Pakistan to take action against the import and export of counterfeit goods by seizing or confiscating the goods.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Pakistani law on discovery envisages two kinds of discovery: discovery as to facts and discovery as to documents. The law concerning discoveries as to questions of fact permits the plaintiff or the defendant to deliver, with the leave of the tribunal or court, its interrogatories in writing to the other side and must also specify as to which interrogatories have to be answered by which person. The parties may also seek documents for inspection from the other party that are or have been in the possession of such a party. It is in the tribunal or court’s discretion to grant such a request for the production of a document based upon the relevance of the document to the subject of the case.

The law restricts the scope of interrogatories to the extent that such interrogatories must relate to a real matter at issue between the parties in the proceedings; hence, no room is left for any irrelevant interrogatories. All the interrogatories must be answered through an affidavit and the tribunal or court has the authority to direct a party under interrogation to answer in more detail any of the interrogatories that have either been insufficiently answered or where the answer has been omitted.

Before any document can be directed by the tribunal or court to be produced for inspection by the applicant, the law requires that such a document should either have been referred to in the pleadings of the party or have been relied upon by such a party. In certain cases, the tribunal or court may, in its discretion, direct that a duly verified copy of the document be produced for inspection instead of the original record.

Upon the failure of any party to answer interrogatories in the manner directed by the tribunal or court or produce the document, the tribunal or court may, in the event of non-compliance with its directions, if the defaulting party is the plaintiff, dismiss its suit; otherwise, if the defaulting party is a defendant, its right to defend the suit may be closed.

Moreover, the party defaulting to comply with the direction of the tribunal or court to produce document shall not be entitled either to rely on such a document in future or otherwise cannot derive any benefit from such a document in the proceedings of the suit.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

There is no fixed time frame for an infringement or dilution or related actions for cases being dealt at the trial court level, as much depends on the individual case. A preliminary injunction takes approximately two to six months, whereas the finality of the lawsuit is attained within two to three years. The time frame for an appeal against an order against the preliminary or permanent injunction is not fixed, but may take around the same two to three-year period.

Limitation period

What is the limitation period for filing an infringement action?

As per section 81 of the Trade Marks Ordinance 2001, the limitation period for instituting an infringement suit is given that states that where the owner of an earlier trademark, or other earlier rights, has acquiesced for a continuous period of five years from the date of registration in the use of a registered trademark in Pakistan, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trademark or other right:

  • to apply for a declaration that the registration of the later trademark is invalid; or
  • to oppose the use of the later mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later mark was applied for or used in bad faith.
Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The costs associated with an infringement or dilution action, including trial preparation, trial and appeal, depend on the nature of the case and the costs of legal participants involved and may range from US$5,000 to US$25,000, or more.

Technically, a successful plaintiff may be able to recover reasonable costs depending on the tribunal or court’s assessment of the matter and the losses suffered by the successful plaintiff. However, Pakistani tribunals and courts are extremely reticent to grant costs or pecuniary relief in IP matters; in rare cases where damages or costs have been granted, they are limited to a small fraction of the cost.

Appeals

What avenues of appeal are available?

As per the Intellectual Property Act 2012, a suit for infringement of a trademark is to be instituted in the tribunal exercising jurisdiction.

Any judgment, decree or order passed by the tribunal or district court is appealable before the High Court exercising jurisdiction over the tribunal. If the appeal is filed against an order, the appeal will be heard by a single judge, but if the appeal challenges the judgment or decree passed by the district court, it shall be heard by a division bench of the High Court.

Subject to the provisions of the Constitution of Pakistan, any judgment, decree or order passed by the High Court can be appealed before the Supreme Court of Pakistan, provided special leave to appeal is granted by the Supreme Court. Any decision on such an appeal by the Supreme Court is final.

An important exception to the above is the unique jurisdiction of the High Court of Sindh at Karachi, owing to the status of Karachi as the country’s commercial hub. Civil suits valued at more than US$150,000, including trademark infringement proceedings, can be filed directly before the single judge of the High Court of Sindh exercising original jurisdiction. Any order, judgment or decree passed by a single judge shall be appealable before a division bench of the High Court of Sindh comprising two judges. Any order, judgment or decree passed by the division bench of the High Court shall be appealable before the Supreme Court of Pakistan in the same manner as described earlier.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

The plaintiff may at any time, but within the limitation period, challenge the defendant’s title to the registered mark or the validity of registration of the mark and accuse the defendant of engaging in illegal activities of infringement, dilution or any related action. In a charge of infringement or dilution or any related action, the Trade Marks Ordinance 2001 provides several defences for the person being accused of such activity. The defendant:

  • may claim prior use and honest concurrent use;
  • may claim that the use of the mark is not an infringement, as the use does not fall under the provisions of section 40 of the Trade Marks Ordinance 2001; or
  • may claim that the plaintiff is not entitled to relief by reason of estoppels, such as acquiescence or abandonment of the disputed mark.

The defendant may also claim that the mark under challenge contains a personal name or the name of the place of business or descriptive words without the use of which the defendant would have faced difficulty in describing their goods or services.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

In an action for infringement or dilution, a successful party can seek preliminary or permanent injunction, damages and account for profit. Damages may be apportioned based on the actual loss, loss of business opportunity, future profits and loss of reputation. Injunctive relief is available, preliminary or permanently, upon the fulfilment of three conditions:

  • the existence of a prima facie case in favour of the applicant;
  • an irreparable loss, damages or injuries, which may occur to the applicant if injunction is not granted; and
  • that the balance of convenience should be in favour of the applicant.

Criminal action may also be taken for applying a false trade description and falsely representing a trademark as registered, which can result in imprisonment or a fine, or both.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR techniques such as mediation and arbitration are available in Pakistan. Although not commonly used, in some cases it is a cheaper and a relatively quicker way than using litigation and is therefore encouraged. Decisions for settlements are binding upon the parties and cannot be challenged. However, enforcement of the settlement is, on some occasions, problematic if one of the parties refuses to accept the decision of the mediator or the arbitrator for settlement. The court would then have to be approached to enforce the decision of the arbitrator, which can sometimes be a lengthy process.

There is no compulsion on the parties to enter into mediation. However, if a pre-existing agreement between the parties in a dispute stipulates that the matter is to be referred to arbitration, then the courts are expected to refer the matter to arbitration rather than allowing civil proceedings to be entertained in the court.