Infringement

2025 CLD 50 KARACHI-HIGH-COURT-SINDH Judicial Precedent

Ss. 86 & 40Trade markInfringementTests

Appellant (engaged in business of ball bearing and taper roller) challenged the decision of the Registrar of the Trade Marks whereby appellant's Trade Mark (NBN) was refused on the basis that Trade Mark (NTN) of the respondent was well-known

Validity

If a mark passes the "Moron in a Hurry", "Class Trinity" or "LAPP" tests, it escapes out of the legal protection umbrellaed by Trade Mark or common law, which was the case-at-hand, as NBN was not entitled to protection in the presence of NTN Trade Mark

No illegality or apparent error had been noticed in the impugned order passed by the Registrar of the Trade Marks

Appeal was dismissed , in circumstances.

2025 CLD 50 KARACHI-HIGH-COURT-SINDH Judicial Precedent

Ss. 86 & 40Well known trade mark, protection ofInfringementEffect

Appellant (engaged in business of ball bearing and taper roller) challenged the decision of the Registrar of the Trade Marks whereby appellant's Trade Mark (NBN) was refused on the basis that Trade Mark (NTN) of the respondent was well-known

Validity

Record (impugned judgment and copies of the registration certificates of respondent) reflected that Trade Mark of the respondent (NTN) was not only registered in Pakistan but many other countries of the world

Hence, Trade Mark of the respondent (NTN) was protected under S.86 of the Trade Marks Ordinance, 2001, as a well-known Trade Mark

Letters NBN adopted by the appellant were clearly disentitled from protection because of resemblance with the Trade Mark NTN, which was Trade Mark of the respondent

Appellant was to be restrained from adopting or using the said NBN Trade Mark

Law of Trade Mark is founded on the fundamental principle of protection of consumers by restricting use of similar, identical or confusingly Trade Mark by rival entities

There was no doubt that the Trade Mark NBN was only adopted by the appellant after its proprietor considered the prior use and goodwill of the Respondent' Trade Mark NTN which was in existence for many years, not only in Pakistan but around the globe in relation to ball bearing and taper roller

No illegality or apparent error had been noticed in the impugned order passed by the Registrar of the Trade Marks

Appeal was dismissed, in circumstances.

2024 CLD 1069 COMPETITION COMMISSION OF PAKISTAN Judicial Precedent

S.10(2)Deceptive marketing practiceInfringementAdvertisement content

Disseminating false or misleading information to consumers in violation of Ss. 10(2)(b) & 10(2)(c) or 10(2)(d) of Competition Act, 2010 constitutes an inherent infringement of S.10(2)(a) of Competition Act, 2010 by detrimentally impacting competitors' business interests

Deceptive marketing distorts fair competition, giving undue advantage to an undertaking in breach of law, to detriment of returns (quantitative interests), brand image and product reputation (qualitative standing) of competitors

Correlation between deceptive marketing of one undertaking and potential harm to the business interests of the competitors, is logical and verifiable

Such principle is applicable unless exceptional circumstances warrant a divergent interpretation in a specific case, potentially absolving the undertaking from liability under S. 10(2)(a) of Competition Act, 2010.

2024 CLD 1069 COMPETITION COMMISSION OF PAKISTAN Judicial Precedent

Ss. 10 & 30Deceptive marketing practiceFalse and misleading claimsInfringementAdvertisement contentDisclaimer on packagingRespondent company was issued show cause notice for using false and misleading claims about product in questionValidityThere was no report to sufficiently establish measurable superiority of the product over the products of competitorsDisclaimer on packaging of product in question was equally incomprehensible for consumers

Respondent failed to present empirical evidence or reliable data, such as comprehensive market research, sales figures, scientific studies or validation by a relevant third-party to substantiate their claim

Advertising such claim by respondent company tentamount to distribution of false and misleading information to consumers in violation of S. 10(2)(b) of Competition Act, 2010

Respondent company committed violations of S.10 of Competition Act, 2010, which continued even after issuance of show cause notice and persisted

Respondent company demonstrated clear intent of deliberate claims for same product in different countries, with worst deception occurring in Pakistan

Competition Commission imposed fine upon respondent company

Show cause notice succeeded, in circumstances.

2023 CLD 1324 ISLAMABAD Judicial Precedent

S. 40InfringementProofAppellant was aggrieved of grant of interim injunction by Intellectual Property Tribunal in favour of respondentValidity

In order to make out a case for infringement under S. 40(4) of Trade Marks Ordinance, 2001, it had to be shown that appellant used in the course of trade mark which was identical with or deceptively similar to respondent's registered trade mark or was using it in relation to goods or services which were not similar to those for which respondent's trade mark was registered

Provision of infringement would apply where trade mark was a well-known trade mark or had a reputation in Pakistan, and use of the mark, was without due cause, took unfair advantage of, or was detrimental to distinctive character or repute of the trade mark

Services offered by appellant and respondent were the same i.e., medical/laboratory services therefore, use of name "CITI LAB" by appellant prima facie resulted in confusion and deception which in turn would be detrimental to the respondent who had a registered trade mark "CITI LAB" since the year 2000 albeit in Class Heading-1

High Court declined to interfere in the order passed by Intellectual Property Tribunal as there was no illegality in the same

Appeal was dismissed, in circumstances.

2018 SCMR 1721 SUPREME-COURT-OF-UK Judicial Precedent

InfringementInjunction to prevent trademark infringement on the internet'Website blocking order'Cost of complying with enforcement of 'website blocking order'

Question as to whether an Internet Service Provider, as an innocent intermediary, could be ordered to pay the costs of implementing the injunction/'website blocking order'

Claimants, who were proprietors of a number of domestic and international trade marks registered in relation to certain luxury goods, contended that their trade marks were being infringed by the activities of certain websites which sold counterfeit goods

Online users buying from such websites were using internet services provided by the defendants/Internet Service Providers ("ISPs")

Defendants/ ISPs only provided the network by which its users could access content, but they neither provided nor stored content, thus the defendants/ISPs did not themselves infringe the relevant trademarks

Claimants sought injunctions requiring the defendants/ISPs to adopt technical measures to block, or to attempt to block, their subscribers from accessing the offending websites selling counterfeit goods

Trial judge granted the injunctions sought and also ordered the defendants/ISPs, as the unsuccessful parties albeit innocent of any wrongdoing, to bear the costs of implementing the 'website blocking order'/injunction

Court of Appeal upheld the decision to require the defendants/ISPs to bear the costs of implementing the injunctions

Held, that the Courts' jurisdiction to order parties to assist those whose rights had been invaded by a wrongdoer was not limited to orders for disclosure but was capable of extending to a website blocking order at the request of a trade mark owner

General rule, absent exceptional circumstances, was that the innocent facilitator who was the subject of the order would be entitled to the costs of compliance

Unless there were good reasons for a different order, an innocent intermediary would be entitled to be indemnified by the right holder against the costs of complying with a website blocking order in the same way as was the established position in relation to other orders granted to require an innocent party to assist the claimant in the assertion of its rights against a wrongdoer

No basis existed for requiring an Internet Service Provider serving as a mere conduit to shoulder the burden of remedying an injustice if it had no legal responsibility for the infringement and was not a volunteer but was acting under the compulsion of an order of the court

In principle the rights-holders should indemnify the ISPs for the compliance costs, subject to the limits on relief (set by European Union law)

No reason existed to believe that such an indemnity, which must be limited to reasonable costs, would exceed the limits on relief

Costs were not excessive, disproportionate or such as to impair the claimants' ability to enforce their rights

Critically, the intermediary/ISPs in the present case were legally innocent

Different considerations may apply to those engaging in caching or hosting, which involved greater participation in the infringement and which were more likely to infringe intellectual property laws

Argument that Internet Service Providers benefitted financially from the volume and appeal of the content available on the internet, including content which infringed intellectual property rights, thus, it was fair to make them contribute to the cost of enforcement, was misconceived

Such argument assumed a degree of responsibility on the part of the intermediary/ISP which did not correspond to any legal standard and it (incorrectly) implied that there was a moral or commercial responsibility in the absence of a legal one

Law was not generally concerned with moral or commercial responsibilities except as an arguable basis for legal ones

Even if a moral or commercial responsibility were relevant, it would be hard to discern one in a case like the present one

Website-blocking injunctions were sought by rights-holders in their own commercial interest, and there was no reason why the rights-holder should be entitled to look for a contribution to the cost of defending his rights from anyone other than the infringers

Supreme Court directed that the claimants/right holders shall indemnify the defendants/Internet Service Providers in respect of reasonable costs of processing and implementing the injunction/website blocking order

Appeal was allowed in circumstances.

2017 CLD 1136 KARACHI-HIGH-COURT-SINDH Judicial Precedent

S. 40Civil Procedure Code (V of 1908) O. XXXIX, Rr. 1 & 2Trade mark of a pharmaceutical productInfringementTestProtection against infringement of trade markElement of deception and confusionPublic health concernsInterim relief against use of alleged infringed trade mark, grant ofScope

Plaintiff, owner and registrant of the registered Trade Mark by the name of the LESCOL, impugned order of Trial Court whereby its interim relief, restraining the defendant from using the name DESCOL for its product, was vacated

Validity

Said two medicines were used for treatment of different ailments and their generic names were also different, therefore a small mistake could be fatal for the user of the medicine(s) and no possibility of deception could be allowed

High Court observed that while public health concerns (drug name mistakes) were not strictly relevant to the issue of trade mark registration, however, the same may be seriously considered when assessing the issue of confusion between names of drugs

When a new entrant in the drug market place adopted an already existing distinctive and established trade mark, a query needed to be made as to why the latter entrant had chosen a trade mark deceptively similar with the one that had existed long before

High Court set aside impugned order of Trial Court and restored the grant of interim relief in favour of plaintiff

Appeal was allowed, accordingly.

2016 CLD 1279 LAHORE-HIGH-COURT-LAHORE Judicial Precedent

Ss. 3, 39 & 40Rights conferred by registered trade markInfringementScopeRegistration of 'trade mark'/'service mark'Bona fide use of unregistered trade markPrinciples

Petitioner filed present petition for initiation of contempt proceedings on ground that the respondent had given the undertaking before the High Court in the First Appeal against Order to the effect that he would confine his business under his trademark, which had been registered in respect of goods and not in relation to providing services

Petitioner contended that the respondent could not use his trademark for restaurant services etc., as the same was registered for goods only

Validity

Trade Marks Ordinance, 2001 laid down provision for registration of 'trademark' as well as 'service mark'

If an original owner of a trademark failed to register its trademark in relation to its services, he could not be taken to task for that failure

Bona fide use of an unregistered trademark could not be restricted in relation to a lawful business being conducted by a bona fide owner of the business, as long as the trademark was not in conflict with the rights of a third party or against the provision of any law in force

Registered trademark could also be used, even though, the same had not been registered in relation to corresponding or some other services, as long as the use in relation to said services did not infringe the rights of third party or was contrary to any law already in force

Respondent had not given any undertaking in said appeal for not using its registered trademark in relation to services; instead, the respondent had claimed the infringement of his trademark by the petitioner, and the petitioner, having been found at fault, had been directed to make changes in his trademark in order to prevent confusion and deception amongst general public

Criminal original petition was dismissed with cost accordingly.

1951 PLD 108 PRIVY-COUNCIL Judicial Precedent

Trade mark-Infringement

What amounts to-Using one or more of its essential features.