Trade Mark Litigation

Pakistan

United Trade Mark & Patent Services M. Farrukh Irfan Khan

1. Sources of Law

1.1 What are the principal sources of law and regulation relating to trade marks and trade mark litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties).

The principal sources of law relating to trade marks and trade mark litigation is Trade Marks Ordinance 2001(XIX of 2001), promulgated through SRO 212(I)/2004 on 12 April 2004 and Trade Mark Rules 2004 promulgated through SRO 211(I)/2004 on the 10 April 2004.
Other related substantive and procedural laws are as follows:

Pakistan Penal Code 1860;
Specific Relief Act 1877 (I of 1877);
Civil Procedure Code 1908 (Act V of 1908);
Code of Criminal Procedure 1898; and
Customs Act 1969 (IV of 1969).

Additionally, Pakistan is member of international treaties including the Paris Convention for the Protection of Industrial Property (since July 2004) and Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) (since 1995). Trade mark law of Pakistan provides a mechanism for protection of the marks of Convention Countries. Furthermore, superior courts of Pakistan have consistently handed down judgments upholding and recognising the rights of foreign trade mark owners.
Previous decisions of a court are not binding upon the court of the same jurisdiction, however, these are of persuasive nature.
On the other hand, Pakistani law recognises the doctrine of stare decisis. The Constitution of Islamic Republic of Pakistan 1973 explicitly states that decisions of the Supreme Court of Pakistan shall be binding upon all other courts in Pakistan and decisions of the High Court shall be binding upon all courts subordinate to it.

1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?

The primary source of the law in Pakistan is the legislation and then the judicial precedents. International treaties and Conventions are only applicable so long as they are specifically recognised by local legislation. In case of multi-jurisdictional issues or protection of trade marks of any Convention Countries, the effect of any International Treaties and Conventions shall be secondary to local legislation. In the event of conflict between the legislation and International Conventions, local legislation prevail.

2. Court and Administrative System

2.1 Can third parties oppose/request cancellation of a national or supranational (eg Benelux, Madrid Agreement and Protocol, Community Trade Marks) trade mark application/registration in your country? If so, on what grounds? Please briefly describe the opposition/cancellation procedure(s).

Third parties can oppose/request cancellation of a national trade mark application/ registration in Pakistan.
Opposition and cancellation encompass two different regimes, the first is pre-registration and the latter is post-registration.
Cancellation of a trade mark may be sought through three distinct approaches, firstly, revocation of registration, secondly, invalidation of registration of trade mark and lastly, rectification of the register of trade marks.
The Trade Marks Ordinance 2001 provides detailed grounds upon which an opposition may be filed which are basically the same in their scope as the grounds on which an application for registration of a trade mark can be refused. As far as the registrability or un-registrability of a trade mark is concerned, the recognised criteria has been adopted in the Ordinance to the effect that the applied mark: (i) must be distinctive; (ii) should not consist or otherwise refer to the kind, quality, characteristics, purpose or value or geographical origin of the goods; (iii) should not consist of the shape which results from the nature of the goods;
(iv) should not have become customary in the current language; (v) should not contain any scandalous design or matter; (vi) should not be likely to deceive or cause confusion; (vii) or likely to hurt religious susceptibilities of the public; (viii) should not have been applied for in bad faith; and (ix) must not be identical or similar to earlier marks whether for identical or similar goods. The Ordinance specifically prohibits registration of a trade mark which is identical with or similar to an earlier trade mark if the earlier trade mark has a reputation in Pakistan, although the new trade mark is sought for goods or services which are not similar to those covered by the earlier trade mark. The Ordinance also prohibits the registration of a trade mark if its use is liable to be prevented by virtue of any law including principles of passing off protecting an unregistered trade mark or if by virtue of an earlier right of a third party by virtue of the law of copyright, design right or registered designs. In addition to such grounds a trade mark can be opposed on the basis that the mark contains or consists of a geographical indication of the goods or the mark is likely to cause dilution. All these grounds, wherever applicable, may also be considered in invalidation, revocation or rectification proceedings.
The procedure for opposition as prescribed by the rules framed under the Ordinance is that the notice of opposition can be filed within two months from the date of advertisement of an application for registration in the Trade Marks Journal and an extension of time not exceeding two months in the aggregate can be granted. Under the new rules, it is no longer mandatory to file the affidavit and evidence along with the notice of opposition. A notice of opposition is served upon the applicant who may file the counter statement within one month or within an extended period not exceeding two months in aggregate.
If the applicant files the counter statement the opponent may file a rejoinder within one month or after securing an extension of time not exceeding two months. In addition, if the applicant files the counterstatement then the opponent should file evidence by way of statutory declaration or affidavit in support of the grounds of opposition within two months from the date of receipt of copy of the counterstatement or within such period which the Registrar may allow. If the opponent files the evidence the same will be served upon the applicant and the applicant shall likewise file its evidence by way of statutory declaration or affidavit within two months from the date of receipt of the evidence or within such further period which the Registrar may allow. If the applicant files its evidence the opponent may within one month or within such further extended term as the Registrar may allow, file evidence in reply by way of statutory declaration or affidavit. Ordinarily, no further evidence will be allowed but the Registrar may, if considered appropriate, allow either party to file further evidence upon such terms as he may think fit. Thus the opposition procedure is somewhat cumbersome and lengthy.
The same procedure is also applicable to revocation, invalidation or rectification actions filed before the Registrar of Trade Marks. On the other hand, if these cancellation proceedings are filed in the High Court, the procedure prescribed by the Civil Procedure Code applies.

2.2 In which courts are trade marks enforced? Are they specialised trade marks courts? If not, what level of expertise can a trade mark holder expect from the courts?

Civil litigation in a trade mark case is the subject matter of the District Court or High Court having jurisdiction to try the case. These courts are not trade marks/intellectual property specialised courts and judges of such courts have an average acquaintance with intellectual property law.

2.3 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?

Decisions of the Supreme Court of Pakistan are binding upon all other subordinate courts in Pakistan and decisions of the High Court are binding upon all courts subordinate to it, including District Courts which are Courts of First Instance in trade mark litigation. The Courts consider the decisions and opinions of national superior courts and to some extent consider the foreign courts opinions/judgments generally only on such issues on which the judgments of national superior courts are not available.

2.4 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or national or supranational government agency shell they be brought (eg the national Trade Mark Office or the OHIM in Alicante)?

Infringement and invalidation proceedings are conducted separately. Infringement proceedings are filed before the District Court or a High Court having jurisdiction.
On the other hand, an application for declaration of invalidity of a trade mark registration may be made by an interested party to the Registrar of Trade Marks.
If any proceedings concerning the trade mark in question are pending in the High Court or a District Court, the application for invalidity shall be made to the High Court or a District Court and in any other case, if the application has been made to the Registrar, he may at any stage of the proceedings refer the application to the High Court or a District Court.

2.5 Who can represent parties before the courts handling trade mark litigation and/or the national or supranational government agency dealing with trade mark validity issues?

Parties to trade mark litigation are represented through pleaders/advocates enrolled in the bar council and being licensed to appear before the court having jurisdiction upon the matter. In invalidation proceedings before the Registrar of Trade Marks parties may be represented through pleaders/advocates as well as registered trade mark agents/attorneys.

2.6 What is the language of the proceedings? Is there a choice of language?

The official language of the proceedings is generally English. However, Urdu may also be used as the law permits the use of Urdu in legal proceedings, however, this is very rare.

3. Substantive Law

3.1 To what extent are unregistered trade marks protected under your country’s laws?

In Pakistan, unregistered trade marks are protected, provided they are in use. A passing off action based on the infringement of an unregistered trade mark may be filed before the court having jurisdiction over the matter. In Pakistan, rights arising through prior adoption and use of a trade mark are considered to be superior to rights acquired through mere registration.

3.2 How is trade mark infringement assessed? Does protection extend to translations or to conceptually identical but graphically different trade marks?

Infringement includes a mark which is identical with, or deceptively similar to or where there exists a likelihood of confusion on the part of public, which includes the likelihood of association with the trade mark.
The protection extends to translations or to conceptually identical but graphically different trade marks, if the infringing marks portray the likelihood of association either through translation or conceptual similarity.
In Jamia Industries Ltd v Caltex Oil (Pak) Ltd reported as PLD 1984 Supreme Court 8, the Supreme Court of Pakistan while holding the ‘star device’ of Jamia similar to Caltex’s ‘Star logo’ held: ‘.....that in making comparison of the two marks, emphasis should be laid on their leading features, and that, in doing so, it should be determined as to what are the leading characteristics of each of the competing trade marks’.
In Bandenawaz Ltd v Registrar of Trade Marks, reported as PLD 1967 Karachi 492 while comparing the similarity between the deer and a stag device, it was held by the High Court of Sind: ‘For the purposes of resemblance the two marks should not be compared side by side and the question in cases of alleged conflict between two devices always is whether a person will be deceived when he sees one trade mark in the absence of the other mark’.
Therefore, the two devices were held to be similar.

3.3 Are there other causes of action for trade marks (eg dilution)?

The Trade Marks Ordinance 2001 provides other causes of action including dilution, unfair competition and misleading advertisement, etc.

3.4 Can a trade mark be enforced against a domain name, a trade name, a pseudonym or other distinctive signs?

Trade mark law explicitly provides protection against a domain name, trade name but no express provision exists with reference to pseudonyms or other distinctive signs, but the possibility of enforcement of a trade mark against a pseudonym or other distinctive signs cannot be ruled out.

3.5 On what grounds can a trade mark be invalidated?

A trade mark can be invalidated after registration on the following grounds:

it is devoid of any distinctive character;
it consists exclusively of marks or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;
it consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade;
it conflicts with an earlier trade mark.

3.6 Must use requirements be satisfied to maintain the trade mark registration? If so, is there any definition of what constitutes use?

Under the law, within the period of five years following the date of completion of registration, if a mark has not been put to bona fide use in Pakistan by the proprietor or by an authorised user, in relation to the goods or services for which it is registered, the mark is liable to be revoked on the grounds of non-use.
In terms of section 3(1)(c) of the Trade Marks Ordinance 2001 a trade mark shall be taken as used in relation to goods or services if the trade mark is used:

on any covering, packaging, document, label, band, ticket, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade;
in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services;
on a signboard or in an advertisement; or
on an invoice, list, catalogue, business letter, business paper, price list or other commercial document.

3.7 What other defences, if any, are available to an alleged infringer? Does your country’s law provide for prior user rights?

The defences available to an infringer in defence of a trade mark infringement suit generally include, honest concurrent use, prior adoption and/or user rights, acquiescence and delay in bringing legal proceedings (except where dishonest adoption is evident). The law also explicitly provides for defences of use in good faith including using a person’s name or the name of the person’s place of business, so long as such use does not result in a likelihood of confusion or otherwise interfere with an existing trade mark or other property right; or using the name of the predecessor in business of the person or the name of the predecessor’s place of business; or using a mark in good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or the time of production of goods or of the rendering of services; to indicate the intended purpose of goods, in particular as accessories or spare parts, or services; or the person uses the trade mark for the purposes of comparative advertising.

3.8 To what extent can enforcement of a trade mark expose the trade mark holder to liability for an antitrust violation?

Not applicable.

3.9 Can a court only partially invalidate a trade mark?

If a composite mark is registered comprising of more than one element and grounds for invalidation exist against any feature/element/part of it, the court may partially invalidate a trade mark to the extent of the invalid feature/element etc.

3.10 Is it possible to amend a registered trade mark during a lawsuit?

Under the provisions of Trade Marks Ordinance 2001 amendments to a registered trade mark are dealt with under section 37 according to which, the Registrar may, at the request of the proprietor, allow the amendment of a registered trade mark where the mark includes the proprietor’s name or address and the amendment is limited to alteration of that name or address and does not substantially affect the identity of the mark.
On the other hand the Registrar has the power to rectify the registered trade marks upon an application by an interested party. Therefore, if the circumstances are such that during a lawsuit, the registered proprietor needs to amend a registered trade mark, this may be amended during a lawsuit by applying to the Registrar of Trade Marks in the prescribed manner.

3.11 Are there any grounds on which an otherwise valid trade mark can be deemed unenforceable, owing to misconduct by the trade mark holder, or for some other reason (eg expiry of time limit)?

Where the owner of a trade mark has acquiesced in the use of a registered trade mark in Pakistan for a continuous period of five years from the date of registration, being aware of that use, there shall cease to be any entitlement to enforce his rights on the basis of that trade mark. However, this provision shall not apply to cases where the later trade mark has been registered in bad faith.

3.12 Can a trade mark holder bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts? Is it possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered?

A suit for infringement of a trade mark may be coupled with an action for unfair competition on the same set of facts. An action for unfair competition can also proceed parallel with the infringement proceedings. In case of an unregistered trade mark an action for passing off and unfair competition can be filed jointly as well as independently of each other.

4. Parties to Litigation

4.1 Who can sue for trade mark infringement (trade mark holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?

Apart from the proprietor of the trade mark, an exclusive licensee, non-exclusive licensee or distributor (with consent of the owner of the trade mark or by impleading the owner of the trade mark as a defendant to the suit) can sue for trade mark infringement.

4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?

It is possible to bring a lawsuit to obtain a declaratory decree on non-infringement. Such a suit may be brought under section 42 of the Specific Relief Act 1877 which deals with the discretion of the court as to declaration of the status or legal character or a right. No specific parameters have been defined under the law.

4.3 Who can be sued for trade mark infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to trade mark infringement by someone else?

In an action for infringement of a trade mark where legal person is allegedly involved, suit may be filed against its directors, managers, shareholders, employees, servants, distributors, agents, stockists, retailers or dealers/distributors.
As the common law provides remedies against inducement or contribution towards the infringement of trade mark, the same may also be used in Pakistan depending upon the evidence with reference to such inducement or contribution.

4.4 Is it possible to add or subtract parties during litigation?

At any stage of the proceedings, either upon an application by any of the parties or on its own, the court may strike out or add parties during litigation. In case of addition of a defendant, the plaint is to be amended accordingly.

5. Enforcement Options

5.1 What options are open to a trade mark holder when seeking to enforce its rights in your country?

Injunctions;
Order for erasure of offending mark;
Order for delivery up of infringing goods, material or articles;
Order as to disposal of infringing goods, material or article;
Action for infringement against importation of infringing goods; and
Initiation of criminal proceedings/cognisance by police.

5.2 Are criminal proceedings available? If so, what are the sanctions?

Initiation of criminal proceedings is another option to enforce the rights vested in a trade mark which may be initiated by lodging a complaint before the local police or by filing a criminal case in the magisterial court having jurisdiction upon the matter. The Pakistan Penal Code 1860 provides a maximum punishment of three years or fine or both in cases of using a false or counterfeit trade mark.

5.3 Are border measures available?

The Customs Act 1969 provides prohibitions and penalties relating to infringement of trade marks by way of import or export of infringing goods. The law provides various penalties that such goods shall be liable to confiscation or seizure and any person concerned with the offence shall also be liable to a penalty not exceeding twice the value of the goods.

5.4 To what extent are courts willing to grant cross-border or extra-territorial injunctions?

The courts may grant cross-border or extra-territorial injunctions depending upon the circumstances of the case. For instance where a foreign entity is involved in infringement of a trade mark and the cause of action wholly or partially occurs within the territorial jurisdiction of the court, an injunction may be granted by the court against the foreign entity. The Code of Civil Procedure 1908 provides a detailed mechanism for the execution of such an injunction.

5.5 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?

‘Torpedo’ actions abroad shall not generate any blocking effects in infringement proceedings brought in Pakistani courts.

5.6 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve trade mark disputes? How widespread are ADR methods and in which sectors? If arbitration is available to assess invalidity, will your Trade Mark Office recognise and execute an arbitral award declaring a trade mark invalid?

The issue of arbitration is not expressly dealt with by the Trade Mark Ordinance, 2001. In 2002, a new provision was added to the Code of Civil Procedure 1908 by the Code of Civil Procedure (Amendment) Ordinance 2002, which reads as follows: ‘The Court may, where it considers necessary, having regard to the facts and circumstances of the case, with the object of securing expeditious disposal of a case, in or in relation to a suit, adopt with the consent of the parties alternate dispute resolution method, including mediation and conciliation’.
In light of the above statutory provision, a matter concerning the infringement of a trade mark may be resolved through ADR and any arbitral award may be used before the Registrar of Trade Marks for the purposes of invalidation.

6. Procedure in Civil Courts

6.1 What is the format of trade mark infringement proceedings?

In Pakistan, trade mark infringement proceedings are governed by the Code of Civil Procedure 1908. There is no specific format for trade mark infringement proceedings, and the ordinary format for civil proceedings is followed.
The pleadings comprising of plaint along with documents relied upon are filed by the plaintiff. Usually along with the main suit, an application for an interim injunction is also filed. In urgent matters, where the facts and circumstances so warrant and there exists a prima facie case, the courts may also grant an ex parte interim injunction on the day the suit is filed. Notices are issued to the Defendants to appear in the court and defend the injunction application and the suit. The Defendants appear and file their reply to the injunction application as well as their defence to the suit after which, the court hears arguments from both the sides on the grant of the interim injunction. After hearing arguments, the court announces its order either granting or dismissing the interim injunction application. Usually this stage may be reached within three or nine months after filing of the suit.
The proceedings in the main suit are conducted simultaneously. The court then frames the issues to be decided and parties then lead their respective evidence in support of their cases. Once the evidence stage is completed, the court hears final arguments and passes the final judgment. This may take three to five years depending upon the jurisdiction where the proceedings are taking place.

6.2 Are disputed issues decided by a judge or a jury?

In Pakistan, all questions of law and fact are decided by the judge. In the Pakistani judicial system, there is no concept of a jury trial.

6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?

The parties may file any documents in support of their case as well as affidavits. The parties may produce witnesses in support of their case. A list of witnesses is required to be filed with the court. After recording their statement, witnesses are cross-examined by the adverse party’s counsel.
Under the provisions of Civil Procedure Code 1908 expert witnesses may be produced by the parties and may also be appointed by the court for its assistance.

6.4 To what extent is survey evidence used (eg to support acquired distinctiveness, likelihood of confusion)? What is its relevance in proceedings (eg party allegation, evidence)? Who decides which consumers are questioned in the survey (eg the court, court expert)? What level of cost should one expect to incur to carry out a survey? Are these costs recoverable from the losing party?

Survey evidence may be used to support acquired distinctiveness and/or likelihood of confusion. Such surveys may have persuasive value in helping the court decide any issue. There is no particular guideline or any precedents which could outline as to which consumers may be questioned in the survey. However, if the survey is conducted on the orders of a court, generally the court would provide such guidelines. The costs for such survey may depend upon the extent of the survey and may be in the range of US$1,500-5,000. The costs may have to be bourne by the party which commission’s the survey and generally such costs may not be recoverable from the losing party.

6.5 Is evidence obtained for criminal proceedings admissible in civil proceedings, and vice versa?

Under the law of evidence, any evidence given in judicial proceedings or before any person authorised by law to record the evidence, such evidence may be admissible in subsequent proceedings between the same parties or their representatives.

6.6 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?

There is no procedure for pre-trial discovery available in Pakistan, parties have to obtain and collect evidence through their own sources. Parties may obtain record/documents falling under the control of a government department such as the Trade Mark Registry.
On the other hand, for any discovery to be conducted during trial, the Civil Procedure Code 1908 provides for a detailed mechanism.

6.7 What level of proof is required for establishing infringement or invalidity?

In order to establish infringement of a trade mark, the plaintiff must prove its valid prior rights in the trade mark being infringed and must also show that the defendant’s trade mark is identical and/or confusingly similar to the trade mark of the plaintiff. The plaintiff needs to show that use of the defendant’s trade mark is likely to cause confusion and deception in the course of trade. It is not required to prove actual confusion and deception in the course of trade and only likelihood of such confusion and deception shall suffice. In cases of invalidity the plaintiff/ applicant has to establish grounds for invalidation as enunciated above.

6.8 How long do trade mark infringement proceedings typically last? Is it possible to expedite this process?

Trade mark infringement proceedings typically comprise of an application for interim injunction which accompanies the main suit for permanent injunction. Generally, an application for interim injunction may be decided in three to 12 months depending upon the jurisdiction where the suit is filed. On the other hand, the main suit which is decided after recording evidence of both sides, may be decided in three to five years unless it is settled through negotiations or settlement out of court.

6.9 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?

The defendants generally delay proceedings by seeking time to file their reply to an injunction application so as to delay the decision of an interim injunction by the court. However, courts are generally reluctant to grant any extensions of time beyond a reasonable time of two to four weeks. On the other hand, if an ex parte interim injunction is granted by the court at the time of filing of the suit, such tactics cannot be used as an injunction is already in place against the defendant and in fact the defendant is keen to expedite the proceedings so as to try and get the ex parte injunction orders vacated.
Sometimes, defendants instead of defending the suit, may file an application with the court for summary dismissal of the suit on various technical grounds such as lack of jurisdiction, non-disclosure of cause of action etc. Through such tactics, the defendants try to confuse the proceedings.
The plaintiff can counter such tactics by pre-empting any such moves and be careful while drafting the pleadings and choosing the court for filing the suit (forum shopping) so that if any such tactics are used by a clever defendant, they do not succeed.
There are not many instances where infringement proceedings may be stayed at the behest of a defendant/infringer. The only possibility that comes to mind is that in certain cases if infringement proceedings are pending in a District Court, a defendant may file a cancellation action in the High Court against the trade mark registration on the basis of which the infringement proceedings have been filed. In such a situation, under law, the infringement suit which is pending at a lower forum in the hierarchy of courts, is transferred to the relevant High Court which may stay proceedings in the infringement suit. However, such instances are very rare.

7. Final Remedies

7.1 What remedies are available against a trade mark infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?

Injunctions. There are varieties of injunctive relief as described below against trade mark infringement and the action below may be taken:
– demand that the alleged infringer stop such infringement;
– demand that the person who acts in a way likely to infringe the trade mark at issue take preventive measures; or
– demand the destruction of products constituting or resulting from such infringement, the elimination of equipment used for such infringement, and any other measures necessary to prevent such infringement.

Order for erasure of offending mark;
Order for delivery up of infringing goods, material or articles;
Order as to disposal of infringing goods, material or article; or
Damages may also be claimed. However, the Courts are conservative in awarding damages and these are rarely awarded.

7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?

It is possible to obtain a final injunction against future infringements and it is effective against the infringer’s suppliers or customers.

7.3 What monetary remedies are available against a trade mark infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?

Intellectual property infringement is a tort under common law and an owner of a trade mark may be awarded damages in some circumstances in addition to defendant’s profits.
Costs which can be recovered in a trade mark infringement suit include such expenses as filing fees, witness fees (including payments to expert witnesses), and investigation fees.

8. Preliminary Relief

8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?

Under the laws of Pakistan various preliminary reliefs are available in the form of interlocutory injunction and a preliminary decree for an account rendered by the defendant of the sale and profits wrongfully made from the sale of its products under the infringing trade mark. Interlocutory injunction may be granted if the ingredients of grant of interlocutory injunction including existence of a prima facie case of infringement, balance of convenience and irreparable loss are satisfied.

8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?

Ex parte relief in the form of an interim injunction is available, where defendant is given no notice at all. The plaintiff must establish that there exists a prima facie case in favour of the plaintiff and that refusal of an ex parte injunction would result in irreparable loss.

8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?

The plaintiff, while asking for any preliminary relief, may also request an appointment of the court commission for inspection of defendant’s premises, preparation of inventory of the infringing goods, investigation as to infringement of the trade mark and preservation of any evidence for trial as may be ordered by the court.

8.4 Can the defendant put the validity of a trade mark at issue in preliminary injunction proceedings?

The question of invalidity of a trade mark is generally raised as a defence, however, under law this is not permissible at the stage of preliminary injunction until the trade mark in question has been invalidated by the competent authority. The law provides a comprehensive legal recourse for invalidation proceedings independent of the infringement proceedings.

8.5 What is the format of preliminary injunction proceedings?

Preliminary injunction may be sought by filing an application along with the main suit for permanent injunction coupled with an affidavit on oath on behalf of the plaintiff wherein the assertions regarding the infringement of the trade mark are deposed. In this application the plaintiff requests a preliminary/interlocutory injunction until the final disposal of the case.

8.6 To what extent are documents, affidavits, witnesses, survey evidence, and/or (court-appointed or private) experts used in preliminary injunction proceedings?

To establish a prima facie case in preliminary injunction proceedings the documents constituting the cause(s) of action are very much relevant especially the affidavit(s) for grant of any preliminary relief.

8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?

Prima facie evidence is required at preliminary proceedings.

8.8 How long do preliminary injunction proceedings typically last?

Three to 12 months depending upon the jurisdiction where the proceedings are filed.

8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?

A preliminary injunction application is only maintainable along with the main suit. Once the injunction application is decided, the proceedings in the main suit start immediately.

9. Appeal Procedure

9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?

The appeal against order of the court of first instance, the final order or the order in preliminary proceedings lies before the High Court having jurisdiction in the matter. The limitation for the appeal against final order/decree is 90 days and for the appeal against an order in preliminary proceedings is also 90 days from the date of the order.

9.2 How long do appeal proceedings typically last?

Appeal proceedings may be take one to two years.

10. Litigation Costs

10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?

The court fee and expenses in infringement proceedings are generally in the range of around US$1,000. The overall costs including attorney fees depend upon the number of hearings and may be around US$5,000-10,000 through to a preliminary injunction decision. Costs for a first instance decision generally depend upon the nature of the case and the number of witnesses and the time taken to record evidence etc, however, these may be estimated to be around US$10,000. Similar for appeals which typically may cost around US$5,000-10,000.

10.2 Are costs recoverable from the losing party?

No.

11. Forthcoming legislation

11.1 What are the important developing and emerging trends in your country’s trade mark law?

With the implementation of the Trade Marks Ordinance 2001 several new concepts have been introduced by the statute.

11.2 To the extent it relates to trade mark enforcement, please outline any major trade mark legislation in the pipeline.

N/A

12. Useful references

12.1 Please identify any useful works of reference relating to trade mark law and trade mark litigation in your country, including useful websites.

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