PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
7.4 Prerequisites and Restrictions to Filing a Lawsuit There are no prerequisites for filing a trade mark or copyright lawsuit. 7.5 Lawsuit Procedure Following the Intellectual Property Organization Act, 2012, all intellectual property infringement suits in Pakistan must be filed before the provincial Intellec - tual Property Tribunals, which now have exclusive jurisdiction over such matters. Appeals from Tribunal decisions lie with the relevant High Court, with a fur - ther appeal to the Supreme Court, subject to leave. Infringement or dilution proceedings typically cost PKR2.5 million to PKR3 million or more, including legal fees; legal representation is advisable, though not mandatory. Foreign trade mark owners may enforce rights in Pakistan under the Paris Convention, includ - ing protection of well-known marks without local reg - istration, while foreign copyright-holders may enforce their rights under applicable international treaties. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants An alleged trade mark or copyright infringer can file a suit under Section 52 of the Ordinance for “groundless threats”, especially where they are or have the appre - hension of being threatened for trade mark infringe - ment. Further, a defendant can only protect itself by defending the legal action, relying on grounds such as honest and bona fide use, showing that the mark was used by the defendant for a period of five years with the plaintiff’s knowledge, thus attracting the principle of acquiescence. Moreover, the defendant may also challenge the registration in question if the plea is that the trade mark in question does not meet the criteria laid out in the Ordinance. 7.7 Small Claims There is no distinction made in the law for small claims. All suits or actions relating to infringement shall be instituted before the Intellectual Property Tribunal of competent jurisdiction.
registration, remedies are available only through a passing-off action based on prior use. In both cases, the claimant must establish a prima facie case, includ - ing proof of rights, likelihood of irreparable harm, and balance of convenience. Copyright infringement covers unauthorised repro - duction, distribution or display of protected works. Remedies include civil relief such as injunctions and damages, as well as criminal sanctions involving fines and imprisonment. Additional claims relating to copy - right management information may also be available under applicable law. 7.3 Factors in Determining Infringement Trade Marks Sections 40 and 46 of the Trade Marks Ordinance out - line the following as constituting the infringement of a trade mark: • use of an identical mark for identical or similar goods/services; • use of a deceptively similar mark causing confu - sion; • use of a mark identical or deceptively similar to a well-known mark for dissimilar goods/services, taking unfair advantage or causing detriment; • use of the trade mark as a trade or domain name without consent; • application of the trade mark to goods labelling or packaging without authorisation; and • sale or possession of goods with an infringing mark, with a burden to prove innocence by demon - strating reasonable precautions and lack of suspi - cion. Copyright Section 56 of the Copyright Ordinance outlines the following as constituting copyright infringement: • where any person without the copyright owner’s consent or a licence from the Registrar does an action exclusive to the copyright owner; • where any person allows their place to be used for profit in a way that infringes the copyright; and • where any person who, for commercial purposes, makes, sells, displays, distributes or imports infringing copies of the work.
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