PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
7.8 Effect of Trade Mark and Copyright Office Decisions The Trade Mark or Copyright Offices do not make decisions on infringement per se. They may adjudi - cate upon similarity and/or dissimilarity of marks dur - ing opposition proceedings; however, the Tribunals are not bound by such decisions. That said, the deci - sions of the Trade Mark and Copyright Offices carry substantial weight. 7.9 Counterfeiting and Bootlegging Trade Marks The Trade Marks Ordinance defines counterfeit trade mark goods as unauthorised products or packaging bearing a mark identical or indistinguishable from a validly registered trade mark. Enforcement against counterfeit exports and imports is available under the Customs Rules, 2001 through SRO No 170 (1)/2017, which empowers customs authorities to seize or confiscate infringing goods. Counterfeiting also con - stitutes a criminal offence under Section 478 of the Pakistan Penal Code, attracting penalties including imprisonment, fines and destruction of infringing goods. Copyright The Copyright Ordinance defines a counterfeit copy as an imitation that appears to be genuine but is not. Distribution of counterfeit works for commercial gain is a criminal offence, punishable with imprisonment of up to three years, a fine of up to PKR100,000, or both. The Ordinance also provides for the seizure of counterfeit goods upon application. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings The legal framework for trade mark and copyright pro - ceedings in Pakistan is provided by the Trade Mark Ordinance and the Copyright Ordinance, respectively. These matters are heard in specialised courts known as Intellectual Property Tribunals, with provincial juris - diction. The proceedings in these tribunals are adver - sarial and presided over by a single judge who makes decisions based on both written and oral submissions
and pleadings. The judge is entitled to seek expert advice and call upon expert witnesses in cases relat - ing to technical expertise. 8.2 Effect of Registration The registration of a trade mark and/or copyright is considered as prima facie evidence of proprietorship, which could result in instant relief by the courts in the form of an interlocutory injunction against any unau - thorised use. Section 40 of the Ordinance lays out the test for infringement. Subsections (1) and (2) state that infringement occurs if the alleged infringer uses a mark that is identical to the registered trade mark in relation to identical goods or services, or if the mark is deceptively similar and used in connection with goods or services identical or similar to those for which the trade mark is registered. 8.3 Costs of Litigating Infringement Actions Costs for infringement or dilution actions, including trial and appeal, vary from PKR2.5 million to PKR3 mil - lion or more. Recovering costs is provided for under the law, though Pakistani courts are generally hesitant in this regard and, when granted, the amounts are limited to a small fraction of the total expenses. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement In Pakistan, various defences against trade mark infringement may be invoked, and some of these defences are recognised by statute. The key defences include:
• acts done in good faith; • honest concurrent use; • own-name defence; • comparative advertisement; • disclaimers on a trade mark registration; • non-use and objection for non-use; • abandonment; • rights granted by a licence; • fair use; and • acquiescence.
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