PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
tected works. Legal remedies include seeking damages and injunctive relief under civil law as well as imprisonment and/or fines under criminal law. Specific copyright management information claims may be available, akin to Article 12 of the WIPO Copyright Treaty. 7.3 Factors in Determining Infringement Trade Marks Section 40 and 46 of the Trade Marks Ordinance outline the following as constituting trade mark infringement: • use of an identical mark for identical or similar goods/services; • use of a deceptively similar mark causing confusion; • 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 label - ling or packaging without authorisation; and • sale or possession of goods with an infringing mark, with a burden of proving innocence by demonstrating reasonable precautions and lack of suspicion. Copyright Section 56 of the Copyright Ordinance outlines the following as constituting copyright infringe - ment: • where any person, without the copyright owner’s consent or a licence from the Reg - istrar, performs 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 pur - poses, makes, sells, displays, distributes, or imports infringing copies of the work. 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 After the promulgation of the Intellectual Prop - erty Organisation of Pakistan Act 2012, all suits relating to the infringement of IP shall be insti - tuted before the Intellectual Property Tribu - nals (IPTs). The IPTs are limited by the territo - rial jurisdiction of each province. Moreover, the Sindh High Court in Karachi enjoys the special pecuniary jurisdiction of being the court of first instance for matters involving over PKR6.5 mil - lion in value; however, recently the Sindh High Court decided that the exclusive jurisdiction for IP infringement matters vests with the relevant IPT and thus, for all intended purposes, all court cases of such nature must be instituted before the said IPT. Please note that any appeals from the decision of an IPT shall be referred before the relevant High Court, and further appeal may be made to the Supreme Court of Pakistan, which shall first grant leave for appeal to admit this. Costs for infringement or dilution actions, cover - ing trial and appeal, typically range from PKR2.5 million to PKR3 million or more, including attor - neys’ fees. However, while legal representation is not mandated, it is advisable for parties to engage an attorney. Foreign trade mark owners can bring infringe - ment claims under the protection of the Paris Convention, incorporated into the Trade Marks
427 CHAMBERS.COM
Powered by FlippingBook