PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
7.9 Counterfeiting and Bootlegging Trade Marks The Trade Mark Ordinance defines “counterfeit trade mark goods” as unauthorised products, including packaging, that carry a trade mark identical or indistinguishable from a validly reg - istered mark. Actions against counterfeit exportation include filing a complaint against the clearance of coun - terfeit or infringed goods in accordance with the addition to the Customs Rules 2001 Statutory Regulatory Order (SRO) No 170(1)/2017, dated 16 March 2017, which empowers customs offic - ers in Pakistan to act against the importation and exportation of counterfeit goods by seizing or confiscating the goods. Furthermore, counterfeiting is also a criminal offence covered under Section 478 of the Paki - stan Penal Code. Criminal remedies may include imprisonment, fines and destruction of infringing goods. Copyright The Copyright Ordinance defines a counter - feit copy as an imitation of another copy which appears to be – but is not – genuine. The pen - alty for distribution of counterfeit work for the purposes of business, profit or gain is punish - able with imprisonment (which may extend to three years) or with fine of up to PKR100,000, or both. Counterfeit goods may also be seized by an application under the Copyright Ordinance.
Ordinance through Section 86. Such owners have the right to seek an injunction against the use in Pakistan of a trade mark that is identical or deceptively similar to their well-known trade mark, irrespective of the registration or use of such mark in Pakistan. Similarly, a foreign copy - right holder can enforce their rights through the international treaties that Pakistan is a party to. 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 Trade Marks Ordinance for “groundless threats”, especially where they are, or apprehend being, threatened for trade mark infringement. Further, a defend - ant can only protect itself by legal action, relying on grounds such as honest and bona fide use, showing that the mark was used by the defend - ant for a period of five years with the plaintiff’s knowledge, and 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 No distinction is made in the law for small claims. All suits or actions relating to infringement shall be instituted before the IPT of competent juris - diction. 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 adjudicate on similarity and/or dissimilarity of marks during opposition proceedings; however, the tribunals are not bound by such decisions. That said, the decisions of the trade mark and copyright offices carry substantive weight.
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