PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
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 copy - right proceedings in Pakistan is provided by the Trade Mark Ordinance and the Copyright Ordi - nance, respectively. These matters are heard in specialised courts (IPTs; see 7.5 Lawsuit Pro- cedure ) with provincial jurisdiction. The pro - ceedings in these tribunals are adversarial, and are presided over by a single judge who makes decisions based on both written and oral sub - missions and pleadings. The judge is entitled to seek expert advice and to call upon expert wit - nesses in cases relating to technical expertise. 8.2 Effect of Registration The registration of a trade mark and/or copyright is considered as prima facie, evidence of propri - etorship, which could result in instant relief by the courts in the form of an interlocutory injunc - tion against any unauthorised use. Section 40 of the Trade Marks 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 reg - istered 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, includ - ing trial and appeal, vary from PKR2.5 million to PKR3 million or more. Recovering costs is pro - vided for under the law, though Pakistani courts are generally hesitant in this regard and, when
granted, the amounts are limited to a small frac - tion 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. These defences are not necessarily total bars to liability, and their applicability depends on the specific facts of each case. The elements of these defences may vary and their recognition may be influenced by statutory provisions, com - mon law principles and judicial interpretation. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Pakistani law recognises “fair use” under the Copyright Ordinance. Section 57 of the Ordi - nance outlines certain acts that do not consti - tute infringement of copyright. These include fair use exceptions, such as fair dealing with a literary, dramatic, musical or artistic work for the purpose of research or private study, criti - cism or review, whether of that work or of any other work. Furthermore, the section expands
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