PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
• that the balance of convenience should be in favour of the applicant. The usual defences may include delay, laches, no likelihood of confusion and deception, prior use, honest concurrent user and acquiescence; these may tilt the prima facie, case in the defend - ant’s favour, who may prove that any injunctive relief is to the prejudice of their legal and con - stitutional rights. 10.2 Monetary Remedies Section 46(2) of the Trade Marks Ordinance stip - ulates that, in an action for infringement, all such relief by way of damages, injunctions, accounts or otherwise shall be available to the proprietor of the trade mark as is available in respect of the infringement of any other property right. Damages are typically calculated based on the actual harm suffered by the owner, the profits gained by the infringer and – for criminal rem - edies – statutory fines specified in the law. The availability of certain monetary remedies, such as statutory damages, may be influenced by whether the trade mark or copyright is regis - tered, with registration often enhancing the rem - edies awarded. While the law does provide for monetary rem - edies, the courts have often shown reluctance in awarding these to the plaintiff. 10.3 Attorneys’ Fees and Costs While the plaintiff can claim court fees, expenses and attorney fees in the damages sought, courts rarely grant such compensation. 10.4 Ex Parte Relief Ex parte relief is granted to the trade mark/copy - right owner in the case of blatant infringement, and is very commonly granted. That said, it is
not a matter of right and cannot be appealed against unless time-sensitive and compelling reasons are provided. Nonetheless, the Copyright Ordinance does pro - vide for ex parte relief as a matter of right under Section 60-A. This allows copyright owners to seek immediate provisional orders from a tribu - nal, without notice to the other party/infringer, in order to prevent irreparable harm or to preserve evidence which may be destroyed. 10.5 Customs Seizures of Counterfeits or Parallel Imports Pakistan’s legal system has implemented border enforcement mechanisms to combat exporta - tion and importation of counterfeits from and into Pakistan. Proprietors of trade marks and copy - rights can file complaints against the clearance of counterfeit or infringed goods, as empowered by the Customs Rules 2001 Statutory Regulato - ry Order (SRO) No 170(1)/2017, dated 16 March 2017. Through this SRO, the customs authority has established an independent directorate for the enforcement of IP rights, and provides that, upon a complaint, customs officers may seize counterfeit/infringing goods during importation and exportation. The relevant SRO mandates an independent procedure for the adjudication of such matters, and requires an amount to be provided as security by the complainant. Moreover, under the Trade Marks Ordinance, a proprietor of a registered trade mark can provide written notice to the Collector of Customs, des - ignating infringing goods as prohibited. Subse - quently, the Collector of Customs is authorised to seize and destroy such goods, following pre - scribed procedures outlined in the law. It is pertinent to mention that parallel imports are allowed in Pakistan, subject to payment of the
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