UNDERSTANDING TRADEMARK AND ROLE OF JUDICIARY IN ENFORCEMENT OF THE RIGHTS

UMAR SAMEED
(ADVOCATE HIGH COURT)

“A word, name, logo or slogan used by a person selling goods or services to distinguish and identify their goods or services from those of another”.
– Duhaime’s Law Dictionary on Trademark

 

The dawn of new millennium has brought significant changes in the domain of intellectual property laws and the most progressively used field amongst intellectual property is trade mark. Therefore, in order to keep pace with the advanced world, one should understand the concept of trade mark, its registration process with a special reference to infringement keeping in view the provisions of the Trade Mark Ordinance, 2001. Although, the law was made in 2001, intellectual property tribunals were established under the Intellectual Property Organization of Pakistan Act 2012 which becomes functional in 2015. At the heart of these laws are the hard questions on infringement and enforcement of intellectual property rights in realm of trade mark. The situation of enforcement of trade mark rights is in abysmal state. Need of the hour is a pro-active role of judiciary in enforcing intellectual property rights. This paper will put light on the existing law of trade mark and the role of judiciary in protecting and securing rights of the people. In addition to this, a critical analysis on role of judiciary so far with some deficiencies and recommendations in this regard to comprehend the problems of infringement and eventually enforcing intellectual property rights of the people.

Intellectual Property refers to creation of mind and it allows people to attest their inventiveness and innovation in various fields. There are different sort of intellectual property rights and one amongst them is ‘trade mark’. In modern day world, trade mark has got immense importance as it helps to identify the products by its makers and providers. It allows the consumer to make its products unique and distinctive from low-grade replicas. In Pakistan, trademarks are protected by “The Trade Marks Ordinance, 2001” along with Trade Mark Rules 2004. The essence of trade mark law is to deal with the nature of rights which individuals can obtain in realm of trade marks. Primarily, a trade mark law, either common or statutory law, is based on three major aspects. These are: similarity of goods, distinctiveness and deceptive similarity of marks. The Trade marks Ordinance, 2001 defines a trade mark as any mark capable of being represented graphically which is capable of being distinguishing goods or services of one undertaking from those of other undertakings.

Intellectual property rights entail patents, copyright, design and trademarks. They are termed as intellectual property because these are the creation of an intellectual effort, but trademark. A patent provides its owner to use the patented product handily for a specific period of time. Similarly, the owner of a registered design has the exclusive right to apply his design for a specific period of time. In the same way, a copyright provides the author an exclusive right to reproduce and make copies of the work or art in which copyright subsists for a specific period of time. While on the other hand, it is not mandatory that a trademark would have to be a result of an innovative work but it allows the owner of the mark to get an exclusive right in term of particular goods and services. It is pertinent to mention here that the law of trade mark across the world is based on three principal basic concepts namely:

(a)      Distinctiveness or distinctive character, or capable of distinguishing

(b)      Deceptive similarity or near resemblance of marks

(c)      Same description or similarity of goods

The essence of trade mark law across the globe is almost the same i.e. to allow registration and effective protection of goods and services along with to prevent from making of second-rate goods or substandard replicas.

Trademarks can be broadly classified into three major categories. These are:

1. i)        Collective Marks

The Section 82 of the Trade Mark Ordinance, 2001 deals with the collective marks. A collective mark is a mark that is used by one member of an organization but the mark is registered as of an association. In words of the said ordinance, a collective mark shall be a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

1. ii)       Certification Mark

A certification mark refers to a mark which indicates specific qualities of goods and services in relation to the mark that is registered. A mandatory requirement of a certification mark to get registered is that the entity is capable to certify. Section 83 of the Trade Mark Ordinance, 2001 deals with the certification marks subject to the provisions of Second Schedule.

iii)      Domain Names

As enunciated in Section 84 of the Trade Mark Ordinance, 2001 deals with the domain names. It entails that it must be a user-friendly substitute for an internet address.

PROCESS OF REGISTRATION OF A TRADE MARK

From a practical perspective, the most potent thing to understand regarding a trademark is to have comprehensive knowledge of how trademark is registered. The Trade Mark Ordinance of 2001 provides the process with which a trademark can be registered. The step wise procedure for registration of a trademark is as follows:

1. i)        Search
2. ii)       Filing of Application

iii)      Examination & Publication

1. iv)      Opposition Procedure
2. v)       Issuance of Registration Certificate
3. vi)      Duration and Renewal of Registration

INFRINGEMENT OF TRADE MARK

A trade mark is obtained to create a distinctive reputation in respect of goods or services provided to consumers. Trade marks are chosen wisely and with special care so that it can create a sense of originality of the goods or services in a way to create repute in the course of business. It is said that a better trademark is the prime salesman of the goods. Therefore, the concept of distinctiveness is the hallmark of trademark. At this juncture, the concept of infringement becomes much more important because the sole purpose and essence of law is to provide safeguards and protection to the people so does the Trade Mark Ordinance, 2001 has. Section 40 of the Ordinance describes infringement of a registered Trade Mark.

The concept of infringement is same as of trespass. A person is said to infringe a registered trademark when he uses identical, similar, deceptive or with near resemblance of a mark which is registered under the provisions of this ordinance. In case of infringement, usually the principle question is what the alleged infringer is doing, irrespective of a registration case in which weight put on the question as to what someone might do. Another potent aspect in the concept of infringement is that an infringement is said to be made when it is used in the territories of the rights covered by the registration. Therefore, in order to proceed with the infringement, an act has to be made in Pakistan. Similarly, the illegal use of the registered mark is solely for trade purposes. Mere personal use of goods bearing a registered trademark does not constitute an infringement. In case of deceptive similarity, when two marks are identical, then there is no question left and case of infringement is clearly made out.  It is pertinent to mention here that in case of initiation of infringement proceedings, the onus of proof lies on the plaintiff. So, when an infringement is made out, role of judiciary comes into play under Chapter V of the Trade Mark Ordinance, 2001.

ROLE OF JUDICIARY IN IMPLEMENTATION OF IP LAWS

Independence of judiciary is the touchstone of every progressive society. A society cannot flourish without its judiciary functioning. That is why, in every developed country, the role of judiciary is of huge importance. The age we live in, is tantamount as an age of information technology and the most daunting challenge for judiciary in way of dispensing justice is cope with the protection of intellectual property rights of the people. As intellectual property is an intangible property and Courts being guardian and protector of the rights citizens has a prime duty to protect this intangible property. For the purposes of securing and protecting the rights of people, the Federal Government of Pakistan establishes certain intellectual property tribunals.

ESTABLISHMENT OF INTELLECTUAL PROPERTY TRIBUNALS

Intellectual Property Tribunals were set up by the Federal Government after enactment of Intellectual Property Organization of Pakistan Act, 2012. Section 16 of the said Act deals with the establishment of intellectual property tribunals. It further elaborates that an intellectual property tribunal shall be presided over by a presiding officer who:

1. a)       has been a judge of High Court; or
2. b)       is or has been a District and Sessions Judge; or
3. c)       is an advocate qualified for an appointment as Judge of the High Court.

 

POWERS OF THE TRIBUNAL

The Federal Government vide section 17 of the Intellectual Property Organization of Pakistan Act 2012 empowers the intellectual property tribunals to exercise all powers of a Civil Court under the Code of Civil Procedure, 1908 and to exercise powers of criminal jurisdiction to try offences which are made punishable under the Intellectual Property Organization of Pakistan Act 2012 and have the same powers as vested in a sessions Court under the Code of Criminal Procedure, 1898. In addition to this, section 17 of this Act enshrines that the proceedings before this Tribunal shall be considered as judicial proceedings and all the cases related to intellectual property rights pending before other Courts will be transferred before these tribunals.

A STATISTICAL GLANCE AT THE INTELLECTUAL PROPERTY TRIBUNALS

Albeit, intellectual property tribunals have been established in the country by the enactment of Intellectual Property Organization of Pakistan Act 2012 but the ground reality gives a gruesome picture of the state of enforcement of intellectual property rights on one hand and the interest of State in enforcing such rights on the other.

1. a)     Number of Intellectual Property tribunals

Presently, the numbers of Intellectual property tribunals which are profoundly made under the Intellectual Property Organization of Pakistan Act of 2012 are just 3 in the whole country for 207 million people. These are:

1. Intellectual property tribunal, Lahore
2. Intellectual property tribunal, Karachi

iii. Intellectual property tribunal, Islamabad

 

This tribunal sits at the capital city of the country i.e. Islamabad. The worrisome aspect in this case is also the jurisdiction of the tribunal; which is not only of whole Islamabad Capital Territory but also the province of Khyber Pakhtunkhwa (KPK). This means that the whole population of the province of KPK and Islamabad Capital Territory has to approach the Intellectual Property Tribunal, Islamabad for initiating any legal proceedings.

INSTITUTION OF SUITS IN INTELLECTUAL PROPERTY TRIBUNALS

Intellectual Property Tribunals are established after the enactment of Intellectual Property Organization of Pakistan Act, 2012. These tribunals become functional in October, 2015 and cases pending all over the Punjab are transferred to Lahore Tribunal. According to the data collected manually from the sole intellectual property tribunal of Punjab i.e. Lahore, the newly instituted cases along with already filed cases which are being transferred to this Tribunal are 734 in year 2015-16. The number of cases which are disposed of during the same period was 117. Resultantly, the pending cases in such period were 608. Similarly, in year of 2016-17, the number of newly instituted cases along with transferred ones are 384 and the number of disposed of cases in the same period were 273. Resultantly, the pending cases in the same period were 720. It is pertinent to mention here that most of the cases are transferred to this Tribunal which has already been filed over the years. Furthermore, it is worth mentioning here that these figures cover all the fields i.e. patents, copyrights, trademarks and designs.

As per data available from the office of intellectual property, in year 2006-07, Fourteen thousand Three hundred and Nine (14,309) applications has been received by the intellectual property office. And against these applications, only Six thousand Five hundred and Thirteen (6,513) registrations have been granted. On the other hand, in year 2015-16, thirty-seven thousand eight hundred and fifty-seven (37,857) applications has been received by the intellectual property office. And against these applications, only eleven thousand eight hundred and eleven (11,811) registrations have been granted. So, keeping in view the steep rise in the applications for registration on one hand and the sorry figure of institution of cases in intellectual property tribunals on the other, one can easily figure out gruesome picture of the enforcement of rights regarding intellectual property in general and trademark in particular.

CRITICAL ANALYSIS OF THE ABOVE IN REALM OF JURISDICTION

The sorry state of the things is that even in this epoch of Information Technology where distances have been minimized by using technology and where every developed as well as developing country, rather progressively, make laws to provide justice at the threshold. But, the extreme unpleasant scenario in our beloved green land is, as discussed above, that only three Intellectual Property Tribunals are working. Furthermore, one can easily ascertain the fact that if a person’s trademark rights has been infringed and he belongs to Rahim Yar Khan or Bahawalnagar, he has to travel all the way hundreds of miles to file a suit against the infringer at Intellectual Property Tribunal Lahore. The situation is more gruesome at other tribunals. For instance, where a person is residing at district Chaghi or Pashin has to travel all the way to Karachi in order to initiate proceedings. So, there is a dire need to increase the number of tribunals in order to protect the rights of the owners of trademarks as well as other intellectual property fields.

CRITICAL ANALYSIS OF THE ABOVE IN REALM OF CASES

As far as the cases are concerned, the state of things in Pakistan is troublesome. The most horrendous aspect of this is that the Courts are being the guardian and protectors of rights of citizens. The authorities need to think over the aspect that is why institution of cases is on the lowest ebb. A glaring reason for this is obviously the Federal Government has sanctioned only three intellectual property tribunals with colossal jurisdictions. Therefore, it is imperative that the litigants would be reluctant to travel such lengths.

DEFICIENCIES IN WAY OF JUDICIARY WHILE ENFORCING RIGHTS

Independence of judiciary is the hallmark of every democratic society. In Pakistan, there was a mass movement for restoration along with independence of judiciary in 2007. It is considered that the judiciary is working independently since then. However, as far as intellectual property rights are concerned, there was, is and if working on the same lines, will be a bumpy road for judiciary in enforcing intellectual property rights. Keeping in view, judicial arms of the intellectual property rights, some of the following are major discrepancies.

1. Number of tribunals and their jurisdiction

There has been a lot of discussion in the previous paragraphs on the number of intellectual property tribunals and their jurisdiction. Without going any further in to this reason, it is evident from the statistics that this is a huge reason for judiciary in way of enforcing intellectual property rights.

1. Inability of rights holder to enforce their IP rights

A major drawback in enforcement of intellectual property rights is the inability of the ones who have exclusive right to use their IP rights to enforce them properly. There has been a tendency that rights holder normally does not bother to enforce their rights. The reason therein is that the rights holders apparently do not engage in infringement proceedings. An example of this reason is our markets are flooded with second rate goods in the name of other trademarks, but, no one cares about enforcing their rights.

iii.    Inability to obtain evidence

Where no one bothers to enforce his intellectual property rights, one who dares to do so has been circled by the provision of the law. A major provision in this case is in realm of infringement proceedings, the burden of proof lies on the plaintiff. It is pertinent to mention here that one who initiates the proceedings has to produce evidence on his own.

1. Inability to obtain preliminary injunctions

Keeping aside the hardships of collecting evidence, another reason in way of enforcement of intellectual property rights is the difficulty in obtaining preliminary injunctions. With only three tribunals working, the rights holders face too many impediments while obtaining the preliminary relief. The advantage of this goes directly to the infringer who continuously uses the mark.

1. Interminable delay in final judgments

With all these worrisome factors, the interminable delay in final judgments also hinders the course of enforcing intellectual property rights. With such kind of delays, rights holders usually refrain from initiating any infringement proceedings.

1. Inadequate damage awards and sanctions

The most daunting challenge in way of enforcing intellectual property rights in general and trademark rights in particular, is the inadequate and insufficient damage awards and sanctions. It is often taunted that intellectual property tribunals have no teeth. A major theory of punishment is to create deterrence and intellectual property tribunals do not award sanctions or damages which create a reasonable deterrence amongst the wrongdoers. For example, the Intellectual Property Tribunal, Lahore started its work in October 2015, and since then the Honourable Tribunal did not award any sort of imprisonment to anyone in any manner whatsoever. In addition to this, the penalties which were usually awarded are merely a fine of Ten thousand to fifteen thousand. Unfortunately, the Intellectual Property Tribunals are not awarding damages or sanctions with full force and verve.

 

RECOMMENDATIONS TO FULLY IMPLEMENT IP LAWS

Twenty first century is the century of globalization. The world shrinks into a global village where the new reality in the multi-national companies with their immense capital. In order to move side by side with this rapidly advancing world, a society needs to make law that can cope with any challenge therein. The dilemma of our country is on the end of enforcement of intellectual property rights. As some of the deficiencies have been discussed above, it is potent to suggest some recommendations in this regard.

1. Expansion of remedies granted

In order to strengthen the role of judiciary in enforcing intellectual property rights, there is a dynamic change required in the mood of judiciary while disposing of cases. From mere preliminary injunctions to restraining orders, need of the hour is to take a big stride in protecting rights of citizens, the judiciary needs to award high punitive and exemplary damages. So that the wrongdoers will have a sense of deterrence while doing any form of infringement.

1. Protection of trademark

At a lot of instances, the Honourable Superior Judiciary, vide their judgments, has made some stringent protection of the trademarks. For instance, a beverage named ‘Cola Next’ has been introduced with veteran actress Nargis Fakhri in its ad, the Coca Cola initiated infringement proceedings against the Cola Next, which results in ban on the same. In this case, the judiciary took mandatory steps to ensure the trademark rights of the holders. Such kind of decision needs to be regularly made in an earnest manner in order to protect and enforce the rights of the holders.

III.   Equivalent progressive and creative attitude of Courts across the country

Another dire need at the moment in our judicial arm of the intellectual property organization is the equally progressive and creative attitude of judiciary all across the country. For instance, the performance of intellectual property tribunals and superior Courts of Sindh is far more progressive and up to the mark than other tribunals at other parts of the country. A dire need of equivalent progressiveness is required in this regard.

          Illustration

             The Honourable Sindh High Court in a case of NOVARTIS AG versus NABIQASIM INDUSTRIES PVT LTD observed that two medicines namely LESCOL and DESCOL are used for treatment of different ailments and their generic names are also different, therefore a small mistake could be fatal for the user of medicine and no possibility of deception could be allowed. The Honourable Sindh High Court further observed that public health concerns (drug name mistakes) are not strictly relevant to the issue of trade mark registration, however, the same may be considered when assessing the issue of confusion between names of drugs. The Honourable Sindh High Court issues the grant of temporary relief in favour of the plaintiff.

1. Experts along with judges on the bench

Another proposed change in the law which can help in enforcing the intellectual property rights of the holders is that the one expert of intellectual property matters can be allowed to sit on the bench along with the judge in the intellectual property tribunals. So that in case of any technical matter, the expert provides his opinion straightaway and, in this way, expeditious justice may be made. Although, there are provisions in the Intellectual Property Organization of Pakistan Act 2012 that a judge may take opinion of an expert, and expert’s remuneration and other expenditures will be bear by the parties. But, as stated above, this will take time and eventually allows the infringer to wriggle out of the hands of law.

1. Increase in number of tribunals

With all the above-mentioned suggestions, a far more important in this regard, which will couple the functioning of the judiciary, is the increase in the number of the intellectual property tribunals. As stated earlier, only 3 tribunals are currently established by the Federal Government with vast jurisdictions. An increase in the number of tribunals will certainly provides an impetus to judiciary in enforcing rights of the holders.

In a nutshell, keeping in view the above discussion, one can easily assess that a pro-active role is required firstly from the Federal or Provincial Government and secondly from the judiciary. Because when there is a will there is a way. A bleak past, a murky present in no way means a foredoomed future. The gruesome picture of current statistics does not mean that the situation cannot be improved. A nationwide campaign to aware the rights holders about their rights and the protections guaranteed under the law along with an increase in the number of intellectual property tribunals will definitely ameliorate the process of enforcement of intellectual property rights.

References Extracted From:

Duhaime’s Law Dictionary

Vader, David. Intellectual Property Law: Copyright, Patents, Trade-Marks [First Edition]. Concord, ON: Irwin Law, 1997.

Law of Trade Mark and Passing of By P. Narayanan, Sixth Edition.

The Trade Mark Ordinance, 2001.

The Intellectual Property Organization of Pakistan Act, 2012.

2017 CLD 1136.

2016 CLD 2167.

Intellectual Property organization officeLahore/ Tribunal.

Jayashree Watal, intellectual property rights in the WTO and developing countries, 3rd ed. 200