ASIAN PATENT ATTORNEYS ASSOCIATION PAKISTAN GROUP REPORT By Ms. Khushnum Muncherji President, APAA Recognised Group of Pakistan Submitted before the 62nd APAA Council Meeting at Hanoi, Vietnam --------------------------------------------------------------------------------------------- I am pleased to present this year s Group report on developments in the IP sector in Pakistan. According to the published official Gazette, 654 patent applications were filed upto 16 August 2013 as compared to 894 which have been filed in the year 2012. While, according to the information collected from the Trade Marks Registry, the total number of trade mark applications filed uptil 12 September 2013 is 13,264 as compared to 20,350 filed in the year 2012. As far as copyright applications are concerned, during the year 2012-2013, 3162 applications were filed as compared to 3308 which were filed in the year 2011-2012. On 6 December 2012, the Intellectual Property Organization of Pakistan Act 2012 ( IPO Act 2012 ) was promulgated which has introduced drastic changes to the framework and operations of the structure of the Intellectual Property Offices. The salient features that the IPO Act 2012 is purporting to introduce are as follows: The three distinct offices of the Intellectual Property Offices in Pakistan, namely the Trademarks Registry, the Patent Office and the Copyright Office shall be integrated and become part of the Intellectual Property Organization of Pakistan. Intellectual Property Tribunals shall be established and shall have exclusive jurisdiction to try any offence under the Intellectual Property Laws. Further, all suits and civil proceedings regarding infringement of Intellectual Property Laws shall be instituted and tried in the Tribunal. All suits and proceedings pending in any other court shall stand transferred to, and be heard and disposed of by the Tribunal having jurisdiction. Appeals arising from the decisions of the Copyright Registrar or the Copyright Board; the Trade Marks Registrar; the Controller of Patents; the Registrar under the Registered Designs Ordinance 2000 and the Controller under the
2 Registered Layout-Designs of Integrated Circuit Ordinance 2000 shall be made to the Tribunal. Appeals from the decision of the Tribunal shall lie to the High Court having territorial jurisdiction over the Tribunal. The Geographical Indications law and Accession to Patent Cooperation Treaty (PCT) are under active consideration of the IPO-Pakistan and seminars in the past have taken place to discuss the same with the relevant stakeholders. In fact, IPO-Pakistan had sought comments from relevant stakeholders as well as the local body, Pakistan Industrial and Intellectual Property Rights Association (PIPRA) on accession to PCT which comments have been forwarded to IPO-Pakistan for consideration. The draft Plant Breeders Rights (PBR) Bill of Pakistan has been submitted to the parliament for enactment. Soon after its enactment, the PBR Registry will be set up under administrative control of IPO-Pakistan on modern and competitive lines to provide an effective intellectual property rights system for granting protection to the development of new plant varieties and to establish a viable seed industry for the improvement of agriculture to ensure the availability of high quality seeds and planting material to the farmers. The IPO-Pakistan is to introduce new Information Technology (IT) based-projects to facilitate and update the status of applications, which had been filed for registration of intellectual property rights. Numerous steps are being adopted by IPO-Pakistan to initiate joint ventures with different organisations for promotion of IP rights in the country and in this regard IPO is to set up an IP resource centre in the Federation of Pakistan Chambers of Commerce and Industry (FPCCI) to enhance awareness about intellectual property and assist and facilitate businessmen and industrialists to get IP registration, besides informing them about its laws, its benefits, at national and international levels. The Provincial Government of Sindh has recently imposed a 4% Sindh Sales Tax on legal services provided, on and after 1 July 2013. As the Sindh Sales Tax law does not provide any exemption for services provided to clients outside Pakistan or outside the Province, the Sales Tax is leviable on the services, legal firms provide to their clients. However, in the meantime, this levy has been challenged by the lawyers professional body, i.e., the Sindh High Court Bar Association, before the Sindh High Court and an ad interim stay has been granted until 8 October 2013 when the matter will again be taken up. The Competition Commission is also active in making the businesses aware of deceptive marketing practices which include the fraudulent use of another s trade mark, firm name or product labeling or packaging. Recent trends have indicated that complaints have been made to the Competition Commission of Pakistan ( the Commission ) for deceptive market practices on the basis of the fraudulent use of a
3 trade mark, firm name or product labelling or packaging under Section 10(2)(d) of the Competition Act 2010. While the Competition Law is relatively new and case law is still developing, two decided matters have been posted on the Commission s website in this relation. One was the case of BMW and Harley-Davidson, whereby the Commission imposed a penalty of Pakistan Rupees 250,000 (approximately USD 2,500) on a local party for fraudulently using the registered and well-known trademarks of BMW and Harley- Davidson on its products and advertising the same on its website, which was tantamount to deceptive marketing practices under Section 10 of the Competition Act. In consideration of the cooperation extended by the local party throughout the proceedings and amending their website immediately after receiving a letter from the Commission, only a token penalty was imposed on the local party by the Commission. A detailed synopsis of this case was reported by my predecessor in the 59th APAA Council Meeting. In a more recent matter of DHL Pakistan (Private) Limited (a courier service provider), a complaint was filed against seven parties, each of whom were involved in using DHL s trademark in relation to the billboards/signboards appearing in their respective shops (for courier services) without DHL s permission or authorization or consent. In the DHL Order, the Commission categorised each of the seven parties and dealt with each of them separately in terms of imposing penalty: For the first category (comprising two parties), the Commission did not impose any penalty as the party undertook not to commit such contravention in the future; For the second category (comprising one party), who assured the Commission of future compliance, the Commission was of the view that some penalty must be imposed as the practices were misleading and deceptive and therefore the penalty imposed amounted to Rs. 500,000 (approximately USD 5,000); For this category (comprising four parties) the Commission imposed a penalty of Rs. 1,000,000 (approximately USD 10,000) on each of these entities, with a view of achieving a deterrent effect and to serve in the interest of justice. Through the DHL Order passed by the Commission on 21 December 2012, the Commission directed the parties to display responsible behaviour in the future in respect of the marketing of their business and to discontinue the use of DHL s trademark and not to use the trademark in the future without due authorization. Further, in the event any party violated the Order of the Commission, the party will be directed to pay an additional penalty amounting to Rs. 500,000 (approximately USD 5,000) per day from the date of such violation.
4 Case Laws: A significant trademark-related court judgement in Pakistan is the case of Arc International v. Ahmer Mansoor [reported at 2012 CLD 226] A suit filed in the High Court of Sindh at Karachi on the basis of infringement, unfair competition, dilution, deceptive similarity of Arc International s well-known mark and device. ARC International, a French company, filed a suit for infringement restraining the Defendant (a local company manufacturing and importing household utensils under the name LUNIMARC and Archer Device) from using ARC International s trade mark LUMINARC and Archer Device for glassware on the basis of its prior adoption and worldwide use. An ex parte interim order was passed in favour of ARC International. The Learned Judge observed inter alia that the defendant was not only trying to pass off their goods by using the well-known trade mark LUMINARC and Archer Device but was also trying to mislead the consumer that the goods are of ARC International and made in France. It was further observed that ARC International has shown prima facie that their trademark is well known worldwide. The ex parte injunctive order granted previously was confirmed by the court. Another case recently decided is the case of Pioneer Cement Limited v. FECTO Cement Limited [reported in PLD 2013 Lahore 110] Appellant s mark Respondent s mark The appellant, the creator, originator, owner and user of the trademark P logo, appointed the respondent as a distributor to export its cement products bearing the P logo and Two Elephants Device. The distributor agreement was cancelled but the respondent continued to export the goods with the appellant s trademark. The appellant filed a suit for infringement and passing-off before the District Court against the respondent but the injunction application as filed by the appellant, was rejected. On refusal of the injunction application, the appellant preferred an appeal before the High Court at Lahore which appeal was allowed and the order of the District Court was set aside. The High Court at Lahore held that the distributor s appointment letter and the facts in itself were sufficient to indicate that the appellant was the prior user and prior owner of P logo and Two Elephants Device.
5 Another case recently decided is the case of Vifor (International) INC. vs. Me MON Pharmaceutical [reported in 2013 CLD 1531] The plaintiff a well-known pharmaceutical company opposed the registration of the confusingly similar mark MALTOS on the basis of its registered mark MALTOFER in Pakistan and elsewhere. The defendant never filed their response and the Registrar confirmed that the opposition proceedings had become infructuous. The plaintiff thereafter came to know that the defendant had intentions to use the mark MALTOS commercially, so the plaintiff immediately filed a suit for infringement and passing off (including damages) alongwith an injunction application on the basis that the mark MALTOS infringes the plaintiff s trademark MALTOFER having a large range of similarity; and that the plaintiff was the first to enter the field and had a prior registration; and that the MALTOS was adopted by the defendant to ride up upon the well established reputation and good will of the plaintiff; and to cause confusion and deception amongst the public. Additionally, with regards to damages, the judge concluded that since the plaintiff filed the suit as soon as they had received the knowledge of the defendant s intended use of the infringed mark MALTOS, the plaintiff thus was not entitled for any damages. Further, damages could not be awarded since the plaintiff had not led any evidence about suffering damages such damages. IP Events: WIPO Day was observed on 26 April 2013 across the globe including Pakistan with its theme: Creativity: The Next Generation. In this connection, a seminar was organised by the Intellectual Property Organisation in collaboration with the SAARC Chamber of Commerce and Industry. The event was held at the Islamabad Chamber of Commerce and Industry. At this seminar, the Director General, IPO Pakistan informed that the Government of Pakistan is fully cognizant of the interests of the creators, scientists, inventors, business community innovators and others and for that matter the Intellectual Property Organisation was established. The IPO Pakistan has also been given a permanent legal cover in the form of the IPO Act 2012. A seminar/workshop on Protection and Commercialization of Identified Geographical Indications of Punjab for Development of Small Medium Enterprises (SME) was held at the Gujranwala Chamber of Commerce and Industry wherein the Director General, Intellectual Property Organisation (IPO) said that joint efforts were being made for the promotion of geographical indications (GI) as well as small and medium enterprises and IPO Pakistan would be arranging training programmes in collaboration with Gujranwala, Gujrat and the Sialkot Chambers of Commerce for the stakeholders. Apart from that help desks will also be set up in the chambers for the benefit of people battling for geographical indications. As reported in the daily The Express Tribune dated 25 June 2013, this seminar/workshop was also
6 attended by the World Trade Organisation/Director Geographical Indications Project Chief. A roundtable consultative seminar of stakeholders and experts was held to formulate a strategy for establishment of IPR Tribunals under IPO Act. The event was conducted by IPO-Pakistan with cooperation of US Embassy, Islamabad. Thank you.