THE COMMENCEMENT
OF THE INTELLECTUAL PROPERTY LAWS
By:
Mrs. NAILA SABIR KHAN,
LLM, Advocate High Court
Part-time Lecturer,
BZU, Gillani Law College, Multan
Intellectual
property law rights strain the principles of conservative jurisdiction and the
test the existing tenets of law. The intangibility of these rights leads to
their own peculiar difficulties in creation and enforcement. A right in
immoveable is normally a perpetual right. Intellectual property rights however,
have their own different periods of existence. Immortal writers, poets or
artists have limited periods of rights in their works. Once their rights fall
in the so-called 'Public Domain', others equipped with infrastructure (i.e.
deep pockets) can exploit these rights to the hilt. There are many theories
with regard to the nature of legal rights.
(1) Austin, Holand,
Pollock, Vinogradoff and others are the exponents of the will theory. According
to this theory, a right is an inherent attribute of the human will. The subject
matter of a rights is derived from the exercise of a
human will. The will of theory was inspired and extended by the doctorine of natural rights. It is the function of law to
confer certain powers or allow certain freedom to individuals in the form of
legal rights. A legal rights a power conferred of law. According to Justice Halmes, a legal right is "nothing but a permission to
exercise certain natural powers and upon certain conditions to obtain
protection, restitution or a compensation by the aid of public force".
Again, "legal right is the power to removing or enforcing legal
limitations on conduct". According to Puchta, a
legal rights is a power over an object which by means
of this rights can but subjected to the will of the person enjoying the right.
According to
(2) Another theory is known as the interest of
theory of rights, hearing is the greatest advocate of this theory and man
English and American writers have followed him. According to Ihering: "A legal right is a legally protected
interest." Ihering does not put stress on
the element of will in a legal right. On the other hand, he puts emphasis on
the material element of interest. The basis of right is not but interest.
According to Buckland, a legal right is "an interest or an expectation
granted by law". According to the Salmond, a
legal right is "an interest recognized and directed by a rule of right".
Paton defines a legal right in terms of recognition an
protection by the legal order.
As
against this, trade marks, which are basically
concerned with business, have a perpetual existence and may continue to exist
for centuries. The period of monopoly in patents is also being enlarged
gradually. These developments are not necessarily the result of a planned
legislation.
At
present, the field of the intellectual property rights legislation is in state
of constant turmoil. Not only in Pakistan, but all over the world, the
legislatures are trying to grapple with the more and more complex fields of
intellectual property rights like biotechnology, Information Technology, Plant
Varieties, Geographical Indications, etc. With
Although
various intellectual property rights are discernible as separate rights, these
cannot be divided or compartmentalized. All these rights require a totalistic
approach. Many of these rights and principles for recognition and enforcement
of these rights are similar and interrelated. In many cases, there is an
overlapping of rights for example, a trade mark may be registered under the
provisions of the trade mark law; while, at the same time, such trade mark can
be registered as an artistic work under the provisions of the copyright law.
There
has not been a uniform and unified approach in drafting intellectual property
rights legislation. The recent intellectual property rights legislation in the
The
right to trade mark is common law right. An owner of a trade mark can always
protect such right independent of any Statutory
provision. Before the Trademarks Act of 1940, the Specific
Relief Act of 1877, recognized trade mark as a right to property.
Section
54 of the Specific Relief Act, 1877 dealt with cases in which perpetual
injunction could be granted. The explanation to that provided that, for the
purpose of S. 54, a trade mark was a property. Therefore, if a
trade mark, the Court under S. 54 had the discretion to grant a
perpetual injunction at par with any other kind of property.
In
To
any mind, it is clear that even prior to the passing of the Act the owner of a trade
mark could maintain an action for infringement of a trade mark and that action
could only be maintained on the assumption that he was the owner of the trade
mark, he had proprietary right in the trade mark.
A
trader acquires a right of property in distinctive mark merely by using it upon
or in connection with his goods irrespective of the length of such user and the
extent of his trade.
It
was also necessary to take into account the effect of various important
judicial pronouncements and simplify the procedures. It was felt that it was
necessary to take a comprehensive review of the existing law to bring the trade
marks law in
The Intellectual
Property Organization of Pakistan Ordinance, 2006 was came into force in
Pakistan and this organization got control over the all intellectual property
laws in Pakistan.
Powers and functions of Organization:--The powers and functions of the
organization shall to be to:--
(a) administration and coordinate all Government systems for the
protection and strengthening of Intellectual Property Rights under the laws
specified in Schedule and the rules and the regulations made thereunder;
(b) prescribed, regulate or implement measures and standards on
any matter related to or connected with intellectual property rights;
(c) accredit or certify and regulate any person as intellectual
property agent;
(d) levy such charges or fees as may be reasonable for services
and facilities provided by the Organization and its constituent offices;
(e) carry out such other works or activities as may be deemed by
the Organization to be necessary, with a view to making the best use of the
assets of the Organization;
(f) coordinate, monitor or engage, in conjunction with other
authorities, international agencies or Organizations, in any study or
corporation project related to intellectual property;
(g) enter into a contracts for the supply of goods or materials
or for the execution of works as may be functions;
(h) supervise and coordinate the working of all intellectual
property offices including the Patent Offices, Trade Marks Registry and
Copyright Office;
(i) evolve and
maintain a system to provide access to public documents and information
relating to any intellectual property kept or maintained by the Organization;
(j) advise the Government of Pakistan on Policy relating to
intellectual property rights;
(k) plan for development and up-gradation of the intellectual
property infrastructure and capacity and in
(l) promote education and research in the field or intellectual
property;
(m) advise the Federal Government regarding the international
negotiations in the area of intellectual property;
(n) engage in human resource development of its officers and
staff;
(o) promote awareness about intellectual property issues in
public and private sector;
(p) liaise and interact with counterpart Intellectual Property
related organizations in other countries for capacity building and exchange of
information;
(q) propose and initiate intellectual property rights
legislation for the protection of intellectual property rights in
(r) Initiate
and monitor the enforcement and protection of intellectual property rights
through designated law enforcement agencies of Government and collect related
data and information. The law enforcement agencies shall keep the Organization
regularly and appropriately informed of their actions and operations against
violations of intellectual property rights and ensures full liaison and
cooperation with the organization;
(s) Develop
working manuals references, materials and procedures in order to assist in
improving the protection of intellectual property rights;
(t) Coordinate
the implementation of foreign-aided technical assistance projects on
intellectual property; and
(u) perform and carry out any other act, thing or function
relating to intellectual property assigned to it by the Board or the Federal
Government;
The
objects of the Trade Marks laws should be the followings:--
(a) To
provide for registration of trade mark for services in addition to goods;
(b) To
refuse registration of trade marks which are an
imitation of well-known trade marks besides enlarging
the grounds for the refusal of registration;
(c) To
amplify the actors to be considered for defining a well-known mark;
(d) To
do away with the system of maintaining registration of a trade mark with
different legal rights and to provide only a single register for simplifying
the procedure for registration and with equal rights;
(e) Simplify
procedure for registration by registered user and enlarging the scope of
permitted use;
(f) Provide
for registration 'collective marks' owned by association etc;
(g) Provide
for an appellate Board for the speedy disposal of appeals rectifications and
applications which at present lie before the High Courts;
(h) Transfer
the final authority relating to registration and certification of trade marks
to the registrar instead of the Central Government;
(i) Provide for enhancement of punishment for
offences relating to trade marks as compared with the
present Copyright Act to prevent sale of spurious goods;
(j) Prohibit
the use of someone else's trade mark as part of the copyright names or name of
business concerned;
(k) Explain
the obligation of a convention country to include countries which are members
of a group or union of countries and inter-Governmental organizations;
(l) Incorporate
other provisions like amending the definition of trade mark; provision of
filing a single application for registration in more than one class and
increase the period of registration, and renewal from 7 to 10 years; making trade
mark offences cognizable; enlarging the jurisdiction of Courts to bring the law
in this respect on par with copyright law; amplifying the powers of the Courts
to grant ex parte injunction in certain cases and other related amendments;
simplifying and streamlining the trade marks law and procedure.
A trade mark is
usually associated with goods, trading style etc.
Several judicial decisions have extended the principles of trade
marks law to include websites on the internet also. With the advent of
the Internet, there is a spree of registering domain name for the purpose of
business. As a website has a universal presence the reach of a domain name is
universal. An attempt of a domain name or domain name on the
Internet.
In a
case the dictum laid down by
In Rediff Communicatins Ltd V Cyberbooth and Anor7, the Bombay High Court held that
domain names 'Rediff’ and 'Radiff’
were similar. It was sought to be contended by the defendants that the word 'Radiff’ was derived from four words namely Radical
Information, Future, and Free. The High Court rejected the explanation as
completely false and held that it was impossible to held that the word 'Radiff’ was coined by the defendant as an abbreviation of
the aforesaid words. The High Court observed:-
What
emerges from these authorities is that the Internet domain names are all
important and get a valuable corporate asset. Domain name is more that a Internet Address and is entitled to equal protection of trade
marks. With the advancement and progress in technology, the services rendered
in the Internet site are accepted and are being given protection so as to
protect all such providers of services from passing of services rendered by
others as his services.
Ss.
2(1)(f), 6(1)(a) & 14(1). Trade
mark. Registration. Refusal
to Register Trademark Logo. Logo adopted by the party was composite and
compound mark, with particular get and colour scheme,
with combination of company name placed in a particular manner. Contention of
the party was that the logo fulfilled the definition of mark as provided under
S. 2(l)(f) of the Trade Marks Act, 1940. Validity. Any person claiming to be proprietor of a mark
used or proposed to be used by him might apply for registration under S.14 of
Trade Marks Act, 1949. Validity. Any Person claiming
to be proprietor of a mark used or proposed to be used by him apply for registration under S.14 of Trade Mark Act, 1940.
Requirement for registration of Trademark under S.6(l)(a)
of Trade Marks Act, 1940 was that the same might contain name of the company,
individual or a firm represented in a special particular manner. Where the
logo/mark was combination of the name of the party inscribed in the logo / mark
in a particular manner, the same was in accordance with the definition of the
word 'mark' as defined under S.2(l)(f) of the Trade Marks Act, 1940, and was
applicable to the logo/mark applied for. Discretion exercised by the Registrar
in declining registration of logo/mark was against the set principles of law
applicable thereto and the order passed by the Registrar was set aside. CLD
2002
Ss. 6(1) & 14 Trade Mark application for registration. Mark to be registered must be in use
anterior to making of application. Any person claiming to be proprietor of
trade mark, used or proposed to be used by him is entitled to apply for the
registration of the same. Not merely a mark must be in use anterior to making
of application but any proposed user thereof gives a right to the intending
user to apply for the registration of a particular mark proposed to be adopted
by him, provided the mark is otherwise qualified to be registered under the
provisions of Trade Marks Act, 1940. CLD 2002
Ss. 6(1)(a) to (e) &
14(1). Discretion of Registrar of Trade-Marks Act, 1940, Registration of Trade
Mark. Exercise of such discretion. Principles.
Discretion vesting in the Registrar under S. 14(1) of Trade Mark Act, 1940, is
not arbitrary or fanciful, but a judicial one is which must be exercise fairly,
equitably, with vigilance circumspection, care and caution based on cogent,
coined and supportive reason in accordance with set principles of law, Mere
bald statement that a particular order has been passed because a discretion
vests in the authority is nothing but erroneous exercise of discretion liable
to be corrected and reviewed, whenever it comes under judicial scrutiny CLD
2002 Karachi 37(e) . S. 14— "Passing off”—Connotation—Factors to be
proved—When people use goodwill of companies' business and their products that
they have worked their way to the top in order to sell their wares, these
reputable establishments are deprived of their rightful benefits—People use trade marks similar to ones used by those well-known
companies, thereby confusing the customer and inducing him to buy their
wares—Such acts attract the doctrine of passing off— Ingredients that have to
be established in a successful action of passing off stated. [Sayyed Engineering Vs. Tristar Industries (Pvt.) Ltd. (Anwar Mansoor
Khan, J)] 2001 CLC 1368(d).
S.14—Proprietary rights, infringement of-passing
off- Proof -Test to be applied in matters of passing off is as to whether a man
of average intelligence and of imperfect recollection can be confused. [Sayyed Engineering Vs. Tristar Industries (Pvt.) Ltd. (Anwar Mansoor
Khan, J)] 2001 CLC 1368(i) 2001 CLC 1368(i)
Ss. 76, 10(4), 14(1) r/w S.10(1)
and 8(a). 15(1) - Trade Mark Rules, 1963, Rr. 23 and
24--General Clauses Act, 1897, S. 24—Show Cause notice - in the instant case,
Registrar has refused acceptance of an application u/S. 14(1) of the Act, 1940
without advertisement of that application — At the same time another
application for registration of mark "Nobel" was advertised—Reason
forwarded day representatives of the Trade Mark Registry was that the present
appellant was simply "the proposed user" which the other applicant
was user of that mark - This was a correct classification but in order to
exercise discretion more judiciously, it would have been advisable to get the
same advertised - It was well-known maxim of law that justice should not only
be done but it should be seen to have been done—It is not on record as to what
was the fate of the other application for the same mark - For the sake of
arguments. If it is presumed that the said application was accepted them there
remain no justification for refusing the advertise the application filed by the
applicant - It is settled law that all applications pertaining to similar and
identical marks of the same class are to be dealt with jointly—- This may be
done to avoid any conflicting decisions - in consonance with the above view,
this appeal is accepted and the matter is remanded to the Registrar to deal
with it according to law and after advertisement - appeal accepted. 2000 PCTLR
(Kar) 431
Ss.
10 and 14 -- Civil Procedure Code, 1908, O, XXXIX, Rr.
l and 2—Interim injunction, graft of — Proprietary Rights, infringement of —
Unregistered trade mark — Dispute was with regard to use of word 'Crystal' on
bail pens manufactured by the parties — Plaintiffs claimed to be the prior user
of the word 'Crystal' on his product - Contention of the defendant was that the
word 'Crystal' only described the pen and the same was common to trade ---
Validity -- Continuous use of a mark over a length of time did not characterize
the word as used by the user, and was in the mind of the public as identifying
them that the product was that of person using the same regular as such it was
misconceived that because the word was used on a transparent pen, it described
the pen and because of the that reason all could use the word—Such act would
amount to infringing upon the right and goodwill created by the user word -
Subsequent user, in such a case would be trying to cash upon the reputation
attached to the product of the manufacturer using the word and the same would
amount to misrepresentation and there was likelihood of damage being suffered
by such use to the previous user — Where, notwithstanding the transparency, the
look, the design and/or other marked features of the pen, which might be
descriptively similar, use of the word 'Crystal' could disclose no other
intention of the defendants accept to pass off their goods as the goods of the
plaintiff - Even if the defendants were manufacturing a transparent/clear ball
point pen, it could not be said that the same would be descriptive of the pan,
as the plaintiff over the years started use of the word "Crystal" and
the plaintiff over the years had acquired, by advertisements and otherwise
reputation, goodwill and the said word therefore, would be deemed to be in the
mind of the public, as a product of the plaintiff —- Defendant, in the present
case, would not be entitled to mark their product by describing the same as
"crystal" — Plaintiff has made out a strong prima facie case - By the
use of the word "Crystal" the defendants had committed an actionable
wrong of passing off injuring substantially the reputation and goodwill of the
genuine user of the word "Crystal and the same would amount to
misrepresenting their product as the product of the plaintiff and would also,
therefore, amount to damaging their goodwill - Interim injunction was granted
in circumstances. 2001 CLC 1368(f)
—Ss.
10 and 14 —- Proprietary Rights — Proof of -- Excusive prior use of mark was
sufficient to cause proprietary rights to be created. 2001 CLC 1368(e)
Authority
while refusing registration failing to consider that applicant being proprietor
of the registered trade mark for his other goods of same description was
entitled to have his registered as an associated trade mark. Order of nonregistration of applicant's trade mark was set aside and
Authority was directed to reconsider case on basis of his entitlement to get
registration of mark as an associated trade mark. PLD 1992
(c) Kar. 119
Registration
of Trade Mark "Hudson" refused. Validity.
Word "Hudson" did not appear to be caste of any person in the
telephone directory. Word "Hudson" was not geographical name of any
place or river in
Registration of Trade Mark "Tip Top"
was declined by Registrar, ground for refusal being that the mark sough to be registered, was similar if compared as a whole to the
already registered trade marks "Top" and
"Tip Job". Validity. Application for
registration of trade mark having been rejected at a preliminary stage, without
issuing any notice to proprietors of trade marks
concerned whose trade marks were deemed to be similar to the trade mark applied
for, order of rejection was set aside. Applicant's case was directed to be
processed and due notices to be issued to concerned persons whose trade marks already registered, were deemed to be similar
to be similar to the trade mark applied for, and decision to be taken in
accordance with law. PLD 1992 Kar
15.
Applications for registration of trade marks: For the purposes of the Act, goods are
classified into 34 classes. These goods are again divided into textile and
non-textile goods. Textiel goods are those which fall
under classes 22 to 27 (inclusive)—(see Rule 38 read with sec. 62 of the Act.)
In
the case of non-textile goods it does not matter what the mark is, whether it
is a device, numeral, letter or word, or any other combination, the application
has to apply on Form TM-1.
When,
however, the goods are textile goods, the form of application varies according
to the nature of the trade mark. The Textile mark may be —
(1) a word or words (not being an invented word or invented
words);
(2) a mark consisting of letters or numerals or any combination
thereof; and
(3) other marks such as a device or invented word or invented
words.
In each of the
above there is a separate form for application. In the case of marks consisting
exclusively of a word or words (not being an invented word or invented words)
the application is to be made on Form TM-51. Where the trade mark consists
exclusively of letters of numerals or any combination thereof the application
has to be made on Form TM-53 or on Form TM-52 according as the goods fail in
the Fifth Schedule of the Rules or not, if the goods fail under the Fifth
Schedule, the applcaiton should be made on Form
TM-53. if the textile goods do not fall under the
Fifth Schedule, the application should be made on Form TM-52. in the case of marks comprising a device or an invented
word, the application has to be made on Form TM-2.
Main
criterion for registration of a trade mark, would be
that an unwary purchaser should not be led to belief that goods of persons
seeking registration and those of objector come from the same source and belonged
to the same origin. 1988 CLC 1636
The
Registrar of Trade Mark, could not delegate his power
to Examiner of the Trade Marks. Examiner of the Trade Marks can examine
applications for registration to see whether they qualify for registration
under the provisions of the Act and Rules, such functionary also assists
Registrar in all procedural, administrative and supervisory functions connected
with various proceedings under the Act and the Rules. 1987 MLD 1415
The appellant seeking registration of the Trade Mark "Air
Prince" for its electric fans. The respondent asserting that it had been using its mark
"Prince" in respect of all sorts of fans manufactured by its since 1965 and had procured registration of the said
trade mark in 1971. Income-Tax assessment orders showing that the respondent
had been regularly paying income-tax which ran into lakhs
of rupees while appellant not paying any income-tax. The respondent him found
doing good amount of business of manufacturing and marketing fans under the
Trade Mark "Prince" and were entitled to
hold the field. It was held that:
The appellants's trade mark would certainly cause confusion and
deception as the goods were to be sold on the same counter. View formulated by
the Registrar that the word "Air" was descriptive of goods,
therefore, could not be take exception to. Decision of
the Registrar endorsed and appeal dismissed. 1988 CLC 1991
Although
goods required to be registered fall in different
classes that those produced by objectors but possibility of objectors producing
goods sought to be registered could not be ruled out. 1988 CLC 1636
The petitioner's application for registration of
the Trade Mark having been consigned to record, constitutional petition against
such consignment filed after about 4 years, held, suffered from the inordinate laches and was not maintainable. 1987 MLD 2827
The
application for registration of Trade mark refused by Examiner of Trade Marks
who had no jurisdiction in the matter. The order of refusal passed by Examiner
set aside and proceedings allowed to continue according to law. 1987 MLD 1415
The Registrar while
refusing applications of appellant neither communicating objections to the
appellant nor hearing him. The Registrar, violated
mandatory provision of law. Order of the Registrar set aside and the case
remanded to the Registrar with direction to process application in accordance
with law. 1986 MLD 2966
Applications
dealt with in the Registry: when an application for registration has been made,
it is first examined in the Trade Marks Registry. In the first place the
application examined in order to see whether the formalities have been
observed. The name of the applicant must be stated in a precise manner. If the
applicant is the sole proprietor of the trade mark, he should state his name
and address on the application. If the application is made on the behalf of a
firm, all partners, names should be given in the application together with the
address of the firm. When the applicant is a corporation, the application
should be signed by a Director or any other principal officer of the company.
If the applicant lives outside