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Economics, Law and Policy 
ISSN 2576-2060 (Print) ISSN 2576-2052 (Online) 

Vol. 1, No. 2, 2018 
www.scholink.org/ojs/index.php/elp 

122 
 

Original Paper 

Review of Trademark and Its Enforcement Procedures of 

Pakistan under TRIPS and Paris Convention 

Sohaib Mukhtar1*, Zinatul Ashiqin Zainol2 & Sufian Jusoh3 
1 Faculty of Law, National University of Malaysia, Selangor, Malaysia 
2 Professor/Dean Faculty of Law, National University of Malaysia, Selangor, Malaysia  
3 Professor/Deputy Director, Institute of Malaysian and International Studies, National University of 

Malaysia, Selangor, Malaysia 
* Sohaib Mukhtar, Faculty of Law, National University of Malaysia, Selangor, Malaysia 

 

Received: May 8, 2018        Accepted: May 22, 2018        Online Published: June 11, 2018 

doi:10.22158/elp.v1n2p122                 URL: http://dx.doi.org/10.22158/elp.v1n2p122 

 

Abstract 

Enforcement of trademark law has been in evolution for decades in Pakistan. Pakistani laws dealing 

with trademark and its enforcement procedures are Trade Marks Ordinance 2001, Trade Marks Rules 

2004, Intellectual Property Organization of Pakistan Act 2012 and relevant provisions of Pakistan 

Penal Code 1860 and Specific Relief Act 1877. Civil procedure is dealt in Pakistan as per Code of 

Civil Procedure 1908 and criminal procedure as per Code of Criminal Procedure 1898. This article is 

qualitative method of research analyses trademark and its enforcement procedures of Pakistan as per 

relevant trademark laws of Pakistan under the light of relevant provisions of Agreement on Trade 

Related Aspects of Intellectual Property Rights (TRIPS) and Paris Convention. Paris Convention is the 

first International Convention containing trademark and its enforcement provisions (6-9) as TRIPS is 

the first International Agreement containing exhaustive provisions on trademark and its enforcement 

procedures (15-21, 41-61). Part III of TRIPS deals with enforcement of trademark including civil 

procedure, administrative procedure, provisional measures, border measures and criminal procedure 

of trademark enforcement. Trademark Registry established under section 9 of Trade Marks Ordinance 

2001 and works under Intellectual Property Organization of Pakistan (IPO-Pakistan) which is a 

statutory body established under section 3 of Intellectual Property Organization of Pakistan Act 2012. 

The registered trademark owner in Pakistan can avail civil procedure, criminal procedure, 

administrative procedure as well as provisional and border measures for enforcement of his registered 

trademark right in Pakistan. TRIPS and Paris Convention have been ratified by Pakistan, but 

ratification of International Convention and its implementation are two different things. Better 



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enforcement of trademark law may take years to achieve as per relevant provisions of International 

Conventions therefore designated authorities of Pakistan are required to establish more Trademark 

Registry branches, more IP Tribunals, appoint and induct more IP experts, examiners in-charge of 

registration and spread IP awareness throughout Pakistan for betterment of trademark law 

enforcement in Pakistan. 

Keywords 

intellectual property, trademark, Intellectual Property Organization of Pakistan (IPO-Pakistan), 

Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), Paris Convention 

 

1. Introduction 

Trademark is a mark, name, sign, smell or a sound which distinguishes goods and services of one 

undertaking from goods and services of other undertakings. Trademark is required to be distinctive and 

non-descriptive, it losses its distinctiveness when registered trademark owner does not take prompt 

action against its infringement. Therefore, enforcement procedures of trademark including civil 

procedure, administrative procedure, provisional measures, border measures and criminal procedure of 

trademark enforcement must be adequate, expedient, and must not be costly, complicated and time 

consuming. 

Enforcement of trademark in Pakistan is under Trade Marks Ordinance 2001, Trade Marks Rules 2004, 

Intellectual Property Organization of Pakistan Act 2012, relevant provisions of Pakistan Penal Code 

1860, Specific Relief Act 1877 and Customs Act 1969. Civil procedure is dealt in accordance with 

Code of Civil Procedure 1908 and criminal procedure in accordance with Code of Criminal Procedure 

1898. Trade Mark Ordinance 2001 is the main statute of Pakistan dealing with trademark which is an 

addition to other related laws and does not bar implementation of other relevant laws for protection and 

implementation of trademark rights in Pakistan. Duration for the protection of registered trademark is 

10 years and renewable after expiration of the duration as domain name is protected for 5 years.  

Trade Mark Rules 2004 are made by the Federal Government of Pakistan under section 132 of Trade 

Marks Ordinance 2001 for smooth process of trademark registration and its enforcement in Pakistan. 

Intellectual Property Organization of Pakistan (IPO-Pakistan) established in 2005 under Intellectual 

Property Organization of Pakistan Ordinance 2005, which was later repealed by Intellectual Property 

Organization of Pakistan Act 2012. IPO-Pakistan is an autonomous body under control of the Cabinet 

Division of the Federal Government of Pakistan. IPO-Pakistan is required to work for strengthening IP 

laws, rules and regulations, take measures related to protection of IP rights and do all other works for 

smooth implementation of IP laws in Pakistan. 

Trademark Registry works under IPO-Pakistan for registration and enforcement of trademarks 

throughout Pakistan. It works as an administrative body to register trademarks and to hear opposition 

applications as well as it is empowered to work as IP Tribunal. Appeal against decision of the Registrar 

lies before the High Court. 



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Keeping in mind Part III of TRIPS, aggrieved party of registered trademark can adopt and avail civil 

procedure, administrative procedure, provisional measures, border measures and criminal procedure of 

trademark enforcement in member states of World Intellectual Property Organization (WIPO) and 

World Trade Organization (WTO). Pakistan is a member state of WIPO as well as WTO, therefore 

Parliament has made changes in trademark laws of Pakistan as per relevant provisions of TRIPS and 

Paris Convention. Ratifying International Convention and applying it are two different things, better 

enforcement of IP including trademark may take years to achieve. Designated authorities of Pakistan 

are required to put more efforts for enforcement of trademark law in Pakistan. Trademark Registry only 

have one branch, therefore more branches are required for a country of more than 200 million people, 

more IP experts are required to be inducted, more IP Tribunals are required to be established and most 

importantly awareness of IP including trademark must be spread in public through workshops and 

seminars for giving trainings to public generally and executive authority specially for betterment of 

trademark and its enforcement procedures of Pakistan. 

This article is qualitative method of research analyses trademark and its enforcement procedures of 

Pakistan including civil procedure, administrative procedure, provisional measures, border measures 

and criminal procedure of trademark enforcement under the light of relevant provisions of TRIP and 

Paris Convention. 

 

2. Trademark 

Section 2 (xxiv) of Trade Marks Ordinance 2001 defines trademark as mark, device, brand, heading, 

label, ticket, name of natural or juristic person, abbreviation, signature, word, letter, numeral, figurative 

elements, color, sound, certification mark, collective mark, domain name, well known mark and service 

mark used to distinguish goods/services of one undertaking from goods/services of other undertakings 

(Trade Marks Ordinance of 2001 section # 2 and Deveci, 2003). 

Article 15 of TRIPS defines trademark as any sign or combination of signs, capable to distinguish 

goods/services of one undertaking from those of other undertakings. Signs include words, personal 

names, letters, numerals, figurative elements and combination of colors/signs. Section 2 (xxiv) of Trade 

Marks Ordinance 2001 defines trademark comprehensively but without wordings: sign/signs and 

combinations of signs which is there under article 15 of TRIPS, it is therefore recommended that 

wordings: sign/signs and combination of signs should be added in the definition of trademark under 

section 2 (xxiv) of Trade Marks Ordinance 2001. 

Subject matter of trademark includes certification mark, which is a mark certified by proprietor 

indicating goods/services in connection with which it is used and it is a mark which is certified by 

proprietor for its use with respect to goods/services as their characteristics given in certificate, it may 

be registered in respect of geographical indication and may be consisted of a sign or an indication 

designates geographical origin of goods/services protected under certified mark but it does not stop an 

entitled person to use it in industrial and commercial matters honestly and it must not be misleading to 



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mislead public in respect to character and significance and it should not be against public policy and 

principles of morality (Trade Marks Ordinance of 2001 section # 83 read with 2nd Schedule and Taylor, 

1958). 

In the case of Tawakkal General Export Corporation and Tawakkal Garment Industries Limited v. 

Collector of Customs (Tawakkal General Export Corporation and Tawakkal Garment Industries 

Limited v. Collector of Customs, 1992), Sindh High Court held that the Central Government through 

the Ministry of Commerce is empowered to prohibit/restrict export of articles which do not bear 

standard certification mark under section 8 of Pakistan Standards Institution (Certification Marks) 

Ordinance 1961, under section 19 of Sea Customs Act 1878 and under section 3 of Imports and Exports 

(Control) Act 1950. 

Subject matter of trademark includes collective mark, which is registered in respect of more than one 

person jointly as an association and it can be registered in respect of geographical indication to 

distinguish geographical origin of goods/services protected under collective mark and it should not be 

misleading to public at large (Trade Marks Ordinance of 2001 section  # 82 read with 1st Schedule and 

Wong, 1986). 

In Taxpayer v. Department (Taxpayer v. Department, 2012), Appellate Tribunal Inland Revenue held 

that collective mark users have exclusive right collectively of a thing/equipment being used. It is 

immaterial whether use of that equipment results into service in return or relates to production of 

tangible thing. 

Subject matter of trademark includes domain name under Trade Marks Ordinance 2001. Domain name 

is user friendly mark substitute to an internet address, may be registered if it is used as source identifier 

and if proprietor uses it to offer goods/services via internet, it may be registered in respect of 

geographical indication with respect to goods/services, it must not be misleading in respect of character 

and significance of mark. A mere directional reference like a telephone number or a business address 

cannot be registered as domain name (Trade Marks Ordinance of 2001 section # 84 read with 3rd 

Schedule and Mockapetris & Dunlap, 1988). 

In the case of Alle’Nora Beauty Salon and Parlor v. Mrs. Qurat-ul-Ain Mansoor (Alle’Nora Beauty 

Salon and Parlor through Partner v. MrsQurat-ul-Ain Mansoor, 2016), Sindh High Court held that 

registered trademark including domain name is protected pursuant to procedure laid down in Trade 

Marks Ordinance 2001, for this reason, legal system is built to protect trademark of a person who is 

first one to use trademark, trade name or any other similar source identifier including domain name. 

The Court held that whenever rights in a trademark are attacked, wheel of legal system will spin in the 

direction of protecting honest and first adopter to safeguard his right as well as to save customers from 

such disguise. 

Contrary to terms of protection for other subject matters of trademark, domain name is registered for 5 

years and may be renewed at the end of that period under provision 6, 3rd Schedule of Trade Marks 

Ordinance 2001. As per article 18 of TRIPS, registration and renewal of registration of trademark shall 



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be for a term not less than 7 years. Sindh High Court held that legal system is built to protect trademark, 

trade name or any other similar source identifier including domain name and there is no provision in 

TRIPS and Paris Convention, and trademark laws of Pakistan dealing with domain name separately. It 

is therefore recommended that term of protection of domain name should be increased to at least for 7 

years as per article 18 of TRIPS. 

Subject matter of trademark includes well-known mark, which is recognized worldwide and in Pakistan 

without registration under article 6bis of Paris Convention and under article 16 (2) (3) of TRIPS. 

Well-known mark must have a distinct character and duration of use in Pakistan and worldwide made it 

well known because of its commercial value, geographical scope, quality, image and its exclusivity of 

use. It is protected in Pakistan under Paris Convention and TRIPS and there is no need to apply for its 

registration under Trade Marks Ordinance 2001 but if it causes confusion, its use may be restrained in 

Pakistan through an injunction. It is protected in Pakistan if proprietor is national of a convention 

country or domiciled in a convention country or has an established commercial establishment in one of 

the member states of Paris Convention (Trade Marks Ordinance of 2001 section # 85-86 and Safro & 

Keaty, 2004). 

In the case of HERO Motors Limited v. Babar Auto Trading and Manufacturing Company (HERO 

Motors Limited v. Babar Auto Trading and Manufacturing Company, 2011), HERO Motors Company 

Limited is manufacturer of motorcycles since 1997 under well-known trademark “HERO”. It came to 

know in 2005 that Babar Auto Trading and Manufacturing Company started manufacturing and 

assembling motorcycles under identical trademark “ASIAHERO”. HERO Motors Company Limited 

approached Sindh High Court for permanent injunction against Babar Auto Trading and Manufacturing 

Company for using “AISAHERO” as trademark. 

Single member bench of Sindh High Court rejected plea of applicant hence HERO Motors filed an 

appeal before divisional bench of Sindh High Court. Justice Amir Hani Muslim and Irfan Saadat Khan 

rejected plea of appellant on a ground that word “HERO” is used as common parlance and used in 

number of varieties and cases, it is a general word which is used across the board hence appeal of 

HERO Motors Limited rejected by divisional bench of Sindh High Court. 

When trademark is registered in the register of trademark, the owner of registered trademark may start 

legal proceedings of trademark infringement against infringement of his registered trademark and in 

case if trademark is not registered but protected as well-known trademark under article 6bis of Paris 

Convention and under article 16 (2) (3) of TRIPS, the owner of trademark may start legal proceedings 

of passing off to obtain damages and to obtain injunctions to prevent further infringement of 

well-known trademark (Trade Marks Ordinance of 2001 section # 86 and Wadlow, 2011). 

In the case of Mrs. Samreen Liaquat Malik v. M/s Aqmar Health Foods (Mrs. Samreen Liaquat Malik v. 

M/s. Aqmar Health Foods, 2009), plaintiff Mrs. Samreen Liaquat Malik affiliated with M/S Matrix 

Pharma Private Limited, introduced Nutritional Food Supplement to reduce Folic Acid necessary for 

healthy body. Sale of plaintiff product exceeds millions during 2006-2008. Plaintiff applied for 



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registration of trademark “Foreva Pearls” in 2008 and heard about identical trademark “Foliqam 

Pearls” which has been used by defendant’s ex-employees of plaintiff and have stolen trade secrets and 

using identical product in color scheme, calligraphy, label, packaging and design of capsules. 

Plaintiff issued letter for defendant under section 27 of Trade Marks Ordinance 2001 on forged and 

subsequent application for registration of trademark “FOLIQAM”. Defendant reluctant to reply thus 

plaintiff filed civil suit of passing off against defendant for using identical trademark “pearl”. 

Defendant replied in written statement that he and other defendants never been employed by plaintiff 

and they have already applied for registration of trademark “FOLIQAM” and product “Foliqam Pearl” 

has been in market since April-2007. 

Issue before Sindh High Court was while comparing both trademarks, point to be noted is that deceived 

persons are purchasers of goods and purpose of comparison is to determine whether essential features 

of plaintiff’s trademark is to be found used by defendant and when 2 trademarks are not identical, 

plaintiff would have to establish trademark used by defendant so nearly resembles with plaintiffs’ 

trademark that it is likely to deceive and cause confusion in relation to goods in respect of which it is 

registered and these factors consume much significance in cases of drugs sold on prescription by 

doctors, chemists and druggists, this is a well-established principle noted for deciding similarity 

question of 2 trademarks. 

Sindh High Court held that plaintiff has emphasized much on the word “Pearl” which is commonly 

used throughout the world. Label and bottle used by defendant is strikingly different with dominating 

features and brightly colored therefore it will not affect mind of public and would not cause loss to 

business of plaintiff and not a single instance has been produced to substantiate that product caused any 

loss to plaintiff’s business therefore plaintiff’s plea was rejected by Sindh High Court (Mrs. Samreen 

Liaquat Malik v. M/s. Aqmar Health Foods, 2009). 

The owner of trademark may use his trademark and take all its potential benefits as it is personal 

property of its owner and he may transfer it through assignment, testimony or it may be transferred by 

operation of law either fully or partially. Transfer of registered trademark may be made by act of 

parties which must be in writing with signatures of both parties. Article 21 of TRIPS prohibits 

compulsory licensing and allowing trademark owner to transfer his registered trademark with or 

without transferring business to which trademark belongs (Trade Marks Ordinance of 2001 provision # 

8-9, 4th Schedule and Scafidi, 2001). 

It is necessary to apply for entry in the register of trademark for recording relevant transactions 

otherwise transactions cannot be protected under Trade Marks Ordinance 2001. An application may be 

made before the Registrar of trademark for amendments in the register of trademark for adding record 

of an assignment, grant of license, grant of security interests, grant of an assent to make personal 

representative or transferring order of the Court. If license is for fixed time, modification part may be 

removed after expiration of such prescribed time and the Registrar removes it after giving notices to 

parties concerned. If the owner of trademark wants to give right of usage to a company which is not 



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registered yet in Pakistan, company must be registered within 6 months from the date of trademark 

registration application otherwise the Registrar may remove his entry from the register of trademark 

(Trade Marks Ordinance of 2001 section # 72 and Rana, 2013). 

As per section 75 of Trade Marks Ordinance 2001, proprietor of registered trademark may issue limited 

license for a limited use as to some goods/services protected under registered trademark, limitation as 

to use it in a locality as well as unlimited license when there is no limitation subject to terms and 

conditions prescribed in Trade Marks Ordinance 2001. Section 75 (2) (b) of Trade Marks Ordinance 

2001 states that license may be issued in relation to trademark use in a specified manner or in a 

particular locality which is against the requirement prescribed under article 20 of TRIPS which states 

that use of trademark during trade shall not unjustifiably be encumbered with special requirement. It is 

therefore recommended that unjustifiable special requirement while granting license for use in a 

manner within a locality should be removed. 

Trademark owner may issue exclusive license where proprietor gives permission to licensee for 

exclusive use of his registered trademark and no one can interfere in his exclusive right even proprietor 

cannot interfere. License must be in writing and signed by the trademark owner or on his behalf by an 

authorized person. Licensee may issue sub license if proprietor authorizes him to do so. Apart from 

transfer of right, proprietor of registered trademark may surrender trademark in respect of all or any of 

goods/services it was registered (Trade Marks Ordinance of 2001 section # 74-79 and Calboli, 2005). 

Registered trademark is personal property of registered trademark owner and nobody can use that 

trademark without prior permission of registered trademark owner. If anyone infringes his personal 

right, he may obtain remedies available under Trade Marks Ordinance 2001, Trade Marks Rules 2004, 

Intellectual Property Organization of Pakistan Act 2012, Pakistan Penal Code 1860, Customs Act 1969 

and Specific Relief Act 1877. No trademark owner can start legal proceedings of trademark 

infringement in Pakistan unless trademark is registered under Trade Marks Ordinance 2001 except 

legal proceedings under passing off (Trade Marks Ordinance of 2001 section # 117 and Nair & Kumar, 

1994). Detailed procedures of trademark enforcement in Pakistan including civil and administrative 

procedures, provisional and border measures and criminal procedure of trademark enforcement 

analyzed and reviewed under next heading. 

As per article 6ter of Paris Convention and sections 87 of Trae Marks Ordinance 2001, trademark 

consisted of national flag, state emblem, official mark, hallmark of convention countries cannot be 

registered in Pakistan without prior approval of concerned authority of convention country except if 

there is no requirement to such authorization. Any other kind of national images of convention 

countries only protected in Pakistan if convention country notifies to Pakistan for that purpose and 

notification remains enforced at the time of registration application (Trade Marks Ordinance of 2001 

section # 87 and Zaheer, 2016). 

Similarly, emblems, abbreviations and names of International Organizations cannot be registered in 

Pakistan unless it appears that there is no connection between them and International Organization or 



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registration does not mislead public at large. If authorization of International Organization is required 

for registration of trademark, International Organization can abstain any person to use that trademark in 

Pakistan through an injunction (Trade Marks Ordinance oof 2001 section # 88 and Malik, 2010). 

After general analyses of trademark, discussion is moving towards specific analyses of trademark 

enforcement procedures of Pakistan including: (i) civil procedure, (ii) administrative procedure, (iii) 

provisional measures, (iv) border measures, and (v) criminal procedure under the light of relevant 

provisions of TRIPS and Paris Convention.  

 

3. Enforcement of Trademark 

Enforcement procedures of trademark in Pakistan run are under different statutes viz Trade Marks 

Ordinance 2001, Trade Marks Rules 2004, Intellectual Property Organization of Pakistan Act 2012, 

Specific Relief Act 1877, Pakistan Penal Code 1860 and Customs Act 1969. Trade Marks Ordinance 

2001 does not deal exhaustively with civil and administrative procedures, provisional and border 

measures and criminal procedure of trademark enforcement thus Trade Marks Ordinance 2001 should 

be amended in a way to clarify all procedures of trademark enforcement in Pakistan. 

Enforcement provisions spread in different parts of Trade Marks Ordinance 2001 and there is no 

distinction for judicial and administrative procedures for enforcement of trademark law. Civil 

procedure can be adopted by aggrieved party for obtaining damages and injunctions under Trade Marks 

Ordinance 2001 and Specific Relief Act 1877. Administrative procedure of trademark enforcement 

may be adopted by aggrieved party under Trade Marks Ordinance 2001 and Trade Marks Rules 2004 to 

present his grievance before IP Tribunal or Trademark Registry under Intellectual Property 

Organization of Pakistan (IPO-Pakistan). Provisional measures governed by Specific Relief Act 1877 

and Code of Civil Procedure 1908. Border measures prescribed in a separate chapter in Trade Marks 

Ordinance 2001 thus it is dealt under relevant provisions of Trade Marks Ordinance 2001 and Customs 

Act 1969 as borders measures enforced through customs authority of Pakistan. Criminal procedure of 

trademark enforcement may be adopted by registered trademark owner in Pakistan under relevant 

provisions of Pakistan Penal Code 1860 and Code of Criminal Procedure 1898.  

 

Table 1. Comparison of Trademark Statutes in Pakistan 

Statutes Civil 

Procedure 

Administrative 

Procedure 

Provisional 

Measures 

Border 

Measures 

Criminal 

Procedure 

Trade Marks 

Ordinance 2001 

X  X X X 

Trade Marks Rules 

2004 

 X    



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Intellectual Property 

Organization of 

Pakistan Act 2012 

 X    

Specific Relief Act 

1877 

X  X   

Code of Civil 

Procedure 1908 

X  X   

Customs Act 1969    X  

Pakistan Penal Code 

1860 

    X 

Code of Criminal 

Procedure 1898 

    X 

 

3.1 Civil Procedure 

TRIPS provisions dealing with civil procedure of trademark enforcement are articles 42-48 as per 

which civil procedure is required to be fair and equitable, right of notice must be timely and contains 

all sufficient details including basis of claim, parties may be represented through independent legal 

counsels, no compulsory requirement should be for personal appearance of parties and they must be 

allowed to substantiate their claim and present evidence, ask other party to produce evidence for 

proving claim of opposite party, right of hearing must be observed, judicial authority is required to 

pronounce judgment if any party to civil proceedings does not take part in proceedings and voluntarily 

use delaying tactics, provide mean to identify and protect confidential information. Remedies in civil 

proceedings must include: (i) injunctions, (ii) compensation, (iii) damages, (iv) expenses including 

attorney’s fee, (v) profits, (vi) removal of trademark affixed unlawfully, (vii) goods disposed of outside 

channels of commerce, and (viii) infringer may be required to inform right holder identity of third 

person involved and channel of distribution. Applicant may be asked to pay indemnification to 

defendant in case abuse of civil procedure of trademark enforcement (TRIPS of 1994 article # 42-48). 

All civil proceedings in Pakistan are required to be dealt in accordance with prescribed provisions of 

Code of Civil Procedure 1908. If aggrieved party wants civil infringement remedy in Pakistan, he may 

apply before the Civil Court under section 117 of Trade Marks Ordinance 2001 for obtaining civil 

remedies including injunctions, damages, compensation, costs or handing over trademark infringed 

material to applicant or authorized authority for destruction (Brown, 1992). 

Injunctions are: (i) temporary, (ii) perpetual, or (iii) mandatory. Injunction is temporary when it is for a 

specific time until next order of the Court and injunction is perpetual when it is not limited for specific 



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time and mandatory injunction is to order defendant preventing illegal act or to order him to do legal 

act as per orders of the Court. The Court may award perpetual injunction based on presented evidence 

when it believes that: (i) defendant is trustee of property which is subject matter of issue, (ii) there is no 

parameter to determine loss of plaintiff, (iii) pecuniary relief can never be satisfactory relief for 

plaintiff, (iv) pecuniary relief cannot be taken, or (v) injunction is necessary for multiplicity of judicial 

proceedings (Arain, 2016 and Specific Relief Act of 1877 section # 53-54).  

Sindh High Court held in the case of M. Sikander Sultan v Masih Ahmed Sheikh (M. Sikander Sultan v 

Masih Ahmed Sheikh, 2003) that trademark is not meant for benefits of trademark owner only as it is 

also used for benefits of public and its main purpose is to use it for secure and free enjoyment of 

manufacturing and marketing products of its owner and to prevent deceiving public through its 

infringement. Injunction in trademark is granted to prevent further infringement of trademark to protect 

the owner of registered trademark and consumer from consuming infringed trademark material. 

Injunction may be refused to: (i) stay proceedings pending before the Court where injunction is sought 

except when it is necessary for multiplicity of proceedings, (ii) stay of proceedings against applicant, 

(iii) apply for relief before legal body, (iv) stay of criminal proceedings, (v) interfere in public duties of 

government department, (vi) prevent breach of contract whose performance cannot be specifically 

enforced, (vii) prevent nuisance when there is no clarity whether act is nuisance or not, (viii) prevent 

continues breach where applicant is acquiesced, (ix) avail another appropriate relief available except in 

breach of trust, (x) when conduct of applicant or his agent resultantly disentitle them from assisting the 

Court, and (xi) when applicant has no personal interest in issue (Specific Relief Act of 1877 section # 

56). 

No suit for infringement of registered trademark can be instituted inferior to the District Court. If civil 

proceedings related to registered trademark is pending before the District Court or the High Court, 

application related to it could be made to the Court in which matter is pending and in case if matter is 

pending before the Registrar, application is required to be made before the Registrar and he then is 

required to refer application to the Court if so required (Trade Marks Ordinance of 2001 section # 

59-65). 

In the case of Pioneer Cement Limited v. Fecto Cement Limited (Pioneer Cement Limited through 

Company Secretary v. Fecto Cement Limited and Others, 2013), appellant Pioneer Cement Limited 

filed suit of declaration, infringement and passing off before the District Court and applied for interim 

injunction which was granted to him but later taken back because respondent no. 2 argued that two 

elephants’ mark is also registered with his name in Afghanistan and respondent no. 3 is using “Ps” as 

trademark rather than “P”. Appellant filed an appeal before Lahore High Court which held that 

appellant has right to use two elephants’ trademark as it is not registered in favor of respondents in 

Pakistan. The Court held that appellant has made out prima facie case in his favor and is likely to suffer 

irreparable loss if respondents are restrained from using logo “P” and two elephants’ trademark. 

Trademark rights are lifelines of businesses and unauthorized use of owner’s trademark by third 



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parties’ results in un-quantifiable loss and damage to its goodwill and business which is irreparable in 

nature thus appellant likely to suffer loss due to use of his trademark by third party and damages cannot 

be calculated in terms of monetary compensation and would be irreparable in nature. 

Civil procedure of trademark enforcement may be adopted by registered trademark owner by filing 

civil suit before the District Court. Thereafter appeal against decision of the District Court is required 

to be filed before the High Court under section 96 of Code of Civil Procedure 1908 and second appeal 

is required to be filed before the Supreme Court of Pakistan under section 100 of Code of Civil 

Procedure 1908. In the case of Roznama Hamdard through Chief Editor v. Hamdard National 

Foundation (Roznama Hamdard through Chief Editor v. Hamdard National Foundation, 2015), 

trademark “Hamdard” was registered trademark of Hamdard National Foundation and there were two 

publications “Hamdard Naunehal” and Hamdard-e-Sehat”. Roznama Hamdard published with 

trademark “Hamdard”. Hamdard National Foundation filed suit for infringement of his registered 

trademark. The District Court gave a decision in support of Hamdard National Foundation and ordered 

Roznama Hamdard to stop using trademark “Hamdard” for its publications. Roznama Hamdard went to 

Lahore High Court and filed an appeal against decision of the District Court. On appeal, Lahore High 

Court upheld decision of the District Court and ordered appellant not to use trademark “Hamdard” for 

its publications. Thereafter, Roznama Hamdard filed second appeal before the Supreme Court of 

Pakistan which held that there is a clear-cut deception which leads to confusion in the mind of 

consumer at the market place hence Supreme Court of Pakistan upheld decisions of the District Court 

and Lahore High Court. 

Appeal on decision of the Registrar lies before the High Court but no appeal can lie against extension 

of time decision and the Registrar is not required to hear parties before ordering extension of time and 

cost of the Registrar in proceedings is on discretion of the Court, but he cannot be held liable to pay 

costs to any party of the matter in issue (Trade Marks Ordinance of 2001 section # 114 and Trade 

Marks Rules of 2004 part # 1, chapter 12, rule 78). 

In pending proceedings before the Court, it may require disputing parties to give written or oral 

evidence by submitting affidavit, copies of opposition letter, application of rectification, counter 

statement, other documents which are available at Trademark Registry and copies are obtainable by 

applying for it in a prescribed manner after paying prescribed fee. If any party of proceedings dies, his 

successor may join proceedings on his behalf if permitted by the Registrar or by the Court and if they 

think fit that there is no need for any successor to defend interests of deceased person, proceedings can 

be continued without any successor. The Registrar cannot be compelled to produce the register or any 

related document where required contents can be proved through certified copy or through oral 

statement, but the Court may require him to produce them in special cases (Trade Marks Ordinance of  

2001 sections # 121-124 and Jennings, 1989). 

In the case of M/s National Tools Industries Registered v. M/s Azhar Enterprises (M/s. National Tools 

Industries Registered v. M/s. Azhar Enterprises, 2009), appellant National Tools Industries is 



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manufacturer of shovel with trademark “Single Camel” while respondent M/s Azhar Enterprises is 

manufacturer of shovel carrying trademark “Two Camels”. Appellant filed civil suit of trademark 

infringement for obtaining damages and permanent injunction to prevent further infringement of his 

registered trademark. The Court dismissed plea of appellant holding that trademark used by respondent 

is distinct having no similarity with trademark of appellant. The Court held that infringement of 

trademark cannot be proved by bringing buyers in witness box as each side of proceedings are required 

to lead evidence of its own choice and pass through tool of cross-examination. Thereafter, the Court is 

required to examine material and relevant evidence. In this case, Trial Court has not committed 

material irregularity while reaching conclusion but has neglected to follow law. 

The Court held that appellant has failed to prove damages and his claim has rightly been declined by 

the Trial Court and appeal to that extent stood dismissed, but suit of appellant is decreed for permanent 

injunction restraining respondent from infringing appellant’s registered trademark thus appeal is 

partially allowed. The Court further held that claim of plaintiff for damages is permissible only when 

damages claimed used asserted in suit under each head separately and proved through evidence. 

Apart from institution of civil suit by registered trademark owner, if registered user suspects that any 

person infringes his right of registered trademark, he can ask proprietor to take legal action against him 

within 2 months otherwise he can bring proceedings with his own name but he cannot proceed further 

if he does not add name of proprietor as joint plaintiff or defendant except if the Court permits him to 

proceed and proprietor cannot be held liable for costs except if he takes part in proceedings and 

registered user apply and proceed without adding proprietor for temporary relief (Trade Marks 

Ordinance of 2001 provision # 12, 1st schedule and Schechter, 1927). 

Apart from registered user of trademark, licensee is also authorized to ask proprietor to take legal 

action against infringement of trademark which affects right of licensee and if proprietor does not reply 

within 2 months and refuses or fails to take legal action, licensee may institute civil proceedings with 

his name but he cannot proceed further unless the Court allows and licensee makes proprietor joint 

plaintiff or defendant in proceedings but in case of temporary relief, licensee can proceed alone without 

including proprietor. If proprietor is added as defendant but does not take part in proceedings, he would 

not be held liable for costs in action and if legal proceedings brought by registered trademark proprietor 

and licensee suffered loss due to proceedings, the Court would consider and may make such directions 

as it thinks fit and licensee holds right to apply in the Court for pecuniary relief (Trade Marks 

Ordinance of 2001 section # 41, 77 and Offner, 1958). 

When civil proceedings is brought for infringement of registered trademark in the name of more than 

one person, proceedings cannot undergo except if co-owners are made plaintiff or defendant and if any 

co-owner does not participate in legal proceedings, he would not be held liable to pay costs in action 

(Trade Marks Ordinance of 2001 section # 24 and Trade Marks Rules 2004 6th schedule).  

When application for infringement of trademark is made before the Court, it can make an order 

requiring infringer to erase, remove or obliterate trademark if it is reasonably practicable and may be 



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required to hand over material used under trademark to such authority for erasure, removal, obliteration 

or destruction or directs infringer to hand over material to the owner of trademark if he applies for 

occupation of infringed material within 3 years (Trade Marks Ordinance of 2001 clause # 12, 1st 

schedule and Trade Marks Rules of 2004 part # 1, chapter 7). 

In the case of Fawad Jan v. M/s Interlink Communication Private Limited (Fawad Jan v. M/s. Interlink 

Communication Private Limited, 2015), M/s Interlink Communication Private Limited is registered 

company under section 32 of Companies Ordinance 1984 for selling mobile accessories brought civil 

suit before District Court Peshawar for obtaining permanent injunction against Fawad Jan to stop him 

from using registered trademark, its design, getup, color, scheme and for grant of damages RS 

10,00,00,000/- due to illegal usage of registered trademark. Respondent has a good trade reputation 

hence petitioner used similar trademark for selling its mobile accessories as well as packing of products 

with slight dissimilarity of letter N. Respondent M/s Interlink Communication Private Limited lodged 

First Information Report (FIR) at nearby Police Station against illegal practice of Mr. Fawad Jan under 

relevant sections of Code of Criminal Procedure 1898 and Pakistan Penal Code 1860 thus concerned 

authority raided on alleged premises and 165 pieces were recovered. Apart from criminal procedure of 

trademark enforcement, M/s Interlink Communication Private Limited also brought civil suit before the 

District Court hence Mr. Fawad Jan applied for rejection of plaint under Order VII, Rule XI of Code of 

Civil Procedure 1908 and for summoning documents from plaintiff to enable him to submit written 

statement but the District Court rejected both applications thus he filed a writ petition under article 199 

of the Constitution of Pakistan 1973 against decision of the District Court before Peshawar High Court. 

Peshawar High Court held that plaintiff has right under section 117 of Trade Marks Ordinance 2001 to 

bring civil suit against infringement of his registered trademark before the District Court which is 

rightly performed by plaintiff as infringed logo is already registered under Trade Marks Ordinance 

2001 and infringed trademark is in process of registration and section 33 of Trade Marks Ordinance 

2001 states that date of registration of trademark is the date when application for registration of 

trademark is filed before Trademark Registry thus defendant/petitioner is an infringer of registered 

trademark and has not submitted written statement in the District Court yet and filed this petition thus it 

is dismissed. 

Once civil suit is decreed in favor of registered trademark owner, he may apply for handing over 

infringed goods/article to him or to some authorized person within 3 years. Limitation time of 3 years 

does not apply if the owner of registered trademark has any type of disability or he is not aware of the 

fact due to fraud or concealment. Infringing goods are those goods which are used for trade in Pakistan 

under trademark which is identical to registered trademark for same classification of goods. Infringing 

article is that article which is made to make copies of registered trademark and it is in possession of a 

person who reasonably believes that this is to be used for production of infringed goods. The Court may 

order for compensation and destruction of infringed material and with order of destruction or feature of 

infringed goods, the Court may order for compensation to the owner/user/licensee if the Court thinks 



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reasonable for protection of their interests (Trade Marks Ordinance of 2001 section # 50-51 and Malik, 

2010). 

Lahore High Court held in the case of Hafiz Muhammad Ramzan v. Hafiz Habib-ur-Rehman (Hafiz 

Muhammad Ramzan through Legal Heirs v. Hafiz Habib-ur-Rehman, 2006) that plaintiff is 

manufacturer of sweet with description Multani Suhan Halva and tradename of his product has been in 

use since 1947 and registered as trademark in 1963. The defendant was one of plaintiff’s employee and 

after leaving job, defendant started making identical sweet with tradename Hafiz Ka Multani Sohan 

Halva. Plaintiff filed civil suit of trademark infringement against defendant for infringing his registered 

trademark “Hafiz”. Two trademarks are of same inscription, color and both goods are sold in a similar 

resembled packet too. The Court held that Hafiz means protector, preserver, guardian, governor and 

Hafiz is not a word which cannot be accepted as trademark. Acceptance of word Hafiz as trademark by 

Trademark Registry can by no stretch of imagination be taken as violation of any provision of Trade 

Marks Ordinance 2001 hence this word does not injure religious feelings of any sect of Muslims. The 

Court held that word Hafiz was rightly adopted by registered proprietor in 1963 hence he has been 

working since then continuously without interruption. The Court held that word Hafiz neither 

descriptive nor surname and found capable of being registered as trademark. Trial Court rightly 

decided in favor of plaintiff which is upheld by Appellate Court. 

3.2 Administrative Procedure 

TRIPS provision dealing with administrative procedure of trademark enforcement is basically article 49. 

Articles 22-23 of TRIPS also contain requirements to be complied by administrative authority of 

member state. Administrative authority of member state is required to comply with civil procedure 

provisions of TRIPS (42-48). As per article 22 (2) (b) of TRIPS, registration of trademark may be 

invalidated if it contains geographical indication misleading public about its true place of origin. 

Similarly, article 23 (2) of TRIPS requires member states to invalidate registration of trademark 

consisted of wine/spirit wrongly indicated to the place which is not its origin by ensuring equitable 

treatment to producers and not misleading the consumer (TRIPS of 1994). 

Administrative procedure of trademark enforcement runs in Pakistan before Trademark Registry during 

registration process as well as afterwards and before IP Tribunal. Once application for registration of 

trademark is filed before the Registrar, the Examination Section checks application and the Registrar 

accepts or rejects application. Opposition Letter can be filed within 2 months against trademark 

registration before the Registrar of trademark, he decides issue on presented evidence. Apart from 

opposition procedure during registration before the Registrar at Trademark Registry, administrative 

procedure runs through IP Tribunals in Pakistan, established under sections 15-16 of Intellectual 

Property Organization of Pakistan Act 2012. The Registrar of trademark at Trademark Registry works 

as the Presiding Office of IP Tribunal in Karachi and authority is designated to the Sessions Judge in 

Lahore. Only two IP Tribunals are not sufficient and there is requirement to establish more IP 

Tribunals throughout Pakistan (Adeni, 2015; Bently & Sherman, 2014).  



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IP Tribunals are established for settlement of IP issues in Pakistan and decisions of IP Tribunals are 

required to be made within 90 days. The Presiding Officer of IP Tribunal is appointed by the Federal 

Government of Pakistan after consultation with the Chief Justice of High Court. IP Tribunal is 

empowered to consult IP experts during proceedings between disputing parties and remuneration of 

experts are required to be paid by parties (Trade Marks Ordinance of 2001 section # 2 (xliv)). 

Subject to any other law in Pakistan, IP Tribunal is authorized to hear all cases related to IP in Pakistan. 

Transferred cases from the Court to IP Tribunal is required to be heard from the point where the Court 

stops, there is no need to start case from beginning and record evidences again by calling witnesses. 

Once IP Tribunal announces its decision, appeal on decision of IP Tribunal can be filed by aggrieved 

party within 30 days before the High Court (Trade Marks Ordinance of 2001 section # 19 and Dutfield 

& Suthersanen, 2008). 

In the case of Well Aktineesellschaf v. Shamim Akhtar (Wella Aktineesellschaf v. Shamim Akhtar and 

Other, 2015), Wella Aktineesellschaf is manufacturing and exporting cosmetics company applied for 

registration of “WELAFORM”, “WELAFLEX” and “WELA with Device” in respect of manufacturing 

and exporting soap, perfume, oil, cosmetic, cleaning products, products in relation with hair and related 

products before Trademark Registry in Pakistan. The Registrar of trademark accepted his application of 

registration and registered trademarks “WELAFORM”, “WELAFLEX” and “WELA with Device”. 

Thereafter, the Ministry of Commerce, Government of Pakistan put a ban on exportation of cosmetics, 

cleaning and related products hence registered trademark owner did not able to use his registered 

trademarks within prescribed time of 3 years. Respondent Shamim Akhtar applied for registration of 

similar trademarks and simultaneously opposed registration of appellant before the Registrar of 

trademark on a ground that appellant has failed to use them in favor of registered goods within 

prescribed time. 

The Registrar of trademark accepted application of respondent and removed entry of appellant’s 

trademarks “WELAFORM”, “WELAFLEX” and “WELA with Device” from the register. Appellant 

Wella Aktineesellschaf filed an appeal before Sindh High Court against decision of the Registrar as 

Sindh High Court upheld decision of the Registrar. Appellant filed second appeal before Supreme 

Court of Pakistan which held that trademarks “WELAFORM”, “WELAFLEX” and “WELA with 

Device” is personal property of appellant and rightly registered in his favor hence dismissed orders 

passed by the Registrar on ground that when appellant applied for registration of trademarks, it means 

that he wants to use it and hindrance was created in his way which was beyond his control thus his 

registered trademarks are validly registered and entries in trademark register should be kept intact in his 

favor. 

IP Tribunal is less expensive, less formal and faster way of deciding disputes thus IP Tribunal saves 

time of disputing parties. IP Tribunals in Pakistan is beginning of new era which may lead nation to 

economic growth because IP Tribunal is required to decide cases within 90 days. Currently, there are 2 

IP Tribunals established by the Federal Government of Pakistan in Lahore and Karachi and there is a 



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need of more IP Tribunals throughout Pakistan especially in Peshawar and Quetta (Jilani, 2013). 

The Presiding Officer of IP Tribunal has powers as judge of the Civil Court to receive oral/written 

evidences through affidavit, administer oath, summons attendance of witnesses, summons production 

of document, issue commission, examine witnesses and issue certificate. He is also empowered 

requiring applicant to furnish security for costs of proceedings related to an opposition or an appeal. In 

case if he fails to provide security, his application would be treated as abandoned. He is also 

empowered to require the Registrar to appear before it or to submit written statement consisting record 

of proceedings related to matter in issue raised before him, grounds of decision given by him and any 

other matter relevant to concerned issue (Trade Marks Ordinance of 2001 section # 72 and Trade 

Marks Rules of 2004 part # 1, chapter 11, rule 63).  

The Registrar of trademark has authority to decide ownership of trademark as in the case of Cephalon 

France v. Himont Pharmaceuticals (Cephalon France v. Himont Pharmaceuticals, 2015), appellant 

Cephalonia France entered agreement with respondent Himont Pharmaceuticals to import and sale 

products of respondent under trademark “SPASFON”. Respondent applied for registration of trademark 

“SPASFON” with his own name under category of “Antispasmodic Pharmaceutical Preparation”. 

Appellant filed application of opposition before the Registrar of trademark and respondent filed 

declaratory suit before Lahore High Court by adopting civil procedure of trademark enforcement. Both 

parties applied for stay of administrative proceedings before the Registrar of trademark hence the 

Registrar transferred matter to the Court which held that ownership of trademark is required to be 

decided by the Registrar of trademark and not by the Court thus matter is transferred to the Registrar 

for determination of ownership of trademark “SPASFON”. 

While deciding issue between parties, the Registrar of trademark must provide equal opportunities to 

both parties of proceedings which is also prescribed requirement under article 42 of TRIPS. In the case 

of Messrs Gujranwala Food Industries v. Messrs Coral Enterprises (Messrs Gujranwala Food 

Industries (Pvt) Ltd v. Messrs Coral Enterprises (Pvt) Ltd, 2013), appellant Messrs Gujranwala Food 

Industries opposed registration application of respondent Messrs Coral Enterprises and submitted 

application of opposition followed by counter statement by respondent who applied for registration of 

trademarks “ZOMBIE CHEWS”, “SHERBET SHOCKERS” and “WICKED FIZZ”. The Registrar of 

trademark disallowed opposition on a plea that appellant failed to provide prima facie evidence to 

prove his claim beyond reasonable doubt within a prescribed time and that time is not increased by the 

Registrar hence appellant went to Lahore High Court which held that right of hearing must be fulfilled 

during proceedings thus matter is remanded to the Registrar of trademark for resolution and the Court 

asked the Registrar to comply with right of hearing and parties should be duly entitled to substantiate 

their claims and present relevant evidence. 

Once validity of registered trademark is decided in favor of proprietor by IP Tribunal and a final decree 

is issued in his favor as well as certificate to that effect. If any person objects on validity again in any 

legal proceedings with proprietor, the proprietor has a right to obtain full costs, charges and expenses of 



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proceedings which is also prescribed requirement under articles 46-48 of TRIPS (Dutfield & 

Suthersanen, 2008; Haseeb, 2014). 

3.3 Provisional Measures  

TRIPS provision dealing with provisional measures is article 50 which states that judicial authority is 

empowered to order prompt and effective provisional measures to prevent trademark infringement in 

future and to protect evidence required to be presented to prove claim of applicant before competent 

authority. Provisional measures may be invoked if delay in granting injunction may cause irreparable 

harm to applicant or evidence concerned may be destroyed. Injunction order passed by the Court will 

cease to have effect within 20 to 31 calendar days if aggrieved party applies for cancellation of 

injunction order because no legal proceedings has been initiated against the defendant (TRIPS of 

1994). 

Purpose of provisional measures is to permit effective/expeditious actions against continuous illegal 

use of registered trademark, protect evidence which put light in favor of party to prove his plea before 

the Court, stop alleged trademark infringement when there is likelihood that an irreparable harm may 

be caused to right holder and when there is a clear risk that evidence would be destroyed and prevent 

infringed trademark goods to come up during trade after customs clearance. Alleged trademark 

infringement is that infringement which is not prima facie proved before competent authority as it is in 

process of proving or disproving hence right holder needs some protection for himself and for 

evidences he relies upon to prove his claim beyond reasonable doubt before competent authority 

(Reichman, 1995; Schankerman & Scotchmer, 2001).  

In the case of Dollar Industries Private Limited v. Nisar Traders Stationery and General Order 

Suppliers (Dollar Industries Private Limited v. Nisar Traders Stationery and General Order Suppliers, 

2011), plaintiff Dollars Industries Private Limited is engaged in business of manufacturing, trading 

marketing, selling, supply and exporting large variety of high quality stationery items and writing 

materials including ball points, pens, fountain pens, pencils, markers and other allied goods since 1954 

under trademark “DOLLAR”. Dollars Industries Private Limited filed civil suit against defendant for 

using trademark “SCOT” with similar design of product as of plaintiff and applied for grant of 

temporary injunction to prevent defendant form further usage of identical trademark and design of 

plaintiff’s products. 

Sindh High Court held that both designs in question are like each other and capable of creating 

confusion and deception in the mind of public. Furthermore, resemblance in two designs would be 

sufficient to establish infringement but similarity thereof to each other in all respects would not be 

necessary thus there is a prima facie case in favor of plaintiff to justify grant of injunction and balance 

of convenience also appeared to be in favor of plaintiff who would suffer irreparable loss if injunction 

is refused thus temporary injunction is granted. 

Provisional measures come under the ambit of judicial procedure as well as under administrative 

procedure but separate from trademark infringement proceedings as plaintiff may apply for grant of 



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injunction any time during trademark infringement proceedings and the Civil Court or administrative 

authority required to deal both matters separately. In the case of Leo Pharmaceutical Products v. 

Shaigan Pharmaceutical (Leo Pharmaceutical Products v. Shaigan Pharmaceutical (Pvt) Ltd, 2013), 

Leo Pharmaceutical Products and Shaigan Pharmaceutical are manufacturer and exporter of an 

antibiotic cream under trademark “FUDIC”. Leo Pharmaceutical Products filed suit of trademark 

infringement against Shaigan Pharmaceutical and asked for grant of temporary injunction before the 

District Court which was rejected. Leo Pharmaceutical Products filed appeal before Lahore High Court 

which held that Supreme Court of Pakistan has laid down principle that when suit is fixed for 

arguments on an application for grant of temporary injunction, the Court only decides application for 

grant of injunction and would not proceed to reject suit. Lahore High Court remanded matter to the 

District Court again and ordered parties to appear and record evidences before the District Court for 

final decision. 

In another case between Muhammad Ashraf Alias Makhan v. Muhammad Akram (Muhammad Ashraf v. 

Muhammad Akram, 2015), Supreme Court of Pakistan held that registration of trademark gives rise to 

prima facie case, balance of convenience and likelihood of irreparable loss for grant of injunction 

against an infringement of already registered trademark and if applicant fails to prove his claim prima 

facie, his petition would be dismissed. 

Once provisional relief is granted by the Court and application of injunction is decided in favor of 

plaintiff, applicant has a right to go for civil legal action or adopt criminal procedure or administrative 

procedure to prevent defendant from using his registered trademark. In the case of Malik Muhammad 

Rafiq Awan v. Javed Iqbal (Malik Muhammad Rafiq Awan v. Javed Iqbal and Others, 2012), Malik 

Muhammad Rafiq Awan owned “Dera Restaurant” and “Fazl-e-Haq Family Restaurant” is owned by 

Javed Iqbal, located side by side near Qadafi Stadium, Lahore, Pakistan. Later, name of “Fazl-e-Haq 

Family Restaurant” was changed to “Fazl-e-Haq Dera” due to success of “Dera Restaurant”. The owner 

of “Dera Restaurant” Malik Muhammad Rafiq Awan filed suit of declaration before the District Court 

in Lahore and applied against infringement of his trademark “Dera” against the owner of “Fazl-e-Haq 

Dera” restaurant Javed Iqbal and asked the Court to provide preventive relief of injunction immediately 

stopping defendant to use trademark “Dera”. The Court denied provisional relief to plaintiff thus 

plaintiff went to Lahore High Court which held that word “Dera” either be used in similar font size 

with “Fazal-e-Haq” or be dropped from the name otherwise appellant has a right to go for penal action 

against respondent. 

In another case between M/s Golden Thread Industries Karachi v. J & P Coats Company UK (M/s. 

Golden Thread Industries Karachi v. J&P Coats Limited Company U.K., 2013), appellant Golden 

Thread Industries packed their products in a packing which is almost identical in appearance to that of 

respondent and in this way, appellants deceived ordinary purchasers of products. The Court rightly 

awarded temporary injunction in favor of respondents and prevent appellant from identical packaging 

of products. Golden Thread Industries filed appeal before Sindh High Court which held that there is no 



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doubt that color per se cannot be trademark, however where colors have been formed into device or 

devices or where device or devices are used in backdrop of any color combination, trademark as a 

whole may form distinctive trademark and in this case, though trademarks of appellant “GOLDEN (S)” 

and “BUTTERFLY” are phonetically and visually quite different and distinct from respondents’ 

registered trademark “ANCHOR”. 

However, when packets are kept side by side, an ordinary purchaser would not be able to distinguish 

them because identical size of packs in backdrop of yellow color with typical rectangular border 

running across packing, they would tend to cause confusion in the mind of unwary purchaser. 

Trademark is not meant to protect rights of right holder only as it is also made to protect consumer to 

distinguish source of goods and to differentiate between goods/services of one undertaking from 

goods/services of other undertakings. The Court prevented appellant to use identical packaging to 

deceive consumer at market place. 

In the case of Hamdard Laboratories (Waqf) Pakistan v. Muhammad Fahim (Hamdard Laboratories 

(Waqf) Pakistan v. Muhammad Fahim, 2016), appellant Hamdard Laboratories (Waqf) Pakistan is 

registered trademark owner of “Rooh Afza” while respondent Muhammad Fahim is registered 

trademark owner of “Rooh-e-Samar”. Appellant filed application for grant of temporary injunction 

against use of identical trademark which was declined by the Court. Hamdard Laboratories (Waqf) 

Pakistan filed appeal before divisional bench of Sindh High Court consisted of Chief Justice Sajjad Ali 

Shah and Justice Zulfiqar Ahmad Khan. Sindh High Court held that one could see clear resemblance 

including identical caps, ribs at bottom of bottle, word “ROOH” as predominant feature of respondent’s 

label, devices of fruits and placement of wrapper at same place that on appellant’s products thus overall 

impression left in the mind of unwary purchaser is nearly same thus it is reasonable to grant injunction 

and prevent respondent to use identical trademark to protect rights of registered trademark owner and 

to protect consumer. 

3.4 Border Measures 

TRIPS provisions dealing with border measures are articles 51-60 as per which right holder of 

trademark should be allowed to make an application in writing administratively or judicially for seizure 

of suspected counterfeit trademark goods by providing evidence and adequate detail description of 

goods. The competent authority may ask applicant to provide security/equivalent assurance to protect 

defendant. The Customs authority is required to give notice of suspension as well as release of 

counterfeit trademark goods to right holder and give him time at least 10 days to start legal proceedings 

against importer/owner/consignee of seized counterfeit trademark goods. The competent authority may 

destruct or dispose of counterfeit trademark goods and may not allow re-exportation of such goods 

except in exceptional circumstances (TRIPS of 1994). 

If the owner of registered trademark suspects that infringed goods are about to arrive in Pakistan 

through importation of trade, he may apply before the Customs Officer in a written form to treat goods 

as infringed and the owner of registered trademark must mention time and place of arriving goods. The 



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owner must furnish undertaking with notice acknowledging if his apprehension is not correct, he would 

compensate the owner, importer and consignee of goods for their loss and for that purpose he is 

required to furnish security or an equivalent assurance (Cychosz, 2003). 

Complaint against infringed trademark goods are required to be made in accordance with statutory 

requirements. In case of Collector of Customs v. Messrs Decent Autos (Collector of Customs v. Messrs 

Decent Autos, 2015), Messrs Reckitt and Colman Limited appointed Messrs Reckitt and Benckiser as 

its sole agent for import, distribute and sell its products. Mortein brand of insecticide spray being 

shipped by Reckitt and Colman Overseas to Reckitt and Benckiser Pakistan. Messrs Reckitt and 

Benckiser issued letter to the Collector of Customs to stop parallel imports of Mortein brand. Matter 

went to the Appellate Board which held that letter issued by respondent is not in accordance with 

sections 53-55 of Trade Marks Ordinance 2001. Notice must accompanied by undertaking to indemnify 

customs authorities and section 54 of Trade Marks Ordinance 2001 states that trademark owner would 

compensate importer, consignee and the owner of goods in case of damage due to wrongful suspension 

and customs authority may ask the owner of registered trademark to provide adequate security which 

would not be as such to deter recourse of border measures under section 55 of Trade Marks Ordinance 

2001. Complaint by respondent is out of statutory requirements which are required to be fulfilled. 

Customs authority cannot invoke section 15 of Customs Act 1969 against complaint made in 

contradiction with sections 53-55 of Trade Marks Ordinance 2001 hence there is no case of trademark 

infringement. 

Applicant/Complainant is required to submit security but when applicant submits an insufficient 

security and compensation amount is higher than that, remaining amount is due as debt upon the 

applicant and may be recovered by the Federal Government of Pakistan as per prescribed procedure 

under section 202 of Customs Act 1969. The Federal Government of Pakistan is not liable to loss, 

damage, delay due to seizure, failure to seize or release of goods (Customs Act of 1969 sectrion  # 202 

and Trainer, 2008). 

If the Collector of Customs reasonably believes that there are sufficient grounds to suspect that 

imported goods are counterfeit trademark goods, he is required to seize them and put them in a secured 

place. He is required to notify the owner of trademark: identity of goods and provide full name and 

address of importer. Thereafter, applicant is required to start legal proceedings against importer within 

10 days from the day of receiving notice or within such other time as extended by the Collector of 

Customs otherwise seized goods would be released to importer/consignee/owner of goods (Trade 

Marks Ordinance of 2001 section  # 56-58 and Grossman & Lai, 2004).  

Customs authority of Pakistan is required to act against goods bearing counterfeit trademark under 

section 15 of Customs Act 1969, if there is a prima facie evidence. In the case of Mian Ziauddin Shaikh 

v. Federation of Pakistan (Mian Ziauddin Shaikh v. Federation of Pakistan, 2014), the Deputy 

Collector of Customs issued show cause notice to Zia Uddin Sheikh stating goods bearing alleged 

infringed trademark “Ahmad” would be confiscated followed by penal action. Mr. Ziauddin Shikh filed 



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writ petition against show cause notice before Sindh High Court asserting that though trademark 

“Ahmad” is registered with the name of Ahmed Foods Private Limited but he has been authorized 

importer of goods bearing trademark “Ahmed” for 16 years and Customs Authority do not have right to 

commence proceedings against him under section 15 of Customs Act 1969. Ahmed Foods Private 

Limited replied that petitioner’s authority of importation is revoked in 2012. 

Petitioner further asserted that respondent is not empowered to revoke his authority of importation as 

who holds affairs of Ahmed Foods Private Limited is pending question before the Court thus Sindh 

High Court held that show cause notice issued by customs authority should be withdrawn as there is no 

prima facie evidence against petitioner thus he should be allowed to import goods bearing trademark 

“Ahmed”. 

The Collector of Customs may release goods if applicant does not start legal proceedings within 

prescribed time, withdraws legal proceedings, consents in writing that he does not suspect seized goods 

anymore, legal proceedings have been started and the Court orders for release of seized goods or the 

Collector of Customs reasonably believes that there is no sufficient ground to believe that goods are 

infringed goods (Trade Marks Ordinance of 2001 section # 59 and Khan, 2014). 

The Court may order release or forfeiture of seized goods, but the Court is not empowered to order 

exportation of seized goods, removing trademarks which are affixed on counterfeit trademark goods, 

local sale of seized goods but if the Court decides matter in favor of defendant, orders plaintiff to 

compensate the owner of seized goods for losses he has suffered due to seizure. If the Court orders for 

disposal of forfeited goods, the Collector of Customs must not facilitate exportation of seized goods or 

their local sale or removal of trademark from counterfeit trademark goods which is also prescribed 

requirement under article 59 of TRIPS (Tanwiri & Qamar, 2011). 

After seizure of counterfeit trademark goods, registered trademark owner starts legal proceedings and if 

decision of the Court is announced in favor of registered trademark owner, he is required to apply for 

execution of decision within 3 weeks and if the owner of trademark does not apply for execution order 

of the Court within 3 weeks, the Collector of Customs releases goods to importer/consignee/owner of 

goods. The Collector of Customs may apply in the Court for retaining control over counterfeit 

trademark goods if release, disposal or any other action against seized goods is required (Trade Marks 

Ordinance of 2001 section # 62-63 and Lakshmi & Patro, 2009). 

In the case of Messrs Akhtar Muhammad and Brother v. Haji Muhammad Nabi (Messrs Akhtar 

Muhammad and Brother through Proprieter v. Haji Muhammad Nabi and Brother, 2011), Haji 

Muhammad Nabi claimed that he has been using trademark “FRUTTI” for a long time thus he has right 

to use it during trade and no one has right to infringe his trademark right. Akhtar Muhammad started 

using trademark “FRUTTI” for his product of juice powder. Haji Muhammad Nabi applied against 

importation of counterfeit trademark goods of Akhtar Muhammad before the Collector of Customs. 

Application was duly rejected by the Collector of Customs thus appellant Akhtar Muhammad could 

legally import his product of juice powder under trademark “FRUTTI”. Thereafter, Haji Muhammad 



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Nabi applied against infringement of his trademark “FRUTTI” before the District Court and prayed for 

temporary injunction to prevent further infringement of his trademark. The District Court issued 

interim injunction and ordered to stop Akhtar Muhammad from further usage of trademark “FRUTTI”. 

Mr. Akhtrar Muhammad appealed before Lahore High Court hence the Court dismissed orders passed 

by the District Court on a ground that trademark “FRUTTI” is registered in favor of Akhtar Muhamad 

thus importation of goods containing legal registered trademark cannot be stopped and no border 

measures can be taken against goods containing registered trademark. 

The Collector of Customs is eligible to make regulations for notification in respect to process of seizure, 

forfeiture, disposal and release, require applicant to furnish evidence of his ownership and require 

applicant to pay fee to cover administrative costs (Trade Marks Ordinance of 2001 section # 66 and 

Chiang, 2004). Customs authority may ask importer to provide all necessary information about his 

imported goods. In the case of Kashif Naseem v. Federation of Pakistan (Kashif Naseem v. the 

Federation of Pakistan, 2008), petitioner Kashif Naseem is an importer of goods, filed writ petition 

before Sindh High Court against customs authority that his products are protected under IP laws and he 

is not under obligation to disclose information of his goods. Chief Justice of Sindh High Court 

Sabihuddin Ahmad and Justice Faisal Arab held that protection of imported goods under IP laws 

cannot be used as a shield to resort under-invoicing and deprive ex-chequer of customs duties and 

charges at actual transaction value. 

The Court further held that it is the duty of an importer to provide information of his imports so that 

customs authority may proceed smoothly with their obligation to ascertain actual transaction value. The 

Court further held that petitioner instead of providing necessary information unduly rushed to the High 

Court and filed instant petition thus his petition is dismissed, and he is ordered to furnish information to 

customs authority. 

3.5 Criminal Procedure 

TRIPS provision dealing with criminal procedure of trademark enforcement is article 61 as per which 

member states are required to apply penalties at least in willful counterfeiting of trademark and 

occurred on commercial scale. Remedies must include imprisonment, fine, seizure, forfeiture and 

destruction of infringing goods (TRIPS of 1994). 

Apart from adopting administrative and civil procedures of trademark enforcement, an aggrieved party 

may adopt criminal procedure of trademark enforcement by filing First Information Report (FIR) at the 

nearest Police Station where offence of trademark infringement is committed. Thereafter, Police 

Officer is required to start investigation as per procedure prescribed in Code of Criminal Procedure 

1898. Later, case is required to be presented before authorized officer and either charge is framed or not 

and if charge is framed trial would follow and resultantly accused would either be acquitted or be 

punished as per prescribed provisions of Pakistan Penal Code 1860 (Blakeney, 2009; Khan, 2010; 

Christopher, 2012). 

There is distinction under Pakistan Penal Code 1860 between trademark and property mark. Trademark 



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is a mark which signifies manufacture or merchandise goods of trade. Property mark is a mark which 

signifies property of a person. Person uses another person’s registered trademark with a purpose to 

signify it with his manufacture or merchandise goods is an infringer and would be punished with one 

year imprisonment or fine or both except if he used trademark without intent to defraud however a 

person counterfeits registered trademark in Pakistan is punishable with imprisonment for 2 years or fine 

or both but a person counterfeits trademark of a public servant for entitlement of any exemption is 

punishable with imprisonment for 3 years or fine or both (Pakistan Penal Code of 1860 sectiosn # 

478-484 and Gaur, 2009). 

Any person possesses things which are used for making counterfeiting mark or possesses counterfeiting 

mark is punishable with imprisonment for 3 years with fine or both. Any person sells, exposes or 

possesses goods, having counterfeiting trademark is punishable with imprisonment for 1 year or fine or 

both except if he acted innocently. Tampering or removing registered trademark from goods/services is 

punishable offence for 1-year imprisonment or fine or both (Mahmood, 1981; Miceli, 1991). 

Sindh High Court held in the case of Haji Danu Mian Saudagar v. Shaikh Muhammad Idris (Haji Danu 

Mian Saudagar v. Shaikh Muhammad Idris and Another, 1969) that a person is considered 

counterfeiting trademark only when two prerequisite conditions occur: (i) accused use trademark 

resembling registered trademark for his products as both trademarks are same or of similar description, 

and (ii) accused intends by that resemblance to practice deception or is saddled with knowledge that 

while causing resemblance, is likely that deception would thereby be occasioned. 

Person is considered an infringer if he uses trademark in the course of trade for goods/services identical 

with registered trademark, uses registered trademark as his trade name or domain name without prior 

consent of proprietor, uses any property under infringed trademark without authorization of 

proprietor/licensee, uses trademark after alteration and obliteration except if he does not have 

knowledge of fact and he has used trademark in good faith, sells, offers to sell, exposes or takes in 

possession goods having an infringed trademark except he acted innocently and had reason to believe 

that it was a genuine trademark or the owner of registered trademark uses some part of his registered 

trademark he already disclaimed (Trade Marks Ordinance of 2001 section # 40 and Vardag, 2012). 

The Supreme Court of Pakistan held in the case of Mehmood Raza v. the State (Mehmood Raza v. the 

State, 2006) that allegations against petitioner Mehmood Raza are that he is not only blending, refining 

and marking fake oil but also using forged seals, cans, tapes, stickers and trademark having monograms 

of Pakistan State Oil Company (PSO). Petitioner is not only causing wrongful loss to company but also 

wrongly gaining from their illegal acts. PSO is directly aggrieved by illegal and wrong act of petitioner. 

Petitioner deliberately using registered trademark of PSO with fake stickers which amounts to direct 

threat and attacked on property owned by PSO. In such circumstances, criminal action can be taken 

under sections 478-486 of Pakistan Penal Code 1860 to protect property and right of PSO. Deliberate 

violation is punishable under law hence sections 468-469 and 471 of Pakistan Penal Code 1860 are 

applicable in the instant case as petitioners forged monograms, sticker’s, tapes of PSO with an intent to 



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cause damage or injury which is liable to be punished under relevant provisions of Pakistan Penal Code 

1860. 

Person cannot be considered an infringer if he uses registered trademark in good faith, registered 

trademark as his name, name of his predecessor, place of business name or place of predecessor’s 

business name, subject to restrictions prescribed under Trade Marks Ordinance 2001 (Trade Marks 

Ordinance of 2001 section # 42 and Carmen, 2013). 

False trade description, false registry in trademark register, falsely representing trademark as registered 

and using government emblem and place as Trademark Registry are considered criminal offences 

under Trade Marks Ordinance 2001 and are dealt as per criminal procedure of trademark enforcement 

in Pakistan. Any person applies false trade description or makes false entry in the register is punishable 

with imprisonment for 3 months to 3 years and can also be liable to 50 thousand rupees fine. In case of 

repeat false trade description offence, imprisonment is for 6 months to 3 years and fine is 1 hundred 

thousand rupees. Any person falsely represent trademark as registered is punishable with imprisonment 

for 1 to 6 months and can also be liable to 30 thousand rupees fine (Trade Marks Ordinance of 2001 

section  # 98-100 and Vardag, 2012). 

Using place as Trademark Registry is offence and punishable with imprisonment for 2 years, fine or 

both. Up to 15% fine can be deducted as compensation for aggrieved party if they have suffered losses 

due to infringement of trademark. If a person does an abetment of trademark infringement, he may be 

tried for that offence at any place in Pakistan as if he has done that trademark infringement in Pakistan. 

Company’s head is responsible if trademark infringement is occurred by company and if he is unaware 

of trademark infringement and other authoritative persons of company like the Secretary or the 

Manager have done trademark infringement, they are responsible for their offences (Trade Marks 

Ordinance 2001 section # 101-107 and Christophe, 2012). 

In the case of Riasat Ali v Asad Rafi (Riasat Ali v Asad Rafi, 1987), civil suit about trademarks 

“POLKA” and “SALVA” is pending adjudication in the Civil Court and matter is also under 

consideration with the Registrar of trademark at Trademark Registry. Simultaneously, petitioner Riasat 

Ali was prosecuted by Asad Rafi for counterfeiting trademark “POLKA” and “SALVA” but was 

acquitted from charges by 1st Class Magistrate as per presented evidence. The respondent challenged 

acquittal order through revision under section 439-A of Criminal Procedure Code 1898 before the 

Additional Sessions Judge who accepted same hence set aside acquittal order of Riasat Ali and 

remanded case for fresh decision as per law. Riasat Ali filed petition before Lahore High Court for 

quashing remand order of the Additional Sessions Judge. 

Lahore High Court held that a person is said to use false trademark if he indicates goods, case, package 

or other receptacle containing goods, case, package or other receptacle in a manner reasonably calculated 

to cause it to believe that goods so marked, or goods contained in any such receptacle so marked are 

manufacture or merchandise of a person whose manufacture or merchandise they are not. Lahore High 

Court further held that respective rights of parties of this case are subject-matter of dispute in the Civil 



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Court and under consideration before the Registrar of trademark at Trademark Registry hence criminal 

proceedings before the Magistrate is required to be stayed when administrative proceedings are already 

going on and civil proceedings are also carried out by the Civil Court. 

 

4. Conclusion and Recommendations 

TRIPS provisions dealing with trademark are articles 15-21 and dealing with enforcement of trademark 

are articles 41-61 as relevant provisions of Paris Convention are articles 6-9. TRIPS and Paris 

Convention have been ratified by Pakistan, but ratification of International Treaty and its 

implementation are two different things. Effective enforcement may take years to achieve by positive 

steps taken by Pakistan under the light of relevant provisions of TRIPS and Paris Convention for 

betterment of trademark and its enforcement procedures. Trademark enforcement procedures must be 

adequate, expedient, and must not be complicate, costly, and time consuming. 

Trademark definition is prescribed under section 2 (xxiv) of Trade Marks Ordinance 2001 which does 

not contain wordings: sign/signs and combination of signs which is there under article 15 of TRIPS, it 

is therefore recommended that wordings: sign/signs and combination of signs should be added in the 

definition of trademark under section 2 (xxiv) of Trade Marks Ordinance 2001. 

Applicant may apply before Trademark Registry at Karachi/Lahore Pakistan for registration of 

trademark on prescribed application form providing his details and details of his agent, description of 

trademark and statement of goods/services for which trademark is required and pay prescribed fee. 

Trademark Registry only have one branch in Lahore which is not sufficient for a country of more than 

200 million people. Therefore, more Trademark Registry branches are required to be established 

throughout Pakistan for betterment of trademark registration process. Moreover, there is lack of IP 

Tribunals therefore more IP Tribunals are required to be established throughout Pakistan and more IP 

experts and examiners in-charge of registration are also required to be hired for betterment of 

trademark enforcement procedures in Pakistan. 

Registered trademark can be opposed within 2 months before the Registrar of trademark after its 

publication in a prescribed journal. Opposition party is required to send notice of opposition to the 

Registrar. The owner is required to provide counter statement and opposition is required to give 

rejoinder. Thereafter, evidences would be recorded before the Registrar and he decides matter finally 

after giving full opportunity of hearing to parties. 

Trademark infringement takes place when unauthorized person uses registered trademark as his own 

property for exhibition of his goods/services. The owner of registered trademark may take an action 

against trademark infringement and he can inform infringer about ownership of his trademark, but he 

cannot threat infringer without adopting due process of law. The owner of trademark may avail civil or 

administrative procedures for enforcement of his registered trademark and can also take help from 

provisional and border measures and avail criminal procedure of trademark enforcement for protection 

of his registered trademark in Pakistan. 



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The registered trademark owner may institute civil suit at the District Court under section 117 of Trade 

Marks Ordinance 2001 for claiming damages under section 28 of Trade Marks Ordinance 2001 or for 

obtaining preventive relief under sections 52-57 of Specific Relief Act 1877. Trademark owner may 

apply against trademark registration application before the Registrar under sections 28-29 of Trade 

Marks Ordinance 2001 and may also apply before IP Tribunal under section 15 of Intellectual Property 

Organization of Pakistan Act 2012. IP Tribunal is required to pronounce its decision within 90 days 

and appeal against it may be filed before High Court within 30 days under section 19 of Intellectual 

Property Organization of Pakistan Act 2012. Customs authority may seize counterfeit trademark goods 

under section 56 of Trade Marks Ordinance 2001 and sections 15-17 of Customs Act 1969. Criminal 

procedure runs under Code of Criminal Procedure 1898. If accused proved guilty in a trial would be 

punished under sections 478-489 of Pakistan Penal Code 1860 and sections 98-107 of Trade Marks 

Ordinance 2001. 

TRIPS provisions dealing with trademark are articles 15-21 and dealing with enforcement of trademark 

are articles 41-61 as relevant provisions of Paris Convention are articles 6-9. TRIPS and Paris 

Convention have been ratified by Pakistan, but ratification of International Convention and its 

implementation are two different things as better enforcement of trademark may take years to achieve. 

Pakistan needs more Trademark Registry branches as only 1 branch for a country of more than 200 

million people is not sufficient. More IP Tribunals are required to be established throughout Pakistan 

for betterment of trademark enforcement procedures. IPO-Pakistan and Trademark Registry are 

required to appoint and induct more IP experts and examiners in-charge of registration for betterment 

of trademark enforcement procedures in Pakistan. 

 

References 

Adeni, K. (2015). IP Courts: Are We Ready For Them? Islamic Republic of Pakistan, Dawn, Business 

& Finance Weekly. 

Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) of 1994. (n.d.). World 

Trade Organization. 

Alle’Nora Beauty Salon and Parlor through Partner v. Mrs. Qurat-ul-Ain Mansoor. (2016). Civil Law 

Digest 1062. 

Arain, L. A. (2016). Trademark Opposition in Pakistan. Karachi, Pakistan, Arain Law Associates. 

Retrieved from http://www.arainlawasso.com/trademark_opposition_in_pakistan.html 

Bently, L., & Sherman, B. (2014). Intellectual Property Law. United States of America: Oxford 

University Press. https://doi.org/10.1093/he/9780199645558.001.0001 

Blakeney, M. (2009). International Proposals for the Criminal Enforcement of Intellectual Property 

Rights: International Concern With Counterfeiting and Piracy. Intellectual Property Quarterly, 

1(2009), 28. 

Brown, R. S. (1992). Civil Remedies for Intellectual Property Invasions: Themes and Variations. Law 



www.scholink.org/ojs/index.php/elp                   Economics, Law and Policy                        Vol. 1, No. 2, 2018 

148 
Published by SCHOLINK INC. 

and Contemporary Problems, 55(2), 45-78. https://doi.org/10.2307/1191774 

Calboli, I. (2005). Trademark Assignment with Goodwill: A Concept Whose Time Has Gone. Florida 

Law Review, 57, 771. https://doi.org/10.2139/ssrn.676910 

Carmen, R. V. D. (2013). Criminal Procedure: Law and Practice. United States of America, 

Wadsworth Cengage Learning.  

Cephalon France v. Himont Pharmaceuticals. (2015). Civil Law Digest 1400 (Lahore High Court 

2015). 

Chiang, E. P. (2004). Determinants of Cross-Border Intellectual Property Rights Enforcement: The 

Role of Trade Sanctions. Southern Economic Journal, 71(2), 424-440. 

https://doi.org/10.2307/4135300 

Christopher, G. (2012). Criminal Enforcement of Intellectual Property: A Handbook of Contemporary 

Research. United Kingdom, Edward Elgar Publishing Limited.  

Collector of Customs v. Messrs Decent Autos. (2015). Pakistan Company and Tax Law Reports 945 

(Customs Appealte Tribunal 2015). 

Customs Act of 1969. (n.d.). Islamic Republic of Pakistan. 

Cychosz, A. (2003). The Effectiveness of International Enforcement of Intellectual Property Rights. 

John Marshall Law Review, 37, 985. 

Deveci, H. A. (2003). Domain Names: Has Trade Mark Law Strayed From Its Path? International 

Journal of Law and Information Technology, 11(3), 203-225. https://doi.org/10.1093/ijlit/11.3.203 

Dollars Industries Private Limited v. Nisar Traders Stationery and General Order Suppliers. (2011). 

Sindh Law Journal 1547 (Sindh High Court 2011). 

Dutfield, G., & Suthersanen, U. (2008). Global Intellectual Property Law. United Kingdom and United 

States of America, Edward Elgar Publishing. 

Fawad Jan v. M/s. Interlink Communication Private Limited. (2015). Pwshawar Law Reports 807 

(Peshawar High Court 2015). 

Gaur, K. D. (2009). Textbook on the Indian Penal Code. New Delhi, India, Universal Law Publishing 

Company. 

Grossman, G. M., & Lai, E. L. C. (2004). International Protection 0f Intellectual Property. The 

American Economic Review, 94(5), 1635-1653. https://doi.org/10.1257/0002828043052312 

Hafiz Muhammad Ramzan through Legal Heirs v. Hafiz Habib-ur-Rehman. (2006). Civil Law Digest 

615 (Lahore High Court 2006). 

Haji Danu Mian Saudagar v. Shaikh Muhammad Idris and Another. (1969). Pakistan Law Digest 245 

(Sindh High Court 1969). 

Hamdard Laboratories (Waqf) Pakistan v. Muhammad Fahim. (2016). Pakistan Company and Tax 

Law Reports 678 (Sindh High Court 2016). 

Haseeb, Z. (2014). Trademark Infringement in Pakistan. Lahore, Pakistan, Zafar & Associates. 

HERO Motors Limited v. Babar Auto Trading and Manufacturign Company. (2011). Pakistan 



www.scholink.org/ojs/index.php/elp                   Economics, Law and Policy                        Vol. 1, No. 2, 2018 

149 
Published by SCHOLINK INC. 

Company and Tax Law Reports 115 (Sindh High Court 2011). 

Jennings, J. S. (1989). Trademark Counterfeiting: An Unpunished Crime. The Journal of Criminal Law 

and Criminology, 80(3), 805-841. https://doi.org/10.2307/1143899 

Jilani, T. H. (2013). IPR Laws: “Courts” Role Crucial in Implementing Law. Islamic Republic of 

Pakistan, the Express Tribune.  

Kashif Naseem v. the Federation of Pakistan. (2008). West Civil Law Reports 569 (Sindh High Court 

2008). 

Khan, M. F. I. (2010). Trademark in Pakistan. Lahore, Pakistan, United Trademark & Patent Services.  

Khan, Z. (2014). Pakistan. Karachi, Pakistan, Khursheed Khan & Associates. 

Lakshmi, V. V., & Patro, A. M. (2009). Intellectual Property Protection at Border. Journal of 

Intellectual Property Rights, 14(4), 330-339. 

Leo Pharmaceutical Products v. Shaigan Pharmaceutical (Pvt) Ltd. (2013). Civil Law Digest 323 

(Lahore High Court 2013).  

M.Sikander Sultan v. Masih Ahmed Sheikh. (2003). Civil Law Digest 26 (Sindh High Court 2003). 

M/s. Golden Thread Industries Karachi v. J&P Coats Limited Company U.K. (2013). Pakistan 

Company and Tax Law Reports 1351 (Sindh High Court 2013). 

M/s. National Tools Industries Registered v. M/s. Azhar Enterprises. (2009). Pakistan Company and 

Tax Law Reports 1083 (Lahore High Court 2009). 

Mahmood, S. (1981). The Pakistan Penal Code (XLV of 1860). Lahore, Pakistan, Legal Research 

Centre. 

Malik Muhammad Rafiq Awan v. Javed Iqbal and Others. (2012). Civil Law Digest 905 (Lahore High 

Court 2012). 

Malik, N. A. (2010). Manual of Trade Marks & Intellectual Property Laws. Pakistan, Four Star 

Publishers. 

Mehmood Raza v. the State. (2006). Pakistan Criminal Law 149 (Journal Supreme Court of Pakistan 

2006). 

Messrs Akhtar Muhammad and Brother through Proprieter v. Haji Muhammad Nabi and Brother. 

(2011). Civil Law Digest 1730 (Baluchistan High Court 2011). 

Messrs Gujranwala Food Industries (Pvt) Ltd v. Messrs Coral Enterprises (Pvt) Ltd. (2013). Civil Law 

Digest 1812 (Lahore High Court 2013). 

Mian Ziauddin Shaikh v. Federation of Pakistan. (2014). Sindh Law Journal 877 (Sindh High Court 

2014). 

Miceli, T. J. (1991). Optimal Criminal Procedure: Fairness and Deterrence. International Review of 

Law and Economics, 11(1), 3-10. https://doi.org/10.1016/0144-8188(91)90022-6 

Mockapetris, P., & Dunlap, K. J. (1988). Development of the Domain Name System. In SIGCOMM’ 

88 Symposium Proceedings on Communications Architectures and Protocols (Vol. 18, pp. 

123-133). Standford, California, United States of America, Association for Computing Machinery. 



www.scholink.org/ojs/index.php/elp                   Economics, Law and Policy                        Vol. 1, No. 2, 2018 

150 
Published by SCHOLINK INC. 

https://doi.org/10.1145/52324.52338 

Mrs. Samreen Liaquat Malik v. M/s. Aqmar Health Foods. (2009). Pakistan Company and Tax Law 

Reports 141 (Sindh High Court 2009). 

Muhammad Ashraf v. Muhammad Akram. (2015). Pakistan Company and Tax Law Reports 819 

(Lahore High Court 2015).  

Nair, K. R. G., & Kumar, A. (1994). Intellectual Property Rights. New Delhi, India, Allied Publishers. 

Offner, E. D. (1958). Trademark Licensing in Foreign Countries. Journal of the Patent Office Society, 

40, 178. 

Pakistan Penal Code of 1860. (n.d.). Islamic Republic of Pakistan. 

Pioneer Cement Limited through Company Secretary v. Fecto Cement Limited and Others. (2013). 

Civil Law Digest 201 (Lahore High Court 2013). 

Rana, S. S. (2013). Trademark Registration in Pakistan. New Delhi, India, S. S. Rana & Co Advocates. 

Retrieved from 

http://www.ssrana.in/Intellectual%20Property/SAARC/Pakistan/Trademark-Registration-in-Pakist

an.aspx 

Reichman, J. H. (1995). Universal Minimum Standards of the Intellectual Property Protection under the 

TRIPS Component of the WTO Agreement. The International Lawyer, 345-388. 

Riasat Ali v. Asad Rafi. (1987). Pakistan Law Digest 257 (Lahore High Court 1987). 

Roznama Hamdard through Chief Editor v. Hamdard National Foundation. (2015). Supreme Court 

Monthly Register 95 (Supreme Court of Pakistan 2015). 

Safro, B. I., & Keaty, T. S. (2004). What’s in a Name-Protection of Well-Known Trademarks under 

International and National Law. Tulane Journal of Technology & Intellectual Property, 6, 33. 

Scafidi, S. (2001). Intellectual Property and Cultural Products. Boston University Law Review, 81, 793. 

Schankerman, M., & Scotchmer, S. (2001). Damages and Injunctions in Protecting Intellectual 

Property. RAND Journal of Economics, 32(1), 199-220. https://doi.org/10.2307/2696404 

Schechter, F. I. (1927). The Rational Basis of Trademark Protection. Harvard Law Leview, 40(6), 

813-833. https://doi.org/10.2307/1330367 

Tanwiri, J. S., & Qamar, M. (2011). Special Topic Report: Pakistan. Manila, Philippines, Asian Patent 

Attorneys Association. Retrieved from 

http://www.apaaonline.org/pdf/APAA_59th_council_meeting_Manila/CopyrightCommitteeRepor

ts2011/3-PAKISTAN-CopyrightSpecialTopicReport2011.pdf 

Tawakkal General Export Corporation and Tawakkal Garment Industries Limited v. Collector of 

Customs. (1992). Law Report 105 (Sindh High Court 1992). 

Taxpayer v. Department. (2012). Tax Tribunal 325 (Appellate Tribunal Inland Revenue 2012). 

Taylor, D. A. (1958). Certification Marks: Success or failure? The Journal of Marketing, 23(1), 39-46. 

https://doi.org/10.2307/1248015 

Trade Marks Ordinance of 2001. (n.d.). Islamic Republic of Pakistan. 



www.scholink.org/ojs/index.php/elp                   Economics, Law and Policy                        Vol. 1, No. 2, 2018 

151 
Published by SCHOLINK INC. 

Trade Marks Rules of 2004. (n.d.). Islamic Republic of Pakistan.  

Trainer, T. P. (2008). Intellectual Property Enforcement: A Reality Gap (Insufficient Assistance, 

Ineffective Implementation). John Marshall Review of Intellectual Property Law, 8, i. 

Vardag, Z. L. A. (2012). Intellectual Property Rights in Pakistan. Lahore, Pakistan, Pakistan Law Firm. 

Retrieved from 

https://pakistanilaws.wordpress.com/2012/06/01/infringement-of-the-intellectual-property-rights-i

n-pakistan/ 

Vardag, Z. L. A. (2012). Trademark Registration and Infringement in Pakistan. Pakistan, Pakistani 

Law Firm. Retrieved from 

https://pakistanilaws.wordpress.com/2012/04/28/trademark-registration-infringement-in-pakistan/ 

Wadlow, C. (2011). The Law of Passing-Off: Unfair Competition by Misrepresentation. London, 

England, United Kingdom, Sweet & Maxwell.  

Wella Aktineesellschaf v. Shamim Akhtar and Other. (2015). Supreme Court Monthly Register 1274 

(Supreme Court of Pakistan 2015). 

Wong, G. M. (1986). Recent Trademark Law Cases Involving Prosessional and Intercollegiate Sports. 

Detroit College of Law Review, 1, 87. 

Zaheer, A. (2016). Registration Process of Trademark in Pakistan: A Complete Guide. Karachi, 

Pakistan, Qzadeer & Zaheer Law Firm. Retrieved from 

http://www.zaheeradvocate.com/registration-process-of-trademark-in-pakistan-a-complete-guide/ 

 

 


