


































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

Vol. 4, No. 1, 2021 

www.scholink.org/ojs/index.php/elp 

7 
 

Original Paper 

Provisional Measures of Trademark Enforcement in Pakistan: A 

Comparative Analysis with Malaysia and USA 

Sohaib Mukhtar
1*

, Zinatul Ashiqin Zainol
2
 & Sufian Jusoh

3
 

1
 Law Department, Bahria University, Islamabad, Pakistan  

2
 Faculty of Law, National University of Malaysia, Bangi, Selangor, Malaysia 

3
 Institute of Malaysian and International Studies, National University of Malaysia, Bangi, Selangor, 

Malaysia 

*
 Sohaib Mukhtar, E-mail: smukhtar.buic@bahria.edu.pk 

 

Received: September 23, 2020     Accepted: October 10, 2020    Online Published: March 1, 2021 

doi:10.22158/elp.v4n1p7              URL: http://dx.doi.org/10.22158/elp.v4n1p7 

 

Abstract 

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

from goods and services of other undertakings. It is required to be distinctive and non-descriptive. It 

losses its distinctiveness when registered owner of trademark does not take prompt action against its 

infringement. Provisional Measures of trademark enforcement is a measure initiated by the owner of 

trademark during civil or administrative procedure of trademark enforcement to prevent further 

counterfeiting of his trademark and to protect evidence he relies upon during civil or administrative 

procedure of trademark enforcement. Provisional Measures of trademark enforcement in member 

states of World Trade Organization (WTO) must be expedient, adequate, fair, equitable, and must not 

be complicated, costly and time consuming. Provisional measures of trademark enforcement is a civil 

procedure where owner of trademark may ask the Court to prevent counterfeiter from trademark 

counterfeiting. This study is qualitative method of research a comparative analysis of provisional 

measures of trademark enforcement in Pakistan, Malaysia and USA. After a comparative analysis of 

provisional measures of trademark enforcement in Pakistan, Malaysia and USA, it is found that 

Lanham Trademark Act 1946 is comprehensive trademark law of United States of America (USA) 

prescribed grounds to grant and refuse to grant injunctions to prevent trademark counterfeiting. It is 

also found that there is a requirement in Lanham Trademark Act 1946 for a person against whom 

injunctive relief is passed to submit report in writing about manner and method of compliance with 

injunction order. These findings are required to be prescribed in trademark law of Pakistan for 

betterment of provisional measures of trademark enforcement. 



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Keywords 

intellectual property, trademark, preventive relief, injunction 

 

1. Introduction 

Provisional measures of trademark enforcement is very important procedure for effective enforcement 

of trademark, therefore it is required to be expedient, adequate, equitable, and must not be complicated, 

costly and time consuming. Agreement on Trade Related Aspects of Intellectual Property Rights 

(TRIPS Agreement) of World Trade Organization (WTO) is the first International Treaty which 

contains exhaustive enforcement provisions of Intellectual Property (IP) in member states of WTO 

from articles 41 to 61. 

Article 50 of TRIPS Agreement states about provisional measures of trademark enforcement in 

member states of WTO that the Court of member state may order an injunction when there is a 

reasonable cause to believe that if injunction is not ordered, it may harm applicant or evidence may be 

destroyed. The Court of member state may ask plaintiff to provide security or surety before ordering 

injunction to prevent abuse and to protect defendant. Defendant’s right of notice and right of hearing 

are required to be accorded before pronouncing injunction order and he may also have the opportunity 

of review upon decision of the Court within prescribed time. If injunction order is overruled on review 

application of defendant, the Court of member state may order plaintiff to give compensation to 

defendant for the loss he has suffered. The injunction order may be passed by administrative authority 

keeping in view principles laid down in TRIPS Agreement. 

Injunction is preventive relief applied by the aggrieved party to prevent further harm if case is prima 

facie in his favor as well as balance of convenience and an irreparable harm will occur if injunction 

order is not passed by the competent authority. Temporary injunctions are awarded during proceedings 

for temporary time as permanent injunctions are awarded after final decision of the competent authority 

to prevent further harm and to protect evidence. Mandatory injunction is order of the competent 

authority to ask someone to do something which is obligatory upon him or ask him not to do something 

which he is bound not to perform it. 

This research is qualitative method of research a comparative analysis of provisional measures of 

trademark enforcement in Pakistan, Malaysia and United States of America (USA). Important topics of 

provisional measures of trademark enforcement discussed in this treatise are (i) injunctions and types of 

injunctions in Pakistani, Malaysian, and USA laws, (ii) grounds to grant and refuse to grant injunctions 

in Pakistani, Malaysian, and USA Laws.   

 

 

 

 

 



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2. Injunctions and Types of Injunctions in Pakistani, Malaysian, and USA Laws  

In Pakistan, Specific Relief Act 1877 deals with matter of injunctions. Aggrieved party of trademark 

infringement may apply before the Civil Court for obtaining injunctions to prevent further infringement 

or to protect evidence. Injunction is either temporary for specific time, perpetual for time immemorial 

or mandatory for directing party to do or refrain to do something (§52-57 Specific Relief Act, 1877; 

Fiss, 1978). 

Purpose of provisional measures is to permit effective and expeditious action against continuous illegal 

usage of registered trademark and protection of evidence which put light in favor of aggrieved party to 

prove his plea before the Court. Alleged infringement is that infringement which is not prima facie 

prove before competent authority as it is in process of proving or disproving. Right holder needs 

protection for himself and for evidence he relies upon to prove his claim beyond reasonable doubt 

before competent authority. Hence preventing infringement when there is likelihood that an irreparable 

harm may be caused to right holder and when there is a clear risk that evidence may be destroyed and 

to prevent infringed goods to come up during trade after customs clearance (Khan, 2010; Malik, 2010). 

According to section 46 of Trade Marks Ordinance 2001, an infringement of registered trademark shall 

be actionable by proprietor of trademark and have all such reliefs by way of damages, injunctions, 

accounts or otherwise available to the proprietor of trademark as available in respect to infringement of 

any other property right (s46 Trade Marks Ordinance, 2001; Maker, 2014). 

Sindh High court held in the case of Asian Consumer Care Pakistan Limited v Hilal Foods that 

trademark infringement occurs when one party uses trademark that is identical to trademark owned by 

another party in relation to identical goods or services. Infringement of registered trademark can be 

addressed by civil litigation and in several jurisdictions under criminal law as well (CLD 2016, Sindh 

804). 

According to section 40 of Trade Marks Ordinance 2001, a person shall infringe registered trademark if 

such person uses it during trade a mark which is identical with another trademark in relation to goods 

or services which are identical with those for which it is registered (s40 Trade Marks Ordinance, 2001). 

According to section 53 of Specific Relief Act 1877, injunction is either temporary or perpetual. 

Temporary injunction continues until specified time or until further order of the Court granted at any 

time of the suit and are regulated by Code of Civil Procedure 1908 (s53 Specific Relief Act, 1877; 

Busuttil & McCafferty, 2010). 

Where it is proved that any property in dispute is in danger of being wasted, damaged, alienated, 

wrongfully sold, defendant threatens to remove or disposes of his property, the Court may grant 

temporary injunction to restrain staying and preventing wasting, damaging, alienating, sale, removal or 

disposition of property. Plaintiff may apply to the Court for temporary injunction to restrain defendant 

from committing injury complained or breach of contract or injury of like kind arising out of same 

contract. In case of disobedience or breach, the Court may order property of a person to be attached for 

not more than 1 year and may also order that person be detained in prison for not more than 6 months. 



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If disobedience and breach continues, attached property may be sold out and its proceeds be awarded as 

compensation by the Court (r1-2 o39 Code of Civil Procedure, 1908; Foster, 1986). 

An interim injunction passed in absence of defendant shall not ordinarily exceed 15 days except when 

there is failure of its service on to defendant and when defendant seeks time for defense of application 

to injunction. In any case, order of injunction shall cease to have effect on expiration of 6 months 

unless extended by the Court after hearing parties again and for reasons to be recorded for such 

extension and report be submitted before the High Court. Injunction order passed by the Court may be 

discharged, varied or set aside by the Court on application made by any party dissatisfied with such 

order (r4 o39 Code of Civil Procedure, 1908; Rendleman, 1973). 

Applicant is required to apply early during civil proceedings before the Court as delay in applying may 

cause rejection. Sindh High Court held in the case of Rexona Proprietary Limited v Majid Soap Work 

that it is perfectly true that normal delay in applying for temporary injunction is fatal and reasons seems 

clear if person delays in coming to the Court, he himself confesses that case is not so urgent as to 

requires interim relief (PLD, 1956 Sindh 1). 

Sindh High Court held in another case of Sindh Madrasatul Islam Board Society v Shamim that High 

Court Azad Kashmir held in the case of Ismail and Other v Faleh Alam and Other, where temporary 

injunction is issued ex-parte and notice is issued to opposite party, he has two remedies (i) come up in 

appeal against order issuing temporary injunction ex-parte, or (ii) apply before the Court issuing 

temporary injunction under Order 39, Rule 4 of Code of Civil Procedure 1908 and the Court may 

discharge, vary or set aside injunction (CLC, 1982; Sindh 2242). 

According to Order 39, Rule 3, Code of Civil Procedure 1908, the Court may grant ex-parte injunction 

for 2 to 7 days for default in payment within stipulated time, injunction against the Government, 

Government servant, statutory authority, board or corporation set up and established by the 

Government (Thorup, 1984; r3 o39 Code of Civil Procedure, 1908). 

According to section 53 of Specific Relief Act 1877, perpetual injunctions can only be granted by 

decree made at hearing and upon merits of suit. Defendant is thereby perpetually enjoined from 

assertion of right or from commission of act which would be contrary to rights of plaintiff (s53 Specific 

Relief Act, 1877; Smoot, 1956). 

Plaintiff must prove his claim beyond reasonable doubt to adopt remedy of perpetual injunction. 

Peshawar High Court held in the case of Qazi Sallah ul Din and Others v Roman that plaintiff Roman 

opted for declaratory decree under section 42 of Specific Relief Act 1877 but failed to prove his 

possession therefore decree for perpetual injunction could not be granted to him as consequential relief. 

It is settled law that where plaintiff is not in possession of property, he cannot seek mere declaration of 

title without asking for possession as consequential relief (CR, 2017 Peshawar 898-P/2009). 

In the case of Syed Zahir Shah v Syed Muhammad Ali Shah Bacha, facts of the case are that respondent 

Syed Muhammad Ali Bacha filed suit for declaration and perpetual injunction against Syed Zahir Shah 

and others to the effect that land falling situated in village Badraga, Tehsil Dargai is inherited by his 



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father through Mutation in 1946 which later came into the ownership of respondent as ancestral 

property in 1969. Respondent averred in his plaint that Dower Mutation allegedly executed by 

grandfather of respondent in favor of Mst. Khaista Bibi being fake, fictitious, illegal and ineffective 

upon his rights. 

The Trial Court accepted contention of respondent and awarded perpetual injunction, which was 

challenged before Peshawar High Court by petitioner Syed Zahir Shah. Peshawar High Court held that 

learned counsel for petitioners failed to show any evidence to have been misinterpreted by both the 

Courts and any evidence in favor of petitioners without proper appraisal. Concurrent findings of both 

the Courts are based on sound reasons wherein no illegality or irregularity could be pointed out during 

arguments, hence same cannot be interfered with by this Court in exercise of its jurisdiction of revision. 

Resultantly, petition of revision in hand, being devoid of force stands dismissed with no order as to 

costs (YLR, 2017 Peshawar 630). 

According to section 55 of Specific Relief Act 1877, the Court may in its discretion grants mandatory 

injunction to prevent breach of complained obligation and to compel performance of requisite acts (s55 

Specific Relief Act, 1877; Klein, 1898). 

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

trademark 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 would be granted when 

there is likelihood of damage due to infringement of trademark (CLD, 2003, Sindh 26). 

The Supreme Court of Pakistan held in the case of Muhammad Ashraf v Muhammad Akram that 

registration of trademark gives rise to prima facie case, balance of convenience and likelihood of 

irreparable loss for grant of injunction against infringement of registered trademark (C&TLR, 2015 

Lahore 1425). 

In Malaysia, application for grant of injunction may be made by any party of proceedings before or 

after trial by notice of application supported by affidavit. Granting injunctions by the Court is called 

preventive relief and injunctions include temporary injunctions which are interim stay orders of the 

Court applicable until specified time mentioned in order or when time is not mentioned until further 

order of the Court. Temporary injunctions can be awarded at any time of proceedings before the Court. 

Perpetual injunctions can be granted by the Court at the time of decree upon merits of the case to stop 

defendant perpetually from asserting right and to stop defendant from doing any other act perpetually. 

Mandatory injunctions awarded to prevent breach of performance and to stop breach of obligations as 

well as to compel someone to do or prevent to do some act (ss50-55 Specific Relief Act, 1950; Ahmad 

& Kamal, 2006). 

Where case is of urgency may be made ex-parte and must contain (i) clear and concise statement of 

facts giving rise to claim, (ii) facts giving rise to application, (iii) facts relied on to justify application 

ex-parte, (iv) details of given notice to other party, (v) answer by other party, (vi) facts which may lead 

the Court not to grant application ex-parte, (vii) any similar application made to another Judge, and 



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(viii) precise relief sought. Interim injunction obtained on ex-parte application shall automatically lapse 

in 21 days from the date it was granted (r1 o29 ROC, 2012; Cohen, 1991). 

According to section 70B of Trade Marks Act 1976, the proprietor of trademark is entitled to restrain 

use of trademark which or essential part of which is identical with or so nearly resembles with 

proprietor’s trademark in respect of same goods or services and when use is likely to deceive or cause 

confusion (s70b Trade Marks Act, 1976; McCarthy, 2009). 

According to section 50 of Specific Relief Act 1950, injunction is preventive relief which is granted at 

discretion of the Court temporarily or perpetually. According to section 51 of Specific Relief Act 1950, 

temporary injunction is granted at any time of suit, regulated by law relating to civil procedure and 

continues to apply until specified time or until further order of the Court. Perpetual injunction is only 

awarded at Decree of the case decided by the Court (McKenna, 2007; ss50-51 Specific Relief Act, 

1950). 

The High Court of Malaya held in the case of Muhammad Hilman bin Idham v Kerajaan Malaysia that 

an order for temporary injunction can be sought only in aid of prospective order for perpetual 

injunction. If in event of plaintiff’s success, he cannot obtain decree for perpetual injunction, it is not 

competent for him to ask for temporary injunction. Temporary injunction will not be granted in cases 

where permanent injunction is not available under sections 52-54 of Specific Relief Act 1950 (MLJ, 

2011 HC Malaya 565; MLJ, 1968 FC Putrajaya 283). 

The High Court of Malaya held in another case between Tidalmarine Engineering Sdn Bhd v Kerajaan 

Malaysia that Specific Relief Act 1950 recognizes distinction between temporary and perpetual 

injunctions issued by the Court. Judicial views are however divided as to whether temporary 

injunction or as is commonly referred to interlocutory injunction as opposed to permanent injunction 

can be issued against government (MLJ, 2011 HC Malaya 400). 

According to section 53 of Specific Relief Act 1950, mandatory injunction is granted to (i) prevent 

breach of obligation, and (ii) compel performance of certain acts (s53 SRA 1950; Dogan, 2010). The 

High Court of Malaya held in the case of Jasmine Food Corporation v Leong Wai Choon that the High 

Court is clearly empowered and have jurisdiction to grant summary judgment for trademark 

infringement even if it involves a claim for permanent mandatory injunction (MLJ, 2011 HC Malaya 

812). 

The Court of Appeal Putrajaya held in the case of Credit Guarantee Corporation Malaysia v SSN 

Medical Products that the Court recognizes force of argument that defendant should not be compelled 

to apologize against his will as very spirit of apology is that it must come from heart, something which 

defendant wishes to do because wrong he has done to plaintiff. On other hand, order compelling 

defendant to merely withdraw or correct offending statement after trial seems to be of different 

character or genre from that of an apology. In same way that the Court compels defendant to pay 

damages for defamation, there is no reason or principle why it cannot compel issue of correction. Of 

course, cases where the Court should think that justice requires grant of mandatory injunction to issue 



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either letter of withdrawal or correction must be quite exceptional (MLJ, 2017 COA Putrajaya 629). 

In USA, according to section 34 of Lanham Trademark Act 1946, the Court vested with jurisdiction of 

civil actions have powers to grant injunctions as per principles of equity and upon such terms as the 

Court may deem reasonable to prevent violation against rights of registered trademark owner. The 

Court in which civil infringement proceedings is instituted can pass injunction against infringer and 

require him to file report in writing under oath, manner and form of compliance order of injunction 

within 30 days. In case if defendant does not comply with order on injunction, plaintiff may file 

contempt of court application against him (s34 Lanham Trademark Act, 1946; s1116 USC, 1926). 

This type of requirement should be added in provisional measures under trademark law of Pakistan 

where alleged infringer should be required to submit a report in writing under oath within 30 days 

about manner and method of compliance order of injunction announced by the Court otherwise 

contempt of court proceedings could be commenced against him. 

In case of civil action with respect to violation consists using counterfeit trademark for sale, offer to 

sale or distribution of goods or services, the Court may grant injunction order upon ex parte application 

for seizure of goods and counterfeit trademarks involved in such violation and means of making such 

trademarks, records documenting manufacture, sale or receipt of things involved in such violation. 

Application must base on affidavit consisted of (i) verified complaint establishing facts sufficient to 

support findings of fact and conclusions of law required for such injunction order, (ii) description of 

matter to be seized and description of place at which such matter is to be seized, (iii) time period which 

shall end not later than 7 days after the date on which such order is issued, (iv) amount of security 

required to be provided by applicant, and (v) date for hearing parties (Cohen, 1991). 

The Supreme Court of United States held in the case of Park N’ Fly Incorporation v Dollar Park and 

Fly Incorporation that power of the Court under section 34 of Lanham Trademark Act 1946 is to grant 

injunctions as per principles of equity which does not encompass substantive challenge to validity of 

incontestable trademark on grounds that it lacks secondary meaning. Otherwise, meaning of equity 

would be expanded to point of vitiating more specific provisions of Lanham Trademark Act 1946 (469 

US 185, 1985). 

The United States Court of Appeal for the Sixth Circuit held in the case of Tandy Corporation v 

Malone & Hyde Incorporation that substantive and remedial doctrines of trademark law draw upon 

legal principles developed both at law and in equity. Although trademark litigation began as early as 

1600's as law of trademark did not undergo significant development until 19
th

 Century when use of 

trademarks increased to symbolize and market products created need for defining and protecting 

owners’ rights (769 F.2d 362, 1985). 

According to section 34 of Lanham Trademark Act 1946, injunctive relief is allowed as per principles 

of equity. Both equity and law courts decided trademark cases in England during early stages of 

trademark development, but equitable principles seem to have dominated that process because 

injunctive relief was generally considered first and most effective step for courts to take in redressing 



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trademark infringement. American Courts also stressed equitable relief and principles in their responses 

to trademark disputes. Prior to statutory protection for trademarks, Courts determined rights and 

liabilities primarily based on equitable theory, treat damages portion of such suits as an equitable action 

in nature of accounting consistent with the history of trademark law. 

 

3. Grounds to Grant and Refuse to Grant Injunctions in Pakistani, Malaysian, and USA Laws 

General grounds to grant and refuse to grant injunctions are prescribed in Pakistan under Specific 

Relief Act 1877 and in Malaysia under Specific Relief Act 1950 which are almost the same. Contrary 

to Pakistani and Malaysian laws, specific grounds to grant and refuse to grant injunctions in trademark 

infringement matters are prescribed in USA under section 43 of Lanham Trademark Act 1946. 

In Pakistan, according to section 54 of Specific Relief Act 1877, the Court would award perpetual 

injunction when (i) there is a need to prevent breach of obligation arisen from contract existing in favor 

of applicant whether expressly or by implication and defendant invades or threatens to invade 

plaintiff’s right, (ii) defendant is trustee of property for plaintiff, (iii) there exists no standard for 

ascertaining actual damage caused or likely to be caused by invasion, (iv) invasion is such that 

pecuniary compensation would not afford adequate relief, (v) it is probable that pecuniary 

compensation cannot be acquired for invasion, and (vi) injunction is necessary to prevent multiplicity 

of judicial proceedings (s54 Specific Relief Act, 1877; McLeod, 2005). 

Sindh High Court held in the case of M/s Maxim Advertising Company Private Limited v Province of 

Sindh that no injunction can be issued unless all required ingredients including prima facie case, 

balance of convenience and irreparable loss to aggrieved party were found to subsist. Irreparable loss 

would mean and imply such loss which is incapable of being calculated on yardstick of money. 

Contracts involving collection of monetary benefits having been obtained on specific monetary 

consideration, could not involve irreparable loss (MLD, 2007; Sindh, 2019). 

Sindh High Court held in another case between Shahzad Trade Links through sole Proprietor v Mtw 

Pak Assembling Industries Private Limited that relief of injunction is discretionary and is to be granted 

by the Court as per sound legal principles of justice. Existence of prima facie case is to be judged or 

made out based on material evidence on record at time of hearing injunction application and such 

evidence of material should be of nature that by considering same, the Court should or ought to be of 

the view that plaintiff applying for injunction was probably to succeed in suit by having decision in his 

favor. Prima facie case is not specifically defined in Code of Civil Procedure 1908. Judge made law or 

consensus is that to satisfy existence of prima facie case, pleadings must contain facts constituting 

existing right of plaintiff and its infringement at hands of opposite party. 

The Court held that balance of convenience means if an injunction is not granted and suit is ultimately 

decided in favor of plaintiff, inconvenience caused to plaintiff would be greater than that would be 

caused to defendant if injunction is granted. It is for plaintiff to show that inconvenience caused to him 

would be greater than that which may be caused to defendant. Irreparable loss would mean and simply 



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such loss which is incapable of being calculated on yardstick of money (CLC, 2016, Sindh 83). 

According to section 56 of Specific Relief Act 1877, interim, perpetual or mandatory injunctions would 

not be granted if (i) plaintiff applies for stay of pending judicial proceedings except if restraint is 

necessary to prevent multiplicity of judicial proceedings, (ii) restraint person to apply before any 

legislative body, (iii) interfering in public duties of the Federal, Provincial or Foreign Governments, (iv) 

stay of proceedings in any criminal matter, (v) preventing breach of contract, (vi) performance of 

which would not be specifically enforced, (vii) preventing ground of nuisance when it is not reasonably 

clear whether it is nuisance or not, (viii) prevent continuing breach in which applicant has acquiesced, 

(ix) when equally efficacious relief can certainly be obtained by any other usual mode except in breach 

of trust, (x) when conduct of applicant or his agent is as such to disentitle him to assist the Court, or (xi) 

applicant has no personal interest in the matter (s56 Specific Relief Act, 1877; Smith, 1987). 

Sindh High Court held in the case of Sayyid Yousaf Husain Shirazi v Pakistan Defense Officers’ 

Housing Authority that injunction is writ framed as per circumstances of case commanding an act 

which the Court regards as essential to justice or restraining as act which it esteems contrary to equity 

and good conscience. An injunction is an equitable remedy and accordingly conform well-known Law 

of Equity maxim that “he who seeks equity must do equity”. Law as contained in Specific Relief Act 

1877 is governed by this principle, therefore, plaintiff asks for an injunction must be able to satisfy the 

Court that his own acts and dealings in matter have been fair, honest and free from any taint or 

illegality. If in dealing with person against whom he seeks relief has acted in unfair and un-equitable 

manner, he cannot obtain this relief (MLD, 2010 Sindh 1267). 

In Malaysia, according to section 52 of Specific Relief Act 1950, perpetual injunction can be granted at 

time of decree on merits of the case by the Court when (i) preventing breach of expressed or implied 

obligation which is in existent in favor of plaintiff through contract, (ii) defendant is trustee of property 

of plaintiff, (iii) damage of an invasion cannot be ascertained, (iv) pecuniary relief of damages is not 

adequate, (v) pecuniary compensation cannot be granted, or (vi) injunction is required to prevent 

multiplicity of legal proceedings (Mohamed, 2016). 

The High Court of Malaya stated in the case of Jothi Impex Sdn Bhd v Yashree Store Sdn Bhd that 

purpose of injunction is to protect plaintiff against injury by violation of his right for which he could 

not be adequately compensated in damages recoverable in action if uncertainty were resolved in his 

favor during trial. The Court must determine balance of convenience unless material available to the 

Court fails to disclose that plaintiff has real prospect of succeeding in his claim for permanent 

injunction at trial. The Court should go on to consider whether balance of convenience lies in favor of 

granting or refusing to grant preventive relief (MLJ, 2006 HC Malaya 742). 

Governing principle is that the Court should first consider whether plaintiff succeeds at trial in 

establishing his right to permanent injunction, he would be adequately compensated by an award of 

damages for loss he would have sustained as result of defendant’s continuing to do what was sought to 

be enjoined between time of application and time of trial. If damages would be adequate remedy and 



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defendant would be in financial position to pay them, no injunction should normally be granted. If 

damages would not provide an adequate remedy to plaintiff in event of his succeeding at trial, the Court 

should consider whether defendant were to succeed at trial in establishing his right to do that which 

was sought to be enjoined. He would be adequately compensated under plaintiff’s undertaking as to 

damages for loss he would have sustained by being prevented from doing so between time of 

application and time of trial. 

The High Court of Malaya gave reference of House of Lord case between American Cyanamid 

Company v Ethicon Limited, that based on salutary principles established by House of Lords in 

American Cyanamid Company v Ethicon Limited, it becomes duty of the Court to consider following 

matters when deciding grant of injunction (i) whether there are any bona fide serious questions to be 

tried, (ii) balance of convenience lies, (iii) damages an adequate remedy for plaintiff in circumstances, 

(iv) plaintiff has given adequate undertaking as to damages, and (v) there has been full and frank 

disclosure of all material facts on plaintiffs’ part (1975 AC 396). 

According to section 54 of Specific Relief Act 1950, temporary, perpetual or mandatory injunctions 

can be refused if (i) required to stay judicial proceedings except if required to stop multiplicity of 

judicial proceedings, (ii) required to stop judicial proceedings pending before the Court, (iii) required to 

stop any person to apply before any legislative body, (iv) required to stop public authorities of 

Malaysian government to perform their public duties, (v) required to stay criminal proceedings before 

the Court, (vi) required to prevent breach of contract whose performance is not specifically enforced, 

(vii) required to stop nuisance when it is not clear whether it comes under definition of nuisance or not, 

(viii) required to prevent continuing breach of contract, or (ix) any other effective relief available to be 

obtained through normal procedure of law except in case of breach of trust, required to disentitle 

applicant or his agent to assist the Court or personal interest of applicant is not attached with the matter 

(s54 Specific Relief Act, 1950; Kandiah, 2004). 

The Court of Appeal Kuala Lumpur held in the case of Keet Gerald Francis Noel John v Mohd. Noor 

bin Abdullah that judge hearing application for granting injunction should ask himself whether (i) 

totality of facts presented before him disclosed bona fide serious issue, (ii) identify issues raised 

whether they are serious enough to merit a trial, (iii) found that raised issue requires further 

investigation, (iv) consider where justice of case lies, (v) consider all relevant matters including 

practical realities of case before him. The judge must have in forefront of his mind that remedy he is 

asked to administer is discretionary, intended to produce just result for period between date of 

application and proper trial and to maintain status quo. It is a judicial discretion capable of correction 

on appeal. A judge should briefly set out in his judgment several factors that weighed in his mind when 

arriving at his conclusion (MLJ, 1995 COA KL 193).
 

The Supreme Court held in the case of Tinta Press Sdn Bhd v Bank Islam Malaysia Bhd, that 

discretionary power of the Court to grant injunction is prescribed under Specific Relief Act 1950. 

Power is extended to grant of mandatory injunction before trial. Such discretion must be exercised, and 



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an injunction should be granted only in exceptional and extremely rare cases. Case must be unusually 

strong and clear. The Court must feel assured that similar injunction would probably be granted during 

trial on ground that it would be just and equitable that plaintiff’s interest be protected by immediate 

issue of an injunction, otherwise irreparable injury and inconvenience would result (MLJ, 1987 SCKL 

192). 

In USA, the owner of famous trademark has a right to obtain injunctive relief from the Court against 

infringement of his legitimate right. Trademark is famous when it is recognized by public in USA. The 

Court while awarding preventive relief is required to take into consideration requisite degree of 

trademark recognition by considering duration, extent, geography, advertisement, publicity, amount 

volume and geographic extent of sale of goods or services protected under trademark and entry of 

registration whether in principal register, supplemental register or registered under previous enactments 

of trademark in USA (Bible, 1995). 

This is very important development made under Trademark Dilution Act in 1995, while deciding 

injunctive relief application, the Court is required to consider degree of trademark recognition, entry of 

trademark registration, duration, extent, geography, advertisement and publicity of trademark, as well 

as amount, volume and geographic extent of sale of goods or services. It is therefore recommended that 

this type of requirement should be added in trademark law of Pakistan and Malaysia for betterment of 

provisional measures of trademark enforcement. 

To claim injunctive relief before the Court, applicant is required to prove prima facie trademark 

infringement and for proving trademark infringement, plaintiff must prove ownership of valid 

trademark, likelihood of confusion between registered trademark and alleged infringing use by 

defendant and an irreparable loss will occur to applicant if injunction is not granted. In the case of TY 

Incorporation v Jones Group Incorporation, the Court held that plaintiff Toy Company sought 

preliminary injunction in its trademark infringement claim against defendant. Plaintiff had better than 

negligible chance to prove its trademark was not generic because plaintiff prevented other competitors 

from using trademark. Plaintiff had not used trademark generically and dictionary definition of 

trademark and media’s use of term indicated it was not generic (LLC 17-C7872 USDC). 

Plaintiff’s use of trademark combined with widespread publicity high sales volume and result of 

plaintiff's consumer survey clearly rendered chances of establishing that name had acquired secondary 

meaning better than negligible. Weighing necessary factors, plaintiff had better than negligible chances 

of showing likelihood of confusion with defendant’s product. Since plaintiff established had a better 

than negligible chance of success on merits, had no adequate remedy at law, and would suffer an 

irreparable injury in absence of preliminary injunction, therefore preliminary injunction was issued. 

In another case between Coca Cola Company and Others v William S. Purdy and Others, defendants 

Willliam S. Purdy and Others registered over 60 internet domain names that incorporated plaintiffs’ 

famous trademarks. Websites for domain names displayed content that did not originate from and was 

not sponsored by plaintiffs including color pictures that purported to be dismembered aborted fetuses 



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and links to fund-raising appeals. Defendants sought to permanently enjoin plaintiffs from using 

domain name that incorporated was identical to and confusingly like plaintiffs’ famous protected 

trademark. The Court granted plaintiffs’ motion and issued permanent injunction while referring to 

reasoning in its prior orders and the Court of Appeals’ opinion, which were analyzed on strength of 

plaintiffs’ claim. Additionally, the Court found that plaintiffs are entitled to relief on their trademark 

infringement claim as there is likelihood of confusion between registered trademarks and alleged 

infringing use by defendants (U.S. Dist. LEXIS, 1226). 

 

4. Conclusion and Recommendations 

Provisional measures can be acquired by registered trademark owner in Pakistan, Malaysia and USA to 

acquire injunctive relief to prevent further infringement of registered trademark and to protect evidence 

which would be beneficial to prove his claim before competent authority. The Court while ordering 

injunctive relief is required to consider recognition, registration, duration, extent, geography, 

advertisement and publicity of trademark as well as amount, volume and geographic extent of goods or 

services. A person against whom injunctive relief is passed by the Court, is required to submit written 

report under oath within 30 days about manner and method of compliance with injunctive order of the 

Court, otherwise registered trademark owner may start contempt of court proceedings against him as 

per prescribed provision of Lanham Trademark Act 1946. These requirements should be added in 

trademark law of Pakistan for better implementation of provisional measures of trademark 

enforcement. 

 

References 

Ahmad, W. A., & Kamal, N. A. (2006). Administrative Law in Malaysia. Malaysia: Sweet & Maxwell 

Asia.  

American Cyanamid Company v Ethicon Limited. (1975). House of Lords. Appeal Cases, 396. 

Asian Consumer Care Pakistan Private Limited v Hilal Foods Private Limited. (2016). Sindh High 

Court. Civl Law Digest, 804. 

Bible, P. M. (1999). Defining and Quantifying Dilution Under the Federal Trademark Dilution Act of 

1995: Using Survey Evidence to Show Actual Dilution. University of Colorado Law Review, 70, 

295. 

Busuttil, G., & McCafferty, P. (2010). Interim Injunctions and Overlap Between Privacy and Libel. 

Journal of Media Law, 2(1), 1-13. https://doi.org/10.1080/17577632.2010.11427349 

Coca Cola Company and Others v William S. Purdy and Others. (2005). United States District Court 

for District of Minnesota. U.S. Dist. LEXIS, 1226. 

Code of Civil Procedure. (1908). Islamic Republic of Pakistan, Act V. 

Cohen, D. (1991). Trademark Strategy Revisited. The Journal of Marketing, 55(3), 46-59. 

https://doi.org/10.1177/002224299105500305 

https://doi.org/10.1080/17577632.2010.11427349
https://doi.org/10.1177/002224299105500305


www.scholink.org/ojs/index.php/elp                   Economics, Law and Policy                        Vol. 4, No. 1, 2021 

19 
Published by SCHOLINK INC. 

Credit Guarantee Corp Malaysia Bhd v SSN Medical Products Sdn Bhd. (2017). Court of Appeal 

Putrajaya. Malaysian Law Journal, 2, 629. 

Dogan, S. L. (2010). Trademark Remedies and Online Intermediaries. Lewis & Clark Law Review, 14, 

467-489. 

Fiss, O. M. (1978). The Civil Rights Injunction. United Kingdom: Indiana University Press, 

Bloomington & London. 

Foster, J. J. (1986). The Preliminary Injunction-A New and Potent Weapon in Patent Litigation. 

Journal of Patent & Trademark Office Society, 68, 281-291. 

J. Thomas McCarthy. (2009). Are Preliminary Injunctions Against Trademark Infringement Getting 

Harder to Achieve?. Intellectual Property Law Bulletein, 14, 1. 

Jasmine Food Corp Sdn Bhd v Leong Wai Choon & Anor. (2011). High Court of Malaya. Malaysian 

Law Journal, 11, 812. 

Jothi Impex Sdn Bhd v Yashree Store Sdn Bhd. (2009). High Court of Malaya. Malaysian Law Journal, 

742. 

Kandiah, P. (2004). Intellectual Property Enforcement in Malaysia. Pakistan: Kandiah & Associates. 

Keet Gerald Francis Noel John v Mohd. Noor bin Abdullah. (1995). Court of Appeal Kual Lumpur. 

Malaysian Law Journal, 193. 

Khan, M. F. I. (2010). Trademark in Pakistan. Lahore, Pakistan: United Trademark & Patent Services. 

Klein, J. (1898). Mandatory Injunctions. Harvard Law Review, 12(2), 95-118. 

https://doi.org/10.2307/1321379 

Lanham Trademark Act. (1946). United States of America. Act 15. 

M.Sikander Sultan v Masih Ahmed Sheikh. (2003). Sindh High Court. Civil Law Digest, 26. 

M/s Maxim Advertising Company Private Limited v Province of Sindh and Others. (2007). Sindh High 

Court. Monthly Law Digest, 2019. 

Maker, H. (2014). Intellectual Property Rights in Pakistan. Pakistan: The Nation. Retrieved from 

https://nation.com.pk/20-Apr-2014/intellectual-property-rights-in-pakistan 

Malik, N. A. (2010). Manual of Trade Marks & Intellectual Property Laws. Pakistan: Four Star 

Publishers. 

McKenna, M. P. (2007). The Normative Foundations of Trademark Law. Notre Dame Law Review, 

82(5), 1839. 

McLeod, R. (2006). Injunction Junction: Remembering the Proper Function and Form of Equitable 

Relief in Trademark Law. Duke Law & Technology Review, 5(1), 1-22. 

Mohamed, K. (2016). Prevention of Trademark Counterfeiting through Intellectual Property 

Enforcement System in Malaysia. The Debt Financing and Financing Risk Persistency, 82. 

Muhammad Ashraf Alias Makkhan v Muhammad Akram. (2015). Lahore High Court. Pakistan 

Company and Tax Law Reports, 1425. 

 

https://doi.org/10.2307/1321379


www.scholink.org/ojs/index.php/elp                   Economics, Law and Policy                        Vol. 4, No. 1, 2021 

20 
Published by SCHOLINK INC. 

Muhammad Hilman bin Idham & Ors v Kerajaan Malaysia & Ors. (2011). High Court of Malaya. 

Malaysian Law Journal, 6, 565. 

Park N’ Fly Incorporation v Dollar Park and Fly Incorporation. (1985). United States Supreme Court. 

United States, 469, 189. 

Qazi Salah ul Din & Others v Roman. (2017). Peshawar High Court. Civil Revision, 898-P/2009. 

Rendleman, D. (1973) Toward Due Process in Injunction Procedure. University of Illinois Law Forum, 

221-251.  

Rexona Proprietary Limited v Majid Soap Works. (1956). Sindh High Court. Pakistan Law Digest, 1. 

Rules of Court Malaysia. (2012). P.U. (A). 

Sayyid Yousaf Husain Shirazi v Pakistan Defense Officers’ Housing Authority. (2010). Sindh High 

Court. Monthly Law Digest, 1267. 

Shahzad Trade Links through sole Proprietor v Mtw Pak Assembling Industries Private Limited. (2016). 

Sindh High Court. Civil Law Cases, 83. 

Sindh Madrasatul Islam Board Society v Shamim. (1982). Sindh High Court. Civil Law Cases, 2242. 

Smith, N. A. (1987). Obtaining Early and Effective Relief Against Trademark Counterfeiting. 

Communications and Entertainment Law Journal, 10, 1049. 

Smoot, T. (1956). Stranger Picketing: Permanent Injunction or Permanent Litigation? American Bar 

Association Journal, 42(9), 817-888. 

Specific Relief Act. (1877). Islamic Republic of Pakistan. Act I. 

Specific Relief Act. (1950). Malaysia. Act 137. 

Syed Zahir Shah v Syed Muhammad Ali Shah Bacha. (2017). Peshawar High Court. Yearly Law 

Report, 630. 

Tandy Corporation v Malone & Hyde Incorporation. (1985). United States Court of Appeals for the 

Sixth Circuit. United States, F.2d 362, 769. 

Thorup, A. R. (1984). Injunctions Against Payment of Standby Letters of Credit: How Can Banks Best 

Protect Themselves? Banking Law Journal, 101, 6-30. 

Tidalmarine Engineering Sdn Bhd v Kerajaan Malaysia. (2011). High Court of Malaya. Malaysian Law 

Journal, 2, 400. 

Tinta Press Sdn Bhd v Bank Islam Malaysia Bhd. (1987). Supreme Court Kuala Lumpur. Malaysian 

Law Journal, 192. 

Trade Marks Act. (1976). Malaysia. Act 176. 

Trade Marks Ordinance. (2001). Islamic Republic of Pakistan. Act XIX. 

TY Incorporation v Jones Group Incorporation. (2000). United States District Court for Northern 

District of Illinois, Eastern Division. U.S. Dist. LEXIS, 7872. 

United States Code: Trademarks. (1926). United States of America. Title-15.  

Vethanayagam v Karuppiah & Ors. (1968). Federal Court Putrajaya. Malaysian Law Journal, 1, 283. 

 


