Disputes involving Trade Mark Infringement, Revocation, and related issues fall exclusively within the Jurisdiction of the Intellectual Property Tribunal --- Lahore High Court, Lahore

Islamabad 28-11-2024: In a significant decision, the Lahore High Court has allowed an appeal in the case of Muhammad Qasim Vs. Registrar of Trade Marks, ruling that the Registrar of Trade Marks acted without jurisdiction by revoking a trade mark while related suits were pending before the District Court. The judgment, delivered by Mr. Justice Abid Aziz Sheikh, underscores the importance of procedural compliance and jurisdictional clarity in intellectual property disputes.

The Appellant, Muhammad Qasim, proprietor of the trade mark “Hafiz Pipe Store,” had filed three suits in the District Court, Faisalabad, seeking a permanent injunction, damages, and other remedies against trade mark infringement. During the pendency of these suits, the Respondent, Asghar Ali, filed an application with the Registrar of Trade Marks for revocation and invalidation of the trade mark under Sections 73, 80, and 96 of the Trade Marks Ordinance, 2001.

The Registrar, without transferring the application to the District Court, allowed the revocation ex parte. This decision was later used as grounds by the District Court to reject the appellant’s suits under Order VII Rule 11 of the Code of Civil Procedure, 1908 (CPC).

The Lahore High Court identified significant jurisdictional errors and procedural lapses in the Registrar’s handling of the matter:

1. The Court emphasized that under Sections 73(4), 80(4), and 96(2) of the Trade Marks Ordinance, 2001, applications for revocation or invalidation must be transferred to the relevant Court if related suits are pending. The Registrar’s failure to do so rendered the order invalid.
2. The ex parte decision of the Registrar was found to have been made without proper notice to the appellant, violating principles of natural justice.
3. The Lahore High Court clarified that suits based on claims of passing off are maintainable even if the trade mark is revoked, making the rejection of plaints under Order VII Rule 11 CPC improper.
4. Following the enactment of the Intellectual Property Organization of Pakistan Act, 2012, disputes involving trade mark infringement, revocation, and related issues fall exclusively within the jurisdiction of the Intellectual Property Tribunal.

The Court highlighted the need for comprehensive adjudication of intellectual property disputes to avoid conflicting decisions and ensure procedural integrity. Mr. Justice Abid Aziz Sheikh cited multiple precedents, including Italfarmaco S.P.A. Vs. Himont pharmaceuticals (2017 CLD 1382) and Royal PVC (Pvt.) Ltd. Vs. Registrar of Trade Marks (2011 CLD 833), to support the principle of avoiding piecemeal litigation.

The Lahore High Court:

1. Set aside the Registrar’s order dated 12.05.2014.
2. Overturned the District Court’s rejection of plaints dated 27.06.2014.
3. Remanded the matter to the Intellectual Property Tribunal for fresh adjudication of the appellant’s suits and the respondent’s application under the Trade Marks Ordinance, 2001.

Powered by Froala Editor