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Registered Trademarks take Precedence over Unregistered Prior Use Claims --- Islamabad High Court set aside Trial Court Order and remand the case back to Trial Court

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Registered Trademarks take Precedence over Unregistered Prior Use Claims --- Islamabad High Court set aside Trial Court Order and remand the case back to Trial Court

Islamabad 03-12-2024: The Islamabad High Court (IHC) has set aside a trial Court’s order in [Civil Miscellaneous Appeal No. 383/2024], involving a trademark infringement dispute between Sheikh Nazir Ahmed (Appellant) and Muhammad Azeem (Respondent). The case revolved around the contested use of the term “Kohinoor” in trade, which the appellant claimed to have exclusive rights to under a registered trademark.

The Appellant, Sheikh Nazir Ahmed, is the registered owner of the trademark “Kohinoor Fabrics” (Trademark No. 384917, Class-35). He filed a lawsuit alleging that the Respondent, Muhammad Azeem, was infringing on his rights by operating a business under the name “Kohinoor Fair Price Shop”. The appellant sought interim injunctive relief under Order XXXIX Rules 1 & 2 of the Civil Procedure Code (CPC) to restrain the respondent from using the contested name. The trial Court, however, denied the relief on May 6, 2024, prompting the appeal.

Mr. Chief Justice of the Islamabad High Court (IHC) analyzed the provisions of the Trade Marks Ordinance, 2001, particularly Section 40, which deals with trademark infringement. The Court emphasized that the trial Court had failed to apply relevant legal principles introduced in the 2001 Ordinance, relying instead on outdated provisions from the repealed Trade Marks Act, 1940.

The Court reiterated that the appellant, as the proprietor of the registered trademark “Kohinoor Fabrics,” enjoys exclusive rights to its use. Reliance was placed on precedents such as Pioneer Cement Limited Vs. Fecto Cement Limited (2013 CLD 201), which affirmed that registered trademarks take precedence over unregistered prior use claims.

The Court noted that while “Kohinoor” is a generic term, its use in a specific trade context, combined with logos or other distinctive features, may warrant protection against infringement. This aligns with principles set in Telephone Soap Vs. M/s. Lever Brothers (1994 CLC 2135) and Bayer A.G. Vs. Macter International (2003 CLD 794).

The Islamabad High Court (IHC) stressed the importance of preventing public confusion and protecting the goodwill associated with registered trademarks. It referenced Soneri Travel and Tours Ltd. Vs. Soneri Bank Limited (2011 CLD 193) for guidance on determining deceptive similarity.

The trial Court’s reliance on outdated legal precedents was criticized, and the need for a thorough application of modern trademark laws was emphasized.

The Islamabad High Court (IHC) allowed the appeal, setting aside the trial Court’s order. It directed the lower Court to reconsider the application for interim relief in light of the relevant provisions of the Trade Marks Ordinance, 2001, and established legal principles. The application was ordered to be treated as pending before the trial Court.