Intellectual Property Laws and ordinances
By Ismail Qamar
Spectrum Business Consultancy
TRADE MARK LAWS IN PROTECTION OF INTELLECTUAL PROPERTY RIGHTS:
Trade Marks Ordinance 2001:
Trade Marks Ordinance 2001 deals with the remedies regarding protection of Intellectual Property Rights in case of violation of any registered trade mark.
Infringement of Trade Marks:
Section 39 and 40 of the Trade Marks Ordinance 2001 deal with the situations where an infringement of a registered trade mark has been occurred. Section 39 says that a registered trade mark deems to be a personal property of the proprietor. If any person other than the proprietor uses that mark for the trade which is similar to the goods or services for which that mark has been registered, it shall be deemed to be the infringement of the registered trade mark under section 40. If the words “registered goods” have been displayed on their packaging or on their container, it is a notice to prohibition of certain acts relating to those goods under section 41.
No infringement in certain cases:
Section 42 of the Trade Marks Ordinance 2001 describes certain conditions in which trade mark has not been infringed:
Where the person’s name or person’s place of business, so long as such use doesn’t result in a likelihood of confusion or otherwise interfere with an existing trade mark or other property right; or
The name of the predecessor in business of the person or the name of the predecessor’s place of business;
The person uses the mark in a good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristics of goods or service.
The person uses the mark for the purposes of comparative advertising.
Action for Infringement:
Section 46 says that the action for infringement of the trade mark can be taken by the proprietor of the trade mark.
Remedies for Infringement:
Any other remedies which are available to the person having some other property rights.
Place where the suit has to be instituted:
According to section 117 of the Trade Marks Ordinance 2001, any suit for the infringement of any trade mark shall be instituted before District Court.
The provisions of the Fourth Schedule shall have effect with respect to the transitional matters, including the treatment of trade marks registered under the Trade Marks Act, 1940, and applications for registration and other proceedings pending under that Act, on the commencement of the Trade Marks Ordinance 2001.
GENERAL REMEDIES UNDER THE CODE OF CIVIL PROCEDURE 1908:
Temporary Restraining Order and a Preliminary or Permanent Injunction
If you are being wronged, you may ask the appropriate court to grant a Temporary Restraining Order and a Preliminary or Permanent Injunction to prevent and/or stop further infringement under Order XXXIX Rule 1 and 2 of the Code of Civil Procedure 1908.
Allegedly infringing items or articles can be impounded while the action is pending and may be ordered destroyed or subject to other disposition if there is an infringement. An infringer can be liable for actual damages plus additional profits of the infringer or statutory damages.
Liable for Injury to Business Reputation:
Further, an infringer could be held liable for injury to business reputation or the dilution in the value of the copyright, patent, or trademark. Costs and attorneys’ fees sometimes also may be awarded to the prevailing party.
PENALTIES IN PAKSITAN PENAL CODE DESIGNED AGAINST INFRINGEMENT OF TRADE, PROPERTY AND OTHER MARKS:
Trade Mark has been defined in section 478 of the Pakistan Penal Code and Property Mark has been explained in section 779 ibid. Section 480 defines the false trade mark and 481 deals with the using of false property mark.
The text of Section 478 to 489 of the Pakistan Penal Code 1860, provide penalties against infringement of Trade, Property and other Marks which is given below:
Punishment for using a false trade mark or property mark:
Section 482 says that whoever uses any false trade mark or any false property mark shall be punished with:
imprisonment of for a term which may extend to one year; or
with fine; or
Punishment for counterfeiting a Trade Mark or Property Mark:
According to section 483 the punishment for counterfeiting any trade mark or property mark is two years with fine or confinement only or fine only.
Punishment for counterfeiting a mark used by a public servant:
The offence under section 484 is an aggravated form of the offence described in the preceding one. An enhanced punishment is, therefore, given where a mark used by a public servant is counterfeited. A three years punishment has been described for counterfeiting a property mark or any other mark used by a public servant.
Punishment for making or possessing any instrument for counterfeiting a trade mark or property mark:
According to section 485 whoever makes or has in his possession any die, plate or other instrument for the purpose of counterfeiting a trade mark or property mark shall be punished with imprisonment for three years with or without fine or fine only.
Making a false mark upon any receptacle containing goods:
Section 487 furnished the false marking of case, package, or receptacle containing goods in a manner reasonable calculated to deceive a public servant or any other person. It is not required that the mark should be a trade mark or property mark. A person making a false mark upon any receptacle containing goods can escape punishment under this section only if he proves that he acted without intent to defraud.
Punishment for making use of any such false mark:
According to section 488 whoever makes use of any such false mark in any manner prohibited by section 487 be punished as if he has committed an offence against section 487 unless he proves that he acted in good faith.
Punishment for tempering with property mark:
Section 489 says whoever removes, destroys, defaces or adds to any property mark with intention to cause injury to any person shall be punished with one year imprisonment with fine or without fine or fine only.
PROTECTION UNDER CUSTOMS ACT 1969:
Section 15 specified certain goods which are not allowed to brought into Pakistan, whether by air, or by sea or by land. It includes:
goods having applied a counterfeit trade mark;
goods having applied a false trade description;
goods made or produced outside Pakistan and having applied any name or trade mark of any proprietor, dealer or trader in Pakistan unless:
the name or trade mark is as to every application, accompanied by a definite indication of the goods that these are made or produced in a place outside Pakistan;
the country in which that place is situated is in that indication shown in letters as large and conspicuous as any letter in the name or trade mark.
goods made or produced outside Pakistan and intended for sale and having applied a design in which copy right exists under the Patents and Designs Act.
Prohibition or restriction of importation or exportation of goods
According to section 16, the Central Government may, from time to time, by notification in the official gazette, prohibit or restrict the bringing into or taking out of Pakistan of any goods of specified description under section 15 by air, sea or land.
Confiscation of Goods:
Section 17 of the Customs Act 1969 says that if any goods specified in section 15 are imported into or attempted to be exported out of Pakistan shall be liable to detention or confiscation
PROTECTION OF INTELLECTUAL PROPERTY UNDER PATENTS ORDINANCE 2000:
Suit for infringement of a patent:
A patentee may institute a suit under section 60 in the District Court which have the jurisdiction to try the suit against any person who during the continuance of the patent acquired by him under this law, in respect of an invention, makes, sells or uses the invention without his license, or counterfeits it, or imitates it.
Reliefs in suits for infringement:
If a patent is infringed by infringer and a suit for infringement has been field against him then the remedies can be availed by the patentee. The Court can order to:-
desist form infringement;
infringer to pay the right holder damages adequate to compensate for the injury he has suffered because of infringement;
pay the right holder expenses which may include appropriate attorney’s fee;
the recovery of profits, damages and pre-established damages;
dispose off the goods (which found to be the infringing) outside the channels of commerce without giving any compensation to the infringer;
dispose off the material, implements and predominant, use of which has been in infringing goods, outside the channels of commerce to minimize the risk of more infringement without giving any compensation to the infringer;
infringer to inform the right holder of the identity of third parties involved in production and distribution of the infringing goods and their channel of commerce in case of serious infringement;
adequate compensation to the party who has been wrongfully restrained by the party on whose request measures has been taken;
the applicant to pay the defendants expenses including attorneys fee.
Prevent an infringement, if there are imported goods the court can order to prevent its customs clearance;
Preserve its relevant evidence in the alleged infringement;
provisional measures to prevent the delay which cause harm to the right holder or where there is a demonstrable risk of evidence being destroyed.
PROTECTION UNDER REGISTERED DESIGNS ORDINANCE 2000:
Remedies under section 8:
If any person infringes a registered proprietor’s right, the proprietor may:
bring a suit against him for the recovery of damages; and
bring a suit for an injunction for the continuance of the infringement.
COPYRIGHT PROTECTION UNDER COPYRIGHT ORDINANCE 1962
Duration of Copyright:
The period of copyright of a literary, dramatic, musical or artistic work (other than a photograph) is the life of the author and 50 years thereafter. In the case of a cinematographic work and a photograph, copyright subsists until 50 years from the beginning of the calendar year from publication of the work.
Infringement of Copyright:
The act of copying of work, which is entitled to copyright protection, by any method, either directly or with the aid of a machine or device constitutes an infringement of the copyright in the work. Section 56 of the Ordinance provides that copyright in a work shall be deemed to be infringed in the following cases:
when any person without the consent of the owner of the copyright or without a licence granted by such owner or the Registrar under the Ordinance or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under the Ordinance:
does anything the exclusive right to do which is by this Ordinance conferred upon the owner of the copyright; or
permits for profit any place to be used for the performance of the work in public where such performance constitutes an infringement of the copyright in the work unless he was not aware and had no reasonable ground for suspecting, that such performance would be an infringement of the copyright, or
when any person:
makes for sale or hire or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
distributes either for the purpose of trade to such as extent as to affect prejudicially the owner of the copyright, or
by way of trade exhibits in public, or
imports into Pakistan,any infringing copies of the work.
Infringement of Computer Programmes:
Pursuant to the restrictions imposed under Section 56 of the Ordinance, even the purchasers of computer programmes may not copy, adapt or make copies of adaption of the programmes in connection with their use by themselves or their employees. The unauthorized use of a computer programme in a computer is also infringement of the copyright. Accordingly, if a duplicate of a computer programme is acquired by someone who has no licence to use it, the copyright owner has the right to prevent him using it. Section 56 also restricts rental of computer programmes to un-authorised users. Intention to copy computer programmes is not an essential ingredient of infringement; nor is it essential that the copying be in the same medium. Thus, a computer programmme stored on diskettes (or any other magnetic media) can be infringed by copying the same on paper, or taking a print-out of the same.
Liability for Infringement:
In the event of infringement, liability of infringement falls upon the person who, without the consent of the owner of the computer programme does any of the restricted acts; or authorizes any other person to do any such acts; or commits any acts of infringement.
Remedies for Infringement:
There are two remedies for breach of copyright in Pakistan; civil proceedings and criminal proceedings. Accordingly, a person whose copyright has been infringed is able to sue for damages, claim an injunction, an account of the profits gained by the defendants as a result of the infringement, delivery up of infringing articles etc. Recently added section 74(3) of the Ordinance provides that all offences under the Ordinance are cognizable and non-bailable. Section 59 of the Ordinance provides that an action may be brought by the original owner of the copyright, which, inter alia, include the person to whom an exclusive licence has been granted. Amended Section 65 of the Ordinance provides that every suit or other civil proceedings regarding infringement, at the discretion of the applicant, should be instituted and tried in the Court of the District Judge.
Section 66 of the Ordinance, as amended by the Amendment Act, provides that any person who knowingly infringes or abets the infringement of the copyright in a work (defined to include computer programmes), or any other right conferred by the Ordinance shall be punishable with imprisonment which may extend to 3 years, or with fine which may extent to one hundred thousand rupees (one US dollars nearly equals twenty five rupees), or with both. Additionally, Section 70B of the Ordinance provides that where any person convicted for an offence punishable under, inter alia, Section 66 is again convicted for the same offence, he shall in such event be imposed with a fine (beside the imprisonment which may extent to 3 years) upto rupees two hundred thousand.
Recently amended Section 74(1) of the Ordinance now gives additional powers to police to seize infringing copies of the work. The section empowers any police officer, if he is satisfied that an offence in respect of infringement in any work has been, is being, or is likely to be committed, to seize without warrant all copies of the work and all plates and recording equipments used for the purposes of making infringed copies of the work, wherever found, and all copies, plates and recording equipments so seized shall, as soon as possible, be produced before a Magistrate.
Offences by Companies:
Section 71 of the Ordinance provides that where an offence under the Ordinance is committed by a company, every person who at the time was in charge of, and was responsible to the company for the conduct of the business of the company as well as the company is deemed to be guilty of such offence and is liable to be proceeded against and punished accordingly. Except in the circumstances, the accused proves that the offence was committed without his knowledge or that he exercised due diligence to prevent the commission of such offence, he is deemed guilty.