Perhaps the only way to solve a problem is to take small steps to ultimately resolve it. Having said that, it is quite common in Pakistan to take small steps and leave it at that and ultimately lose sight of the problem itself. That is also the story of law-making and law-enforcement (or lack thereof) in Pakistan.
For what good is a law that cannot be enforced? What measure of comfort can be provided by a law if one is wronged and there is nowhere to turn? Or if there is someone to turn to, protests fall on deaf ears?
These are some questions that have made the legal system a circus, where the common folks have to please the tea-sipping, paan-chewing bureaucracy to gain whatever protection the law offers. This quandary has in turn ruined the edifice of justice and rule-of-law.
This article, however, will paint a slightly different picture when it comes to trademark rights in Pakistan, which, in many ways, is the unsung hero of the Pakistan legal system. By no means is the law, vis-à-vis enforcement, in a completely satisfactory state in guaranteeing trademark rights but the recent thrust towards greater awareness and greater protection of such rights is worthy of recognition.
In 2005, the Intellectual Property Organisation (IPO-Pakistan) comprising Trademarks Registry; the Copyright Office and the Patent Office was established by the government for the promotion of intellectual property.
IPO-Pakistan is also responsible for liaising with the public sector enforcement authorities and private investigators in order to identify violations of Intellectual Property rights. IPO-Pakistan has over the past half a decade become more organised and has served to galvanise efforts to protect Intellectual Property rights in Pakistan.
Additionally, in our legal framework, both civil and criminal laws of Pakistan provide for enforcement of rights in relation to registered as well as unregistered trade marks, which are being used or which enjoy reputation and goodwill in Pakistan and abroad.
Where proprietary rights in a registered trademark are infringed, be it by way of using a similar or an identical trademark, a registered proprietor can file a suit for infringement of such rights in a court at the place where the infringement takes place. In an infringement suit, the proprietor has to merely establish its prior ownership in the trademark.
In relation to rights relating to unregistered trademarks, the proprietor may bring an action for passing-off, and establish its reputation and goodwill emanating from the use of the unregistered mark whilst showing to the court that the defendant is unfairly trading on or is likely to damage such reputation and goodwill (by using the same or similar mark to cause confusion among the general public).
Traditionally, the relief available is much the same for infringement actions and those for passing-off, however, the Trade Marks Ordinance 2001 has introduced novel provisions that give registered proprietors more meaningful protection than the old common law remedies, which in many ways is enormous encouragement for proprietors to come forward and pro-actively protect their rights.
A common example in this regard could be the law enforcement against piracy of software etc. Between the years 2002 - 2006, the benefits of reduction in piracy globally were estimated to be in excess of $1 billion worldwide in terms of GDP contribution resulting in the creation of more than 2.25 million jobs during this period.
The Asia-Pacific region accounted for roughly a third of the total contribution to the GDP and roughly half of the new jobs created. This serves as an indication of the potential benefits of the appropriate promulgation and enforcement on Intellectual Property rights and there is no doubt that Pakistan can be a great beneficiary going forward, given the potential of massive foreign inflow of funds due to renewed investor confidence and the resulting benefits of job creation and innovation in Pakistan.
Since 1989, Pakistan is on the United States of Americas special 301 Watch List, for Intellectual Property protection and violations, and in 2003, the US Customs & Border Protection made in excess of 6000 seizures worth approximately $95 million, naming Pakistan among the top countries responsible for such violations.
The true extent of the losses caused by infringements of Intellectual Property rights cannot be gauged, but the combined losses in the oil & lubricants, cigarette, books and publishing and information technology industries can safely be estimated at an amount in excess of Rs4 billion to the private sector and the government, which has also resulted in more than 50,000 jobs being lost. A rough estimate of the governments annual losses may be in the range of Rs10 billion in terms of direct and indirect revenue because of counterfeiting and trademark infringements.
The Trade Marks Ordinance 2001 is cognisant of and has responded to global changes in Trademarks Law and provides for the protection of service marks, well-known marks, collective marks, domain names, unfair competition and comparative advertising. Provisions on misleading advertising have also been enacted in the Trademarks Ordinance 2001, and the Ordinance provides that a misleading and comparative advertisement may be challenged in the courts by any person with a legitimate interest in prohibiting such misleading advertisement.
The complainant may obtain an injunction to prevent the publication of the advertisement and may also seek damages. To compliment the change in the law, the Competition Commission of Pakistan has taken a lead in cracking down on such infringements in its drive against breach of anti-trust laws in Pakistan. Some of the other laws that supplement the Intellectual Property legal framework are Merchandise Marks Act, 1889, and the Pakistan Penal Code, 1860, to name a few.
As far as civil law is concerned, an action for violation of proprietary rights in a trademark commences by the filing of a legal action in the courts, where in an urgent hearing, if sought, relief such as an injunction restraining use of the trademark by the infringer, may be granted.
This injunction is usually granted provided a case is made out in relation to the alleged infringement. The interim remedy may be granted in approximately six months to a year and the final determination of the action may take between 5 to 8 years. Although the above timelines do not paint an encouraging picture, they are a direct result of the backlog of cases in the courts as opposed to being a consequence of any inadequacy of legislation on Intellectual Property laws.
In the event of there being evidence of infringement of a registered trademark, the Trade Marks Ordinance 2001 also provides the proprietor with an opportunity to give notice in writing to the Collector of Customs of the arrival of infringing goods into Pakistan and for such goods to be treated as prohibited goods. Such goods using the infringed trademark may be seized and the Collector of Customs may, in certain circumstances, retain control of the seized goods.
Further, the Customs Act, 1969, also imposes a restriction on importation of goods bearing an infringed and counterfeit trademark or a false trade description, infringement of copyrights, etc, and the Customs authority is empowered to seize and confiscate any such goods imported into Pakistan.
In support of the governments anti-piracy policy, the Customs authority has also established anti-piracy cells at the countrys major international airports in order to impede trafficking of illegal and pirated products, which has resulted in numerous pirated goods being seized and destroyed.
The Drugs Act, 1976, also prohibits any person from selling counterfeit drugs, which includes the import or export of spurious drugs or manufacture or sale of any counterfeit drug, or of a drug under a name other than the registered name, contravention of which may result in a fine and/or imprisonment.
Criminal proceedings in relation to the infringement of proprietors rights in a trademark can be commenced with the support of the local police and magistrates resulting in the prosecution of a private complaint and obtaining and executing a search warrant against the accused.
The success with commencing and seeing through such an action is, however, dependant on making the event worth while for those who have sworn to uphold the law and similarly lack of success in this scenario cannot be pinned on the inadequacy of enforcement provisions in the law, but rather the inability of proprietors to lighten their pockets sufficiently.
The Pakistan Penal Code, 1860, also makes it is an offence to use a false or counterfeit trademark, which is punishable by imprisonment and/or a fine. It may also be possible to conduct raids in cooperation with government authorities in order to confiscate counterfeit products where a proprietors registered trademark is being infringed.
However, since criminal actions are controlled entirely by the state through police authorities, the complainant has very little or no control over the proceedings and in certain cases the infringers acquaintance with influential persons creates hurdles in conducting raids and executing arrest orders.
It is also worth noting here that the judiciary in Pakistan has also started focussing on enforcement of Intellectual Property rights in Pakistan and it has been noted among those in practice that judges seem inclined to grant relief where Intellectual Property rights have been violated, in order to create an environment where innovation may take place and such innovations be protected.
On the balance, the framework for guaranteeing Intellectual Property rights is now in place and various protocols and treaties have also now been incorporated to protect such rights. The enforcement of these rights, however, leaves a lot to be desired, which proves an impediment for foreign investors to freely conduct business operations in Pakistan for the time being.
However, Pakistan is headed in the right direction and with some diligence and political will, the problems vis-a-vis enforcement mechanisms can also be resolved, provided that small but meaningful steps continue to be taken in the right direction and we don lose sight of the problem itself, the problem being the enforcement of Intellectual Property rights in Pakistan.
The writer is a Barrister-at-Law (the Honourable Society of Lincolns Inn), currently practicing Civil, Corporate and Trademarks Law at Vellani & Vellani, Advocates and Legal Consultants. He can be reached at fehem@hotmail.com