Trademark Laws: a digest of leading cases

Case Law Digest · May 2021 · ALIPA

A working reference compiled by the firm: the headnotes of leading trademark judgments from Pakistan's courts, set beside landmark decisions from other jurisdictions that are regularly cited in argument. The full digest runs to thirteen pages and is available to download.

What it covers

1. Trademark infringement: the tests the courts apply, from interim injunctions to "deceptively similar" marks, including 2016 CLD 2260, 2015 CLD 2015, 2014 CLD 504, 2013 CLD 1531 and 2016 CLD 2144.
2. Distinctive trademarks: when a mark is capable of distinguishing its owner's goods (2016 CLD 1647).
3. Landmark foreign judgments: domain names and cybersquatting (Yahoo! v Akash Arora), celebrity merchandising (DM Entertainment v Baby Gift House), prior use of foreign brands (Milmet Oftho v Allergan), and L'Oréal v Bellure, among others.
4. Unfair competition and passing off, including 2015 SCMR 919 of the Supreme Court.
5. Deceptive marketing practices under the Competition Act, 2010 (2016 CLD 1128 and 2016 CLD 40).
6. Geographical place names as trademarks, from Canadian jurisprudence (the PARMA and LEYDA decisions).

From the digest

Foreign trade mark. Infringement and passing off. Plaintiff got trade mark "Power Sonic" registered in its name whereas the same was already registered in USA and plaintiff was in business relations with it… Such was a dishonest adoption of a foreign trade mark by its local importer… Plaintiff who had dishonestly adopted US entity's trade mark should not be given any benefit thereof.

2016 CLD 2260

The case is a useful reminder for foreign brand owners: registering first in Pakistan does not protect a distributor or importer who has taken a mark it knew belonged to someone else.

Download the digest (PDF) (13 pages · 276 KB)