Trade Marks Ordinance, 2001. SC lawandpolicychambers

Engaging in Preparatory Steps or Carrying the Intention to Use Another’s Trademark Into Effect is also an Infringement of the Trade Marks Ordinance, 2001. SC


The Supreme Court has delivered a significant judgment, CLD 2022 SC 615, regarding the jurisdiction of the Intellectual Property Tribunal. In this ruling, the Court addressed two important questions. Firstly, is it possible to file a suit before the Tribunal when the dispute involves a co-proprietor of the trademark? Secondly, does such a dispute amount to passing off and violate the provisions of Section 40 of the Trade Marks Ordinance, 2001?

The Court has answered both of these questions affirmatively, holding that if an agreement restricts a co-owner or proprietor from granting permission to a third party to use the name and style of the trademark without the consent of another co-owner/proprietor, any such act infringes on the rights of the other co-proprietor and falls under the jurisdiction of the Tribunal. Therefore, the Tribunal is competent to adjudicate such suits.

Furthermore, the Court emphasized a crucial aspect of the case that could bring about significant changes to IP-related cases. It clarified that in order to establish a case of IP infringement under the Intellectual Property Ordinance, it is not necessary to demonstrate that the respondent has physically used the trademark and derived benefits from it. To bring a case before the Tribunal, it is sufficient to demonstrate the respondent’s intention to use the trademark and the steps taken to actualize this intention. This interpretation expands the scope of Section 40 of the Ordinance, considering an intention to use the trademark and preparatory steps as infringement within its provisions. This interpretation serves as a preventive measure to address potential infringements at an early stage.

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