Intellectual Property Rights

Intellectual Property Rights
PAKISTAN PROPERTY LAWS
INTELLECTUAL PROPERTY RIGHTS

FOR THE SUBJECT
BUSINESS LAW
FINAL PROJECT
SECTION(B)
BUSINESS LAW
SUBMITTED TO
Ms. H. AMINA SADIA
PROFESSOR LAW DEPARTMENT
MANAGEMENT DEPARTMENT
UNIVERSITY OF CENTRAL PUNJAB LAHORE
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GROUP
MEMBERS
NAMES
ID NUMBERS
FAISAL RASHEED
L1S11BBAM2093
SADIQUE HAKIM
L1S11BBAM2054
AHSEN ALI QURESHI
L1S11BBAM2025
MUHAMMAD AMDAN
L1S11BBAM0143
ACKNOWLEDGEMENT
In the name of Almighty Allah, the most beneficent and merciful to the mankind.
This project would not be possible without the encouragement and guidance of number
of people. We feel highly obliged and want to express our deepest gratitude to our
respected teacher PROFF. H.AMINA SADIA for her advice, help and guidance throughout
this semester. We would like to express our deepest gratitude to our parents and friends
for their inspirations, love and constant support.
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TABLE OF CONTENTS
What Is Intellectual Property
Kinds of Intellectual Property Rights
1. Industrial Property Rights
o Patent
o Trademark
o Industrial Design
2. Copyright And Related Rights
IP Rights Management In Pakistan

o Pre 2005 period
o Post 2005 period
o Governance structure
Benefiting From IPR In The World

o
o
o
o
Implementing precompetitive IPRS standards

Enhance capacities to develop and use IPRS
Promote competitive markets
Develop competition policies
IPR & GLOBALIZATION

Strategies To Protect Your IP &Enforcement Of IPR In Foreign
Countries
RECOMMENDATION & CONCLUSION
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INTRODUCTION
Intellectual property, very broadly, means the legal rights which result from
intellectual activity in the industrial, scientific, literary and artistic fields. Countries
have laws to protect intellectual property for two main reasons. One is to give
statutory expression to the moral and economic rights of creators in their
creations and the rights of the public in access to those creations. The second is
to promote, as a deliberate act of Government policy, creativity and the
dissemination and application of its results and to encourage fair trading which
would contribute to economic and social development.
Intellectual property (IP) is original creative work, such as a piece of music, an
invention, a piece of software or a brand, that has been developed to such a
stage, and captured in some permanent way, for example, on paper, that it
can be owned in the same way as physical property. The owner of IP has
control over it and would expect to be rewarded for its development and use.
Anyone who has a new creative or innovative idea then has the right to benefit
from it. That right can be bought, sold, hired or licensed like any other property.
It is important to be aware of what these IP rights are, how they can be
protected and, in due course, how to benefit from them.
Generally speaking, intellectual property law aims at safeguarding creators and
other producers of intellectual goods and services by granting them certain
time-limited rights to control the use made of those productions. Those rights do
not apply to the physical object in which the creation may be embodied but
instead to the intellectual creation as such. Intellectual property is traditionally
divided into two branches, industrial property and copyright.
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INTRODUCTION
INTELLECTUAL PROPERTY
Patents, trade-marks, copyright, industrial designs and similar rights are referred
to as "intellectual property". These rights are "property" in the sense that they are
based on the legal right to exclude others from using the property and in that
ownership of the rights can be transferred. The rights are "intellectual" in the
sense that they protect intangible subjects, usually arising out of some form of
human creativity.
Patents protect inventions, such as machines, devices, methods and
compositions of matter. Trade-mark rights protect words, designs, numbers, twodimensional or three-dimensional forms, sounds or colors (or a combination of
two or more of these elements) used to distinguish the products or services of
one trader from those of others in the marketplace. Copyright protects literary
(including computer programs), artistic, musical and dramatic works. Related
rights include trade secrets, industrial designs, integrated circuit topographies,
plant breeders' rights, and personality rights such as the right to the image.
Each of these rights is quite different from the others. For example, the inventor
of a new interlocking paving stone may be able to obtain a patent on the
method of making the stone and the aspects of the structure of the stone which
permit it to interlock. An industrial design registration may also be obtained
covering decorative features in the shape of the stone. The name under which
the stone is sold may be protected by a trade-mark registration. Finally,
information which may be presented in booklets or videos describing how to
install the stones may be protected by copyright.
Websites are another example of how different intellectual property rights might
exist and cross each other. Starting with the domain name registration for the
website, one or many trade-marks may be used (words, designs, slogans) in
association with wares or services which themselves might be covered by
copyright, patent or industrial design protection. There may also be copyright
protection in the text, database or artistic work appearing on the website or
even in a song or music played while consulting the website. Each of these
forms of intellectual property gives a right to different but possibly related
protection.
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COCA-COLA is an example of a trade-mark for a soft drink. The formulation of

the drink itself is a trade secret and not covered by a patent. As such, there is
protection only so long as the formulation remains secret. The shape of the
bottle was once protected as an industrial design. Patents may have been
obtained in respect of bottling equipment. While alternative products are
available under other trade-marks, such as PEPSI, competing products generally
become established only after expenditure of considerable time and effort in
marketing. In this example, the trade-mark rights may be the most valuable
intellectual property right. Trade-mark protection can be maintained
indefinitely. Patent, copyright and industrial design protections are limited in
time.
Patent agents and trade-mark agents are professionals who are registered to
practice before the Patent Office and the Trade-marks Office. Respectively,
Patent agents and trade-mark agents may not be lawyers although many are.
Registered patent agents typically have expertise in one or more scientific
disciplines and are experienced in analyzing inventions and in writing patent
specifications and claims. Registered trade-mark agents and lawyers practicing
in the intellectual property field typically have expertise and are experienced in
legal aspects of use of trade-marks and trade names, registration of trade-marks
and maintenance and protection thereof.
The Intellectual Property Institute of Canada (IPIC) maintains lists of competent
professionals who are trained and experienced in intellectual property law.
Efforts made in advance of meeting with such a professional to understand the
nature and scope of intellectual property rights can be useful in understanding
the advice given and in making sound business decisions about such rights.
IP is not an end in itself. It is a means towards an end. The end is sustaining and
strengthening the ongoing high growth mode of the national economy and to
ultimately achieve the goal of being an IP efficient society and an IP based
nation. Therefore, strong IP regime is a paramount national imperative for
achieving the objective of competitive economy based on:
Technology Creation
Technology Transfer
Creativity Promotion
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IMPORTANCE
INTELLECTUAL PROPERTY RIGHTS IN MODEREN SOCIETY
In modern society, the concept of personal property is of more importance and
known in the economic market. To take you more deep into it, in the common
law systems personal property may also be called chattels. It is distinguished
from real property, or real estate. In the civil law systems personal property is
often called movable property. Personal property may be classified in a variety
of ways, such as money, negotiable instruments, securities, goods, and
intangible assets including chose in action. The distinction between these types
of property is significant for a variety of reasons. Usually ones rights on movables
are more attenuated than ones rights on immovable (or real property). Real
property rights are usually enforceable for a much longer period of time and in
most jurisdictions real estate and immovable- are registered in governmentsanctioned land registers. In some jurisdictions, rights (such as a lien or other
security interest) can be registered against personal or movable property.
In the common law it is possible to place a mortgage upon real property. Such
mortgage requires payment or the owner of the mortgage can seek
foreclosure. Personal property can often be secured with similar kind of device,
variously called a chattel mortgage, trust receipt, or security interest. In the
United States, Article 9 of the Uniform Commercial Code governs the creation
and enforcement of security interests in most (but not all) types of personal
property. There is no similar institution to the mortgage in the civil law; however a
hypothec is a device to secure real rights against property. These real rights
follow the property along with the ownership. In the common law a lien also
remains on the property and it is not extinguished by alienation of the property;
liens may be real or equitable.
Many jurisdictions levy a personal property tax, an annual tax on the privilege of
owning or possessing personal property within the boundaries of the jurisdiction.
Automobile and boat registration fees are a subset of this tax. Most household
goods are exempt as long as they are kept or used within the household; the tax
usually becomes a problem when the taxing authority discovers that expensive
personal property like art is being regularly stored outside of the household .
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INDUSTRIAL PROPERTY RIGHTS

PATENT
A patent is an exclusive right granted for an invention a product or process
that provides a new way of doing something, or that offers a new technical
solution to a problem. A patent provides patent owners with protection for their
inventions. Protection is granted for a limited period, generally 20 years.
Why are patents necessary?
Patents provide incentives to individuals by recognizing their creativity and
offering the possibility of material reward for their marketable inventions. These
incentives encourage innovation, which in turn enhances the quality of human
life.
What kind of protection do patents offer?
Patent protection means an invention cannot be commercially made, used,
distributed or sold without the patent owners consent. Patent rights are usually
enforced in courts that, in most systems, hold the authority to stop patent
infringement. Conversely, a court can also declare a patent invalid upon a
successful challenge by a third party.
What rights do patent owners have?
A patent owner has the right to decide who may or may not use the
patented invention for the period during which it is protected. Patent owners
may give permission to, or license, other parties to use their inventions on
mutually agreed terms. Owners may also sell their invention rights to someone
else, who then becomes the new owner of the patent. Once a patent expires,
protection ends and the invention enter the public domain. It means that the
owner no longer holds exclusive rights to the invention, and it becomes
available for commercial exploitation by others.
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What is Provisional Specification?

A provisional specification does not provide patent protection on its own.
However, the real value of a provisional specification is that it may be used to
establish an early priority date for a complete specification filed within twelve
months in Pakistan
How is a patent granted?
The first step in securing a patent is to file a patent application. The application
generally contains the title of the invention, as well as an indication of its
technical field. It must include the background and a description of the
invention, in clear language and enough detail that an individual with an
average understanding of the field could use or reproduce the invention. Such
descriptions are usually accompanied by visual materials drawings, plans or
diagrams that describe the invention in greater detail. The application also
contains various claims, that is, information to help determine the extent of
protection to be granted by the patent.
How much does it cost to Patent an invention?
Filing fee for Patent Application is PKR 2250. Fee for each additional page of
specification beyond 40 pages for each additional page is PKR 30 Fee for
beyond 20 claims is PKR 75 All forms & fee schedule is available on website
www.ipo.gov.pk
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LEGAL DEFINATION OF PATENT IN PAKISTAN

It extends to the whole of Pakistan. It shall come into force at once except the
provisions relating to examination, sealing, grant and post-grant matters of the
patents relating to chemical products intended for use in agriculture and
medicines, but excluding the grant of exclusive marketing rights there for and
mail box filings which shall come into force on and from the first day of January,
2005.
DEFINATIONS:
In this Ordinance, unless there is anything repugnant in the subject or context,-
a) assignee includes the legal representative of deceased assignee and

references to the assignee of any person includes references to the
assignee of the legal representative or assignee of that person;
b) Controller means the Controller of Patents appointed under section 3;
c) Convention application means an application made in Pakistan within
twelve months after the date of an application made in a Convention
country, whether claiming single or multiple priorities from such
application;
d) Convention country means a member country of the World Trade
Organization or a country declared as such under section 86.
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Patents Ordinance, 20001

(As amended by Patents (Amendment) Ordinance, 2002)2
Ordinance No. LXI OF 2000
An Ordinance is to amend and consolidate the law relating to the protection of
inventions. The Patents Ordinance 2000 replaces the patent provisions of the
Patents and Designs Act 1911 and the Registered Designs Ordinance 2000
replaces the industrial design provisions of that Act. The Registered Layout
Designs of Integrated Circuits Ordinance 2000 covers a field not previously
legislated upon.
Patents are granted for inventions and are in reality grants of exclusive rights for
a period of 20 years as a reward for placing for public inspection at the Patent
Office of relevant information regarding those inventions so that all may benefit
from the advancement in scientific knowledge which those inventions
represent. Inventions do not come easily, they require intense research over time
at considerable cost; the patentee gets exclusive rights from which he may
hope to gain a commercial advantage for a period of 20 years while he and
others use the advanced scientific knowledge for further research and
invention.
In the case SmithKline and French Laboratories Limited v. Ferozsons Laboratories
Limited reported in 1992 MLD 2226 the Honorable High Court of Sindh held that
the defendants have not produced any evidence to indicate that their drug
has been produced by a process other than the process for which the plaintiffs
hold the patent. This is yet another example of the fact that the courts in
Pakistan are not hesitant in granting full protection to intellectual property rights.
Other patent cases advancing the law on similar lines and decided by our
courts have been reported in 1987 CLC 1571 and 1992 CLC 2382.
Notified under F. No. 2(1)/2000-Pub.- in the Gazette of Pakistan, Extraordinary, published from
Islamabad on 2 December 2000.
2
Notified under F. No. 2(1)/2002-Pub.- in the Gazette of Pakistan, Extraordinary, published from
Islamabad on 26 October 2002.
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SmithKline and French Laboratories Limited v. Ferozsons Laboratories Limited

reported in 1992 MLD 2226
Enforcement of Patent Rights: The following landmark decision is yet another
example of the aggressive, open-minded and state of the art approach of the
higher judiciary in Pakistan. In this case of Patent infringement decided nearly a
decade ago, the High Court of Sind laid down the so-called principle of 'reversal
of burden of proof', at a time when such a principle was still being debated and
deliberated upon in many jurisdictions of the world.
In the High Court of Sind at Karachi:
SmithKline and French Laboratories Limited and another versus Ferozsons
Laboratories Limited and another, 1992 MLD 2226
In this case of patent infringement, the High Court of Sindh had laid down the
principal of reversal of proof (in the year 1991) in the manner that in case of
infringement of a process patent, the onus is upon the Defendant to prove that
it has produced the infringing product through a process different from the one
covered by the patent. Relevant extract of the judgment on the issue of reversal
of proof says:
"That may be so but the defendants have not produced any evidence to
indicate that their drug has been produced by a process other than the process
for which the plaintiffs hold the patent. I would, in the circumstances, hold that
the plaintiffs have established, prima facie, that the drug being sold by the
defendants contains Cimetidine A and has been manufactured by using the
process for which the plaintiffs hold the patent."
In the above manner, it is clear that the Pakistani courts even independent of
TRIPs and other related international treaties had laid down the principal of
'reversal of proof', which is a clear proof of the fact that the Pakistani Courts
extend maximum protection to the Intellectual Property Rights.
Conclusion and analysis
IP rights are private rights... unless the right holders agitate the right forum; his
rights will not be protected. Whenever the IP owners have asserted their rights by
flexing their muscles and bringing out well planned, prepared, prosecuted and
pursued judicial proceedings (4P rule) their rights have been upheld and
adequately enforced by the authorities.
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TRADEMARKS
A trademark is a distinctive sign that identifies certain goods or services
produced or provided by an individual or a company. Its origin dates back to
ancient times when craftsmen reproduced their signatures, or marks, on their
artistic works or products of a functional or practical nature. Over the years,
these marks have evolved into todays system of trademark registration and
protection. The system helps consumers to identify and purchase a product or
service based on whether its specific characteristics and quality as indicated
by its unique trademark meet their needs.
What do trademarks do?
Trademark protection ensures that the owners of marks have the exclusive right
to use them to identify goods or services, or to authorize others to use them in
return for payment. The period of protection varies, but a trademark can be
renewed indefinitely upon payment of the corresponding fees. Trademark
protection is legally enforced by courts that, in most systems, have the authority
to stop trademark infringement. In a larger sense, trademarks promote initiative
and enterprise worldwide by rewarding their owners with recognition and
financial profit. Trademark protection also hinders the efforts of unfair
competitors, such as counterfeiters, to use similar distinctive signs to market
inferior or different products or services.
What kinds of trademarks?
Trademarks may be one or a combination of words, letters and numerals. They
may consist of drawings, symbols or three dimensional signs, such as the shape
and packaging of goods. In addition to identifying the commercial source of
goods or services, several other trademark categories also exist. Collective
marks are owned by an association whose members use them to indicate
products with a certain level of quality and who agree to adhere to specific
requirements set by the association. Such associations might represent, for
example, accountants, engineers or architects. Certification marks are given for
compliance with defined standards but are not confined to any membership.
They may be granted to anyone who can certify that their products meet
certain established standards. Some examples of recognized certification are
the internationally accepted ISO 9000 quality Standards of products with
reduced environmental impact.
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How is a trademark registered?

First, an application for registration of a trademark must be filed with the
appropriate national or regional trademark office. The application must contain
a clear reproduction of the sign filed for registration, including any colors, forms
or three-dimensional features. It must also contain a list of the goods or services
to which the sign would apply. The sign must fulfill certain conditions in order to
be protected as a trademark or other type of mark. It must be distinctive, so that
consumers can distinguish it from trademarks identifying other products, as well
as identify a particular product with it. It must neither mislead nor deceive
customers nor violate public order or morality. Finally, the rights applied for
cannot be the same as, or similar to, rights already granted to another
trademark owner. This may be determined through search and examination by
national offices, or by the opposition of third parties who claim to have similar or
identical rights.
Validity for registration Trademark
Initially Trademark is registered for 10 (Ten) years from the filing date. The
Trademarks registration can be renewed after every 10 (Ten) years.
How to File Trademark Application?
Prescribed application form TM1/TM2.

8 clear reproduction of the sign, logo or Trademark, of any color, form or
3-dimentional features.
List of goods or services to which the Trademark would apply.

Power of Attorney if applied through an advocate / Agent.
Pay Order / Bank Draft of Rs.1000/- in the name of Director General, IPOPakistan.
Can Trade Marks fees be submitted in cash?

All payments to the Trade Marks Registry have to be made in the form of Pay
Orders or Band Drafts in the name of Director General, IPO-Pakistan. The Trade
Marks Registry does not accept CASH.
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LEGAL DEFINATION OF TRADEMARK IN PAKISTAN

DEFINATIONS:
These rules may be called the Trade Marks Rules, 2004. They shall come into
force at once.
In these rules, unless there is anything repugnant in the subject or Context, a. Advisory Committee means the Advisory Committee constituted under
rule 101;
b. Form means a Form as set out in either the Second or the Third
Schedule;
c. old law means the Trade Marks Act, 1940 (V of 1940), and rules made
there under as in force immediately before the commencement of the
Ordinance;
d. Ordinance means the Trade Marks Ordinance, 2001 (XIX of 2001);
e. publish means published in the Journal;
f. Schedule means the Schedule to these rules;
g. section means section of the Ordinance;
h. send, with its grammatical variations, in relation to an act, includes to
give; and
Trade Marks Registry (TMR) is premier body of Intellectual Property Organization
of Pakistan (IPO-Pakistan) working for the registration of trade and services marks
under the Trade Marks Ordinance, 2001. It is a federal government body and its
jurisdiction for trade and services marks lies within the geographical boundary of
Pakistan. It works as a civil court and its decisions are appealable at the
provincial high courts.
With the promulgation of Trade Marks Ordinance, 2001, the Trade Marks Registry
has acquired a new role of creating mass awareness about the importance of
Intellectual Property Rights. In addition to its traditional role of registering
trademarks, it has started persuading entrepreneurs to seek protection of their
trade and services marks so that they could establish their business on fair
practices.
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Trade Marks Ordinance, 2001

(Law, Justice and Human Rights Division)
Islamabad, the 13th April, 2001F.No.2 (1)/2001-Pub. The following Ordinance
made by the President is hereby published for general information:
Ordinance No. XIX OF 2001
An Ordinance to amend and consolidate the law relating to trade marks. Trade
Marks are powerful instruments in the hands of a trader for distinguishing goods
with which he is connected in the course of trade from the goods of others. It is
sometimes forgotten that in the process the trader benefits the public as well, by
holding himself out in regard to the consistency in quality of his products bearing
his trade mark and the maintenance of that standard of quality in other goods
which he may provide from time to time under the same trade mark.
The popularity of a trade mark does not preclude new entrants in the same field
to compete with the trade mark proprietor in terms of product quality and price
and such new entries are common and these natural market forces preclude
exploitation of the public under free market conditions. After all, the beverage
sold under the brand Coca-Cola did not prevent the entry of a competing
product under the brand Pepsi-Cola. In the case of the 7UP trade mark where
the proprietor who had used and registered the trade mark for beverages
opposed the registration of the identical trade mark for confectionary items
such as pan masala, the High Court viewed the matter as one attempting to
enforce a monopoly (PLD 1976 Karachi 895 at pg. 900).
The Supreme Court in PLD 1990 SC 313 did not adopt this approach and refused
registration to the applicants. The Supreme Court was not deterred in refusing
registration by the difference in the goods for which registration was sought and
for which the proprietor had used and registered the trade mark.
This trend was continued in the subsequent cases of Philips, (PLD 1990 SC1074 where Philips, a foreign company, had never used or registered that brand for
which the same mark was sought to be registered by a local person) and
Toshiba (PLJ 1991 SC 57 - where Toshiba, a Japanese company, had never been
used or registered for fans for which the same mark was sought to be registered
by a local trader).
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Coca-Cola Co. v. Koke Co. of America

254 U.S. 143 (41 S.Ct. 113, 65 L.Ed. 189)
No. 101.
Argued: Nov. 18 & 19, 1920.
Decided: Dec. 6, 1920
Mr. Justice HOLMES delivered the opinion of the Court.
This is a bill in equity brought by the Coca-Cola Company to prevent the
infringement of its trade-mark Coca-Cola and unfair competition with it in its
business of making and selling the beverage for which the trade-mark is used.
The District Court gave the plaintiff a decree. 235 Fed. 408. This was reversed by
the Circuit Court of Appeals. Koke Co. v. Coca-Cola Co., 255 Fed. 894, 167 C. C.
A. 214. Subsequently a writ of certiorari was granted by this Court. 250 U. S. 637,
39 Sup. Ct. 493, 63 L. Ed. 1183.
The defense that the plaintiff's trademark and advertisements convey fraudulent
representations to the public affords but a narrow ground for refusing injunctive
relief against an infringer who seeks to reap the advantages of the plaintiff's
goodwill, and the defense must be carefully scrutinized. P. 254 U. S. 145.
As respects this defense, the plaintiff's position must be judged by the facts as
they were when the suit was begun, not by the facts of a different condition
and an earlier time. P. 254 U. S. 147.
Plaintiff's beverage, widely sold under the name "Coca-Cola," with Page 254 U.
S. 144
Brief Facts of the Case:
In 1886, John Pemberton invented a caramel-colored carbonated soft

drink.
They named it Coca-Cola after two of its ingredients, coca leaves and
kola nuts.
They sold and advertised the beverage as Coke.
The Coca-Cola Company is using to prevent the Koke Company of
America from using the word Koke for their products.
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Explanation and Judgment of the case: Co. Coca-Cola v. Koke Co. of America
A picture of coca leaves and cola nut on the labels, and containing certain
harmless extractives from coca leave and cola nut, claimed to add flavor, with
some caffeine from the nuts and more superadded, originally contained also
some cocaine derived from the coca leave, and was once advertised as an
"ideal nerve tonic and stimulant," but, long before this suit began, cocaine was
eliminated, the article was advertised and sold as a beverage only, free from
cocaine, and, for the public generally, the name came to signify the beverage
itself, the plaintiff's product, rather than its ingredients. Held, that the continued
use of the name with the picture was not a fraud depriving the plaintiff of the
right to enjoin infringement and unfair competition in selling a like preparation
under the name of "Koke," but that the injunction should not restrain use of the
name "Dope," a featureless word not specifically suggestive of "Coca Cola" by
similarity or in use, nor forbid manufacture and sale of the product, including the
coloring matter. P. 254 U. S. 145
The decree of the District Court restrains the defendant from using the word
'Dope.' The plaintiff illustrated in a very striking way the fact that the word is one
of the most featureless known even to the language of those who are
incapable of discriminating speech. In some places it would be used to call for
Coca-Cola. It equally would have been used to call for anything else having
about it a faint aureole of poison. It does not suggest Coca-Cola by similarity
and whatever objections there may be to its use, objections which the plaintiff
equally makes to its application to Coca-Cola, we see no ground on which the
plaintiff can claim a personal right to exclude the defendant from using it.
The product including the coloring matter is free to all who can make it if no
extrinsic deceiving element is present. The injunction should be modified also in
this respect.
Decree reversed.
Decree of District Court modified and affirmed.
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Messrs Tabaq Restaurant vs. Messrs Tabaq Restaurant

Reported as 1987 SCMR 1090
The Honorable Supreme Court of Pakistan while dealing with the controversy
pertaining to Trade-mark observed as follows:
"The right in the trade mark existed even prior to the Act and that it was property
and the rights in it remained protected admits of no serious doubt. This will
appear from the following statement respecting such a right:-'He who by his skill and labor establishes a business acquires thereby an interest
in the goodwill of it, that is to say, in the established disposition of customers to
resort to him. To this goodwill he has an exclusive right which is violated by
anyone who seeks to make use of it for his own advantages, as by falsely
representing to the public that he is himself carrying on the business in question.
Special forms of this right of commercial goodwill are rights to trade names and
trademarks. Every man has an exclusive right to the name under which he
carries on business or sells his goods to this extent at least that no one is at liberty
to use that name for the purpose of deceiving the public and so injuring the
owner of it. He has a similar right to the exclusive use of the marks which he
impresses upon his goods and by which they are known and identified in the
market as his.'
Similarly, Section 54 of the Specific Relief Act enacted in the year, 1877 contains
an express provision that a trade mark is a property and invasion of the right
therein may call for a perpetual injunction."
In the above cited judgment it was further observed as under:-"There is a clearer exposition of the manner in which trade-mark is protected. In
Harvard's Law Review, Volume 68 (1954-1855) on the subject of Development in
the Law-Trade Marks and Unfair Competition, in the following words:"Basically a trademark owner receives protection against use of his mark by
another in such a way as is likely to lead consumers to associate the others'
goods with the trade mark owner. This protection against trademark
infringement, that is, against sale of another's goods as those of the trademark
owner by use of the owner's marks, may be described as protection against
passing off. Protection against passing off in this broader sense is afforded by the
action of unfair competition."
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Unilever PLC, A British Company of Port Sunlight Wirral Merseyside, England

Vs.
R.B. Oil Industries (Pvt.) Ltd.
Karachi (1999 MLD 1447)
Where the goods of the plaintiff were Tea and the defendant's goods was
Lipton Bansapati Oil. The High Court of Sindh dealt with the proposition in the
following manner
"It, thus, seems that the defendant-Company wants to thrive at the cost of the
plaintiff in order to secure unlawful gain by taking undue advantage and
wrongful gain of the mere circumstance that the plaintiff-company is not
producing Banaspati Oil which in law as well as equity cannot be permitted. At
any rate, there is a greater possibility and every likelihood of deception and
confusion on the part of innocent buyers and customers to buy the product of
the defendant as and for the goods produced by the plaintiff considering those
to be product of the plaintiff-company."
It thus follows that the law governing the trademark jealously protects the
registered trademark for the growth of healthy competition in trade, commerce,
industry and those who have invested their money, labor and skill for earning a
remarkable reputation should not be allowed to be exploited by rivals who
venture to take benefit of the earned reputation by a registered trademark. The
object/intention of the Legislature, while enacting the Trade Marks Act, 1940,
has been primarily focused towards elimination of chances of confusion and
deception thus the Trade Marks Act, 1940 emphasizes on the language "likely to
deceive, or cause confusion". (Reference can be made to the provisions of
Sections 20 and 21 of said Act)
Page 20
Unilever Limited vs. Sultan Soap Factory (PLD 1991 SC 939)

The following observations of the Honorable Supreme Court of Pakistan being
relevant are reproduced below:
"A trade mark which is identifies! or similar to a registered trade mark in respect
of the same goods or description of goods or if it resembles with the registered
trade mark which is likely to cause confusion and deception to the unwary
purchasers should not be registered. However, in case of honest concurrent user
it may be registered, which may be subject to limitations and conditions
imposed by the Registrar. The intention is to protect unwary-purchasers and
public at large. The question whether a trade mark will cause confusion or
deception is a question of fact which may be determined by examination of the
marks, user, reputation, notoriety, nature of goods, connection with the goods
attached to the name of the manufacturer and such other considerations. It is
now well-settled that it is not necessary that the goods of both the parties may
be the same. However, in cases where goods are different the ultimate object
of finding out confusion and deception is to be judged on consideration
whether the name of the owner of the registered mark is so much associated
with the goods that if same or similar mark is registered, the purchaser will take
the goods under such mark in the normal course, the product of the proprietor
of the registered mark. Therefore, in such case besides identical nature or
similarity of trade mark the governing factor is the association of proprietor's
name with the goods, its reputation and goodwill."
In view of the above survey of law and the authoritative pronouncements of the
Honorable Supreme Court of Pakistan, we see no force in the contention of the
learned counsel for the respondent that the products of the appellant are
different than the product of the respondent and as such this contention is
repelled.
As a matter of law and public policy it would be the duty of the Court to ensure
that once a trademark has been duly registered and nurtured through
advertisement and other means and has remained firmly stabilized for a long
period, it should not be allowed to be abruptly eradicated by imitating such
trademark. If this sense of security is not guaranteed to an owner of a registered
trade-mark and if uncertainty about its future is allowed to remain, no
productive growth which is most desirable in every field of activity of a civilized
society would be possible.
Page 21
Seven-Up Company
Vs
Kohinoor Thread Ball Factory and 3 others
(PLD 1990 SC 313)
"The fact that the Company 7-Up is a multinational of international standing in

the market for beverages and for that reason not likely to engage itself in
trading in such an indigenous product may academically be sound for a
marketing analyst but really of no or very little concern to the class of consumers
served by these products. Their sale points and outlet points are quite often the
same. The consumers served are largely of the same category. Both the
products though classified different for the purpose of trade mark fall, from
consumers' point of view, in the same category of light refreshment or 'Pep'
preparations. Their features do make out a case of there being likelihood of
confusion or deception with regard to their source. The applicants for this
registration mark had a wide and open field to choose from. They decided
upon the trade name of another which also happens to be name of the
company which has heavily invested in that trade name and goodwill
appurtenant to it. With that real likelihood of deception and confusion it was
clearly a case where registration should have been refused."
Page 22
Relevant Case Laws

At the outset, Pakistani courts have provided protection to Famous Marks and in
particular, in those cases where foreign (well-known) marks have been
dishonestly adopted in Pakistan. There have been some relevant cases, brief
extracts from which appear below. On the issue of well-known marks and the
internationalization of trade in Pakistan;
Mr. Justice Wajihuddin Ahmed, in 1992 MLD 2506 Karachi at page 2513
observed and stated:
an enactment on Trademarks is essentially an international statute; catering to
national and international sensibilities...We are living in an information age where the
Earth has veritably become a global village.
In PLD 1979 Karachi 83 at page 87, Mr. Justice I. Mahmud stated that:
With the revival of International Trade and international publicity, the rights of owners
of foreign Trademarks ought to receive some safeguard unless it is clear from the
evidence that the foreign owners have abandoned their intention of marketing their
products under the mark in this country.
In PLD 1990 SC 1074, the Supreme Court approved the following observation of
the High Court:
With the proliferation of means of communication media the names and products of
word renowned big companies are catching the eyes and ears of the public at large in
all civilized countries of the world and Pakistan is no exception. Extensive traveling
abroad in the recent past has made it possible for the people of Pakistan to have
knowledge of the internationally renowned companies and their products. Respondent
2 is no doubt a company of world renown and its products are marketed in Pakistan as
also in other countries.
In PLJ 1991 SC 57 at Page 62 (TOSHIBA CASE), it is stated that:

The respondent has shown no reason tenable at law to pick up an invented word of
foreign firm enjoying inside the country and outside a reputation for electrical goods of
various descriptions.it is against public interest to register such a trademark.
Page 23
INDUSTRIAL DESIGN
An industrial design refers to the ornamental or aesthetic aspects of an article. A
design may consist of three-dimensional features, such as the shape or surface
of an article, or two-dimensional features, such as patterns, lines or color.
Industrial designs are applied to a wide variety of industrial products and
handicrafts: from technical and medical instruments to watches, jewelry and
other luxury items; from house wares and electrical appliances to vehicles and
architectural structures; from textile designs to leisure goods. To be protected
under most national laws, an industrial design must be new or original and
nonfunctional. This means that an industrial design is primarily of an aesthetic
nature, and any technical features of the article to which it is applied are not
protected by the design registration. However, those features could be
protected by a patent.
Advantages of Registered Designs
The owner is able to prevent unauthorized copying or imitation of his or

her design by third parties. In addition, as industrial designs add to the
commercial value of a product & facilitate its marketing &
commercialization, their protection helps ensure that a fair return on
investment is obtained.
Protection of industrial designs encourages fair competition & honest

trade practices. It leads to the production of more aesthetically attractive
& diversified products, thereby broadening consumer choice.
Industrial design protection acts as a spur to a countrys economic

development by contributing to the expansion of commercial activities &
by enhancing the export potential of national product.
Disadvantages of Unregistered Designs
The owner is unable to prevent unauthorized copying or limitation of his or

her design by third parties.
Unprotection of industrial designs discourages unfair competition &

dishonest trade practices.
Page 24
Why protect industrial designs?

Industrial designs are what make an article attractive and appealing; hence,
they add to the commercial value of a product and increase its marketability.
When an industrial design is protected, the owner the person or entity that has
registered the design is assured an exclusive right and protection against
unauthorized copying or imitation of the design by third parties. This helps to
ensure a fair return on investment. An effective system of protection also
benefits consumers and the public at large, by promoting fair competition and
honest trade practices, encouraging creativity and promoting more
aesthetically pleasing products. Protecting industrial designs helps to promote
economic development by encouraging creativity in the industrial and
manufacturing sectors, as well as in traditional arts and crafts. Designs contribute
to the expansion of commercial activity and the export of national products.
Industrial designs can be relatively simple and inexpensive to develop and
protect. They are reasonably accessible to small and medium-sized enterprises
as well as to individual artists and crafts makers, in both developed and
developing countries.
Requirements for registration of a design

An application for the registration of a design must be made on prescribed
Form, and must be accompanied by the prescribed number of representations
of the design or the specimen of the article bearing the design and by the
prescribed fee and affidavit in accordance with Rule 63B. If it is desired to
register the same design in more than one class, a separate application must be
made in each class.
Non-Completion of Registration
An application, which, owing to any default or neglect on the part of the
applicant, is not completed so as to enable registration to be affected within six
months of the date of application, is deemed to be abandoned.
Page 25
LEGAL DEFINATION OF INDUSTRIAL DESIGN IN PAKISTAN

DEFINATIONS:
a. In this Ordinance, unless there is anything repugnant in the subject or
context,article means any article of manufacture and includes any part of an
article if made and sold separately
b. assignee includes the legal representative of a deceased assignee, and

any references to the assignees of any person include references to the
assignee of the legal representative or assignee of that person
c. Conversion country means a country declared as such under section 9
d. registration of design means the right to prevent third parties from

applying a design to an article and from making, importing, selling, hiring
or offering for sale or hire any article in respect of which a design is
registered, being an article to which the registered design or a design not
substantially different from the registered design has been applied, and
from making anything: enabling such article to be made as aforesaid,
except with the license or written consent of the registered proprietor.
e. design means features of shape, configuration, pattern or ornament

applied to an article by any industrial process or means, being features
which in the finished article appeal to and are judged solely by the eye,
but does not include a method or principle of construction or features of
shape or configuration which are dictated solely by technical and
functional considerations;
Page 26
Registered Design Ordinance, 2000

(Law, Justice and Human Rights Division)
Islamabad, the 7 September 2000 No. F. 2(1)/2000-Pub.- The following
Ordinance made by the President is hereby published for general information:
ORDINANCE NO. XLV OF 2000
Under the Registered Designs Ordinance registrations are granted for new and
original designs of industrial products. These registrations are granted for features
of industrial products which appeal to the eye and are not dictated by
mechanical needs or principles of mechanics. Such registrations cover the
shape or configuration of a product and even a pattern such as that printed on
a fabric, provided of course the design is new and original. The exclusive right to
use the design for a period of 20 years is granted in recognition of the design of
the industrial product being new and original.
To provide for the registration of layout-designs of integrated circuits
Whereas Pakistan is a signatory to the Agreement for the Establishment of the
World Trade Organization and the Agreement on Trade Related Aspects of
Intellectual Property Rights for the purpose of reduction of distortions and
impediments to international trade and for effective and adequate protection
of intellectual property rights, and with a view to meet obligations of Pakistan
under the aforesaid Agreements and to promote technological developments
in the country, it is expedient to provide for promotion of the development of
semi-conductor integrated circuits by establishing a system for legal protection
of registered layout designs of integrated circuits, and for matters ancillary
thereto or connected therewith;
And Whereas the National Assembly and the Senate stand suspended in
pursuance of the Proclamation of the fourteenth day of October, 1999, and the
Provisional Constitution order No.1 of 1999;
And Whereas the President is satisfied that circumstances exist which render it
necessary to take immediate action.
Page 27
Parties: Hadley Industries v Cyril Sloggett

[2003] EWHC 2361 (Pat)
Tribunal: Registered Designs Appeal Tribunal
Mr. Cyril Sloggett, a private individual, the owner of UK design registration No.
2090481 "Cold form section/profile" (for a dimpled steel sheet as a building
product), had applied for design protection under the UK law prior to the
amendments which brought it into line with the European Design Directive. The
Registry objected to his drawings, and he filed replacement photographs, and a
sample. The Registry then allowed his design, but sent back the specimen and
kept no copy on file.
Hadley Industries, the largest British producer of cold rolled steel sections,
applied to cancel. Hadley objected that the design was the inevitable result of
their Ultra steel process, a patented method of working steel between two
mating rollers which produce a dimpled surface across the material, increasing
it stiffness and load carrying capacity. The Ultra steel process is typically
combined with a cold roll forming process.
At first instance, the Hearing Officer decided (IPO Case O/533/02) that the
design was not an attempt to protect the underlying process of making a cold
formed dimpled section. Nor was the dimpled shape exactly the same as the
shapes shown in Hadley's evidence, or any of the prior art. Nor was the design
"solely dictated by its function", since "the projections on the surface could,
within reason, be any shape and in any arrangement" to meet the function of
providing a floor covering. He therefore upheld the design as valid. Hadley
commented that the design representations were unclear and also objected to
the wordings of the indication of product and the statement of novelty. The
Hearing Officer held that the Registry had no discretion to refuse "less than
perfect" representations, and indicated that representations were sufficient to
disclose the design.
On appeal, the judge remitted the case back to the Registry, with an order that
they should replace the specimen on the file and allow both parties to amend
their pleadings and file new evidence. The Registry agreed to pay a contribution
to the costs of both parties.
Page 28
Woodhouse UK Plc v Architectural Lighting Systems (t/an Aquila Design)

Design: GB 2082157
Citation(s): [2005] EWPCC (Des), [2006] E.C.D.R. 11, [2006] R.P.C. 1
Tribunal: Patents County Court
This was an action for infringement of a registered design, and UK unregistered

design right, in a street lamp. In the registration the pole was disclaimed in the
Statement of Novelty. The Infringer had a different bracket but a similar lamp
shape. On infringement, held that the "informed user":
Is a consumer or buyer" or "otherwise familiar with the subject matter

through use at work, for instance
Knows something about "what's about in the market?" and "what has
been about in the recent past?
Has "some awareness of product trend and availability"
Has some knowledge of basic technical considerations (if any)
Pays more attention to truly striking features
The design was held invalid on ownership grounds, but there would otherwise
have been infringement in some instances. The UK unregistered design was
infringed.
Page 29
LED Technologies Pty Ltd v Elecspess Pty Ltd

Citation(s): [2008] FCA 1941
Tribunal: Federal Court of Australia
Date: 18/12/2008
The Federal Court of Australia recently handed down a decision in the case of
LED Technologies Pty Ltd v Elecspess Pty Ltd, Ren Pty Ltd, Olsen Pty Ltd and
Advanced Automotive Australia Pty Ltd, which highlights the benefit of
obtaining design registrations for any new products.
The case was also one of the first to consider the infringement test under the
new Designs Act 2003. LED Technologies is a manufacturer and importer of
automotive LED products. It developed and designed a new and distinctive
looking square shaped automotive tail lamp which it manufactured in Taiwan
and obtained Design Registrations.
Elecspess obtained a similar looking but not identical product made in China
with the brand name of ''CONDOR'' and offered it for sale in Australia. LED
Technologies Pty Ltd brought an action against Elecspess and others for design
infringement.
Justice Gordon of the Federal Court of Australia ruled in favor of LED
Technologies and issued injunctions for the prevention of further sales and
awarding $200,000 in damages with legal costs expected to be up to
$1,200,000. In her judgment, Justice Gordon considered and found that any
product which embodied designs that are substantially similar in overall
impression to a registered design would infringe the design registrations.
The product does not have to be identical to the design registration. In assessing
the similarities, the Court would only have regard to the visible features of the
design and would do this by looking at both the infringing product and the
registered design. Accordingly, the material used to manufacture the product
or the inner workings of the product is irrelevant for design infringement
purposes.
Page 30
On appeal three Federal court Judges, Justice Jessup, Justice Besanko and
Justice Emmett dismissed the appeal by Elecspess, Ren, Olsen and Advance
Automotive appeal from Justice Gordons ruling that it had infringed LED
Technologies registered design. This is the first substantive decision by a Full Court
on the new Designs Act introduced in 2003 and provides a guideline and
reference for any future design infringement cases. Owner of LED Technologies
Tony Ottobres comments were, this is a fantastic result for all designers of
original products who can now use this case as precedence and a blow for
product copiers.
Relevant Case Laws
What can be registered as a design and who can apply?

Any person (including a partnership firm or a body corporate) claiming to be
the proprietor of a design can apply for its registration so long as the design is?
New or original;
In the case of Maniar Industries Ltd. v. Mobin Plastic Industries {1987 CLC
135 (Karachi)}, the Karachi High Court confirmed that only a new or original
design that has not been previously published can be registered by the
Controller.
Not previously published in any country;
In the case of Universal Brush-ware (Private) Limited v. Syed Industries
{1991 CLC 382 (Karachi)}, the Karachi High Court refused to grant an injunction
to Universal on the ground that a person, who has imitated a design from
abroad, has no right to have a claim over it even if he gets it registered in
Pakistan because it is neither new nor original.
Not contrary to public order or morality
Page 31
COPY RIGHTS
Copyright is a set of exclusive rights granted to the owner for a limited time to
protect the particular form, way or manner in which an idea or information is
expressed. Copyright laws grant authors, artists and other creators protection
for their literary and artistic creations, music, films, paintings, sculptures,
computer programs and data base etc, generally referred to as works. A
closely associated field is related rights or rights related to copyright that
encompass rights similar or identical to those of copyright, although sometimes
more limited and of shorter duration. The beneficiaries of related rights are:
o performers (such as actors and musicians) in their performances;
o producers of phonograms (for example, compact discs) in their sound
recordings; and
o Broadcasting organizations in their radio and television programs.
Works covered by copyright include, but are not limited to: novels, poems plays,
reference works, newspapers, advertisements, computer programs, databases,
films, musical compositions, choreography, paintings, drawings, photographs,
sculpture, architecture, maps and technical drawings.
Copyright is Moral and economic rights of authors/ writers, publishers, performers
and producers of sound recordings (phonograms). Duration of Copyright
protection is life time of the author plus 50 years thereafter
Copyright work or Copyright registration can categorize by following
Parts:
1. Literary works, for example: Books, Magazines, Journals, Lectures, Sermons,
Dramas, Novels, and also including Computer Programs and
Compilation of Data.
2. Artistic works, for example: Paintings, Photographs, Maps, Charts,
Calligraphies, Sculptures, Architectural Works, Drawings, Label Designs,
Logos, monograms etc).
3. Cinematographic works (Motion Pictures, Video Cassettes, VCDs, DVDs
etc.).Records Works (Audio Cassettes and CDs).
Page 32
Steps of Registration of Copyright

1.
2.
3.
4.
5.
Filing of application
Examination
Publication in newspaper (Artistic Work only)
Opposition, if any
Issuance of Certificate by Registrar (Registration)
What rights do copyright and related rights provide?

The creators of works protected by copyright, and their heirs and successors
(generally referred to as right holders), have certain basic rights under
copyright law. They hold the exclusive right to use or authorize others to use the
work on agreed terms. The right holder(s) of a work can authorize or prohibit:
o
o
o
o
o
its reproduction in all forms, including print form and sound recording;
its public performance and communication to the public;
its broadcasting;
its translation into other languages; and
Its adaptation, such as from a novel to a screenplay for a film.
Similar rights of, among others, fixation (recording) and reproduction are
granted under related rights. Many types of works protected under the laws of
copyright and related rights require mass distribution, communication and
financial investment for their successful dissemination (for example, publications,
sound recordings and films). Hence, creators often transfer these rights to
companies better able to develop and market the works, in return for
compensation in the form of payments and/or royalties (compensation based
on a percentage of revenues generated by the work). The economic rights
relating to copyright are of limited duration as provided for in the relevant
WIPO treaties beginning with the creation and fixation of the work, and lasting
for not less than 50 years after the creators death.
Copyright and the protection of performers also include moral rights, meaning
the right to claim authorship of a work, and the right to oppose changes to the
work that could harm the creators reputation. Rights provided for under
copyright and related rights laws can be enforced by right holders through a
variety of methods and for a, including civil action suits, administrative remedies
and criminal prosecution. Injunctions, orders requiring destruction of infringing
items, inspection orders, among others, are used to enforce these rights.
Page 33
What are the benefits of protecting copyright and related rights?

Copyright and related rights protection is an essential component in fostering
human creativity and innovation. Giving authors, artists and creators incentives
in the form of recognition and fair economic reward increases their activity and
Output and can also enhance the results. By ensuring the existence and
enforceability of rights, individuals and companies can more easily invest in the
creation, development and global dissemination of their works.
How have copyright and related rights kept up with advances in
technology?
The field of copyright and related rights has expanded enormously during the
last several decades with the spectacular progress of technological
development that has, in turn, yielded new ways of disseminating creations by
such forms of communication as satellite broadcasting, compact discs and
DVDs. Widespread dissemination of works via the Internet raises difficult
questions concerning copyright and related rights in this global medium. WIPO is
fully involved in the ongoing international debate to shape new standards for
copyright protection in cyberspace. In that regard, the Organization administers
the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms
Treaty (WPPT), known as the Internet Treaties. These treaties clarify
international norms aimed at preventing unauthorized access to and use of
creative works on the Internet.
How are copyright and related rights regulated?
Copyright and related rights protection is obtained automatically without the
need for registration or other formalities. However, many countries provide for a
national system of optional registration and deposit of works. These systems
facilitate, for example, questions involving disputes over ownership or creation,
financial transactions, sales, assignments and transfer of rights. Many authors
and performers do not have the ability or means to pursue the legal and
administrative enforcement of their copyright and related rights, especially
given the increasingly global use of literary, music and performance rights. These
societies can provide their members with efficient administrative support and
legal expertise in, for example, collecting, managing and disbursing royalties
gained from the national and international use of a work or performance.
Certain rights of producers of sound recordings and broadcasting organizations
are sometimes managed collectively as well.
Page 34
LEGAL DEFINATION OF COPYRIGHTS IN PAKISTAN

DEFINATIONS:
According to the Copyright Ordinance, 1962
The exclusive right

o
o
o
o
o
to reproduce the work in any material form

to publish the work
to perform the work in public
to produce, reproduce, perform or publish any translation of the work
to broadcast the work to make any adaptation of the work
Salient features
o Period of copyright is the life of the author and 50 years after his death
o Registration of copyright is not mandatory but recommended
o Allows reproduction for Fair Use in research, teaching, private study,
criticism, review, news reporting, and judicial proceeding
o Provides 3 types of remedies against infringement:
o Civil
o Criminal
o Administrative
Page 35
Copyright Ordinance, 1962

THE COPYRIGHT ORDINANCE, 1962
[XXXIV of 1962]
With
COPYRIGHT RULES, 1967
THE INTERNATIONAL COPYRIGHT ORDER, 1968
COPYRIGHT BOARD (PROCEDURE)
REGULATIONS, 1981
The Copyright Ordinance specifies works in which the author or the owner has
exclusive rights to record, perform, copy, reproduce, broadcast and otherwise
display the works in which the copyright subsists. For this purpose works are
literary, dramatic, musical and artistic works, if original, cinematographic works
and records. Literary works now cover computer programs as well. There are
many persons whose livelihood depends upon the recognition of copyright in
their works. The copyright proprietor benefits from dealing with a copyright
which he has in his works and specially through the grant of licenses.
The availability of different laws for the protection of various categories of IPR
sometimes leads to an abuse of the processes available under those laws for
which those administering the laws need to be vigilant. For example a person
unable to register a trade mark will sometimes seek to register it under the
Copyright Ordinance although the Ordinance does not contemplate the
registration of trade marks. This practice has been deprecated in a recent
decision of the Sindh High Court in 2003 CLD 1531. The High Court rejected the
defense of the infringer based on a copyright registration secured for what was
essentially a copy of a foreign trade mark and which should never have been
registered as a copyright.
Page 36
Metricon Homes Pty Ltd v Vista Design Architects Pty Limited & Ors
[2011] FMCA 788
(22 September 2011)
Copyright application for transfer of proceeding to Sydney
The respondents sought to transfer these proceedings to the Sydney Registry

from the Melbourne Registry. The proceeding concerns Metricons claim that
Vista has infringed Metricons copyright in house plans.
The house in suit was built by Vista in New South Wales and Vista and its likely
witnesses are all based in New South Wales. However, Vista has put in issue
subsistence and ownership of the copyright. Accordingly, Metricon will be
required to call witnesses based in Melbourne to prove that part of its case.
While at least one of the respondents would suffer some hardship if the matter
was heard in Melbourne, that could be answered in part by providing her
evidence by video-link from Sydney. The trial was therefore set down for
Melbourne.
Page 37
Ladakh Pty Ltd v Quick Fashion Pty Ltd & Anor

[2011] FMCA 519
(2 September 2011)
Copyright infringement claim dismissed
Each of the parties is a manufacturer and distributor of womens clothing.
Ladakh claimed that it was the copyright owner of a butterfly drawing that it
had sent to China to be printed onto fabric, which was used to make womens
clothing that Ladakh imported into Australia. Quick Fashion was alleged to have
copied that drawing and, through the same process of having that drawing
printed on fabric in China which was used to make clothes that were imported
into Australia, thereby infringed copyright. In its defense, Quick Fashion claimed
to have found fabric with the butterfly drawing in a Chinese fabric market.
Quick Fashion put Ladakh to its proof of demonstrating that the butterfly
drawing was an artistic work within the meaning of the Copyright Act. It was; it
had lines, shapes and colors and is vaguely representational.
Quick Fashion also asserted that the Ladakh butterfly drawing was not original,
but was a copy of a pattern found on Matthew Williamson dresses. Ladakhs
designer claimed that this was not the case, and that the butterfly drawing was
taken by digitally manipulating a photograph of a butterfly found on the
Internet and turning it into a pattern over the course of five or six hours. Honor
felt that there was sufficient independent creative or technical and possibly
intellectual effort in Ladakhs creation to conclude that it was original within the
meaning of the Act.
Ladakhs case failed on the question of copying. There was no question that
Ladakhs design had been copied by someone, and printed on the fabric used
by Quick Fashion; the question was who did the copying. Ladakh asserted that
the onus of proof had shifted in this regard, it having been proved that the work
in suit was sufficiently similar to its own and that Quick Fashion had the
opportunity to gain access to Ladakhs work. Ultimately, on a review of the
evidence, Riley FM concluded that Ladakh failed to discharge its onus of proof,
and in event felt that the evidence of Quick Fashion was reasonably plausible
and not, as Ladakh asserted, a concoction of lies.
Page 38
Performing Right Society Ltd v Boizot

Reference [1999] EWCA Civ 700; [1999] EMLR 359
Court of Appeal Judge
Date of Judgment 2 Feb 1999
Summary: Intellectual property - Copyright - Licensing - Performance of musical
items Royalties
Brief Facts
The Plaintiff was a licensing body which administered the performing rights in
musical works of its members and a large number of foreign copyright owners.
Anyone who wished to perform a musical work from the Plaintiff's repertoire
required a license from it. The Defendant was the Chairman and Managing
Director of Pizza Express, which provided its customers with live musical
entertainment. The Plaintiff licensed the Defendant from year-to-year. The
Plaintiff commenced an action against the Defendant for money due to it
under the license and was awarded damages. The judge also dismissed the
Defendant's counterclaim, which sought declarations as to the meaning of the
license. The Defendant appealed
Issue: the true construction of the license
House of Lords Held
On its true construction, the license provided that where the total of gross
salaries, gross wages, fees, expenses or other emoluments paid to performers
(other than disc jockeys); and gross fees (net of any value added tax) paid to
third parties for the services of performers was 8,356 or more, the royalty due
was 4 per cent of such expenditure. The percentage related to music that was
both within and outside the PRS repertoire. Whether this was reasonable or not
was a matter for the Copyright Tribunal. The appeal was dismissed
Comment
The case was notable for the proposition that a tariff could be set by reference
to copyright as well as non-copyright music.
Page 39
INTELLECTUAL PROPERTY MANAGEMENT

IN PAKISTAN
Intellectual property management in Pakistan could be divided in to two
periods:
a) PRE 2005 PERIOD
o Fragmentation
o Deterioration
o No automation
b) POST 2005 PERIOD
o IPO created as an autonomous body to encompass all intellectual
Property related functions.
o IPO directly under prime ministers stewardship
o High powered policy board
o Integrated offices
Mission Statement
The Mission Statement of IPO-Pakistan is as follows
Integrating and upgrading IP infrastructure for improved service delivery;
increased public awareness and enhanced enforcement coordination for
achieving the goal of being an IP based nation.
Public Awareness
IP awareness in Pakistan is very low. In order to improve public awareness, IPO
has launched a Public Outreach Program for link aging and leveraging internal
and external constituencies i.e. Chambers of Commerce and Industry, business
enterprises, R&D institutions, universities, academia and general public. World
Trade Review, a fortnightly newspaper focused on WTO news is also regularly
publishing IP news. Both Electronic Media and Print Media are being increasingly
used for enhancing general public awareness in IP.
Page 40
IPR AND GLOBALIZATION

IN THE WORLD
Intellectual Property has acquired a wide international importance in recent
years and in this regard various treaties or conventions have come into
existence for better protection of intellectual property rights such as Paris
Convention, Berne Copyright Convention, Universal Copyright Convention,
Madrid Agreement, Patent Co-operation Treaty and last but not the least, TRIPS.
Of these Pakistan is a signatory only of the Berne and Universal Copyright
Conventions and of the TRIPS Agreement under WTO (World Trade
Organization).
However, examples of inadequate protection of IP rights can also been seen in
the developed and industrialized world. In 1997, a Texas based company (Rice
Tec Inc.) was able to secure a controversial US patent for Basmati rice lines and
grains. Basmati rice type has been developed and grown in Pakistan and India
for many years and is known worldwide for its peculiar quality and properties. It is
in itself a geographical indication associable with the growers in India and
Pakistan. Such actions send wrong signals to various jurisdictions administering IP
rights. Consider the impact on IP rights if various countries were to grant rights for
Cologne, Scotch, or Champagne, which are clearly indications of
corresponding places in Germany, Scotland, and France, respectively.
Trademarks are effective business tools that can communicate a strong focused
message about products, technologies, cultures and individuals. Unlike patents
and copyright, trademarks can be renewed indefinitely, which makes them a
very powerful IP asset. Trademarks help to cement customer loyalty. In addition
to promotion of product sales and cementing customer loyalty, trademarks help
their owners increase profitability, respond to unfair competition, expand and
maintain market share, differentiate products, introduce new product lines, gain
royalties through licensing programs, support strategic partnerships and
marketing alliances and justify corporate valuation in financial transactions.
Trademarks are also one of the basic elements of franchising. Examples of some
well known trademarks are McDonalds, Coca-Cola, KFC, Calvin Klein (CK),
Armani, Mont Blanc and many others
Page 41
STRATEGIES TO PROTECT YOUR

IP & ENFORCEMENT OF IPR IN FOREIGN COUNTRIES
IN THE WORLD
How do I protect my Intellectual Property Overseas?
Many small companies experience difficulty protecting their IPR abroad,
including in China, as they are not aware of how to obtain and enforce rights in
foreign markets. Some basic, often low-cost, steps small companies should
consider include:
o Working with legal counsel to develop an overall IPR protection strategy;
o Developing detailed IPR language for licensing and subcontracting
contracts;
o Conducting due diligence of potential foreign partners (The U.S.
Commercial Service can help, see Export.gov);
o Recording their U.S.-registered trademarks and copyrights with Customs
and Border Protection; and
o Securing and registering patents, trademarks, and copyrights in key
foreign markets, including defensively in countries where IPR violations are
common.
Combining Registered and Unregistered Rights
You can combine registered and unregistered rights to optimize IP protection for
your
business.
These
may
involve
using trade
secrets
and
confidentiality agreements
together
with
registered
rights,
such
astride and designs.
Not every piece of IP you own will warrant the cost and time required to formally
register it. You may determine it is better to get your product into the market as
soon as possible instead of waiting for full protection from a patent, for example.
However, other IP you own might be critical to your business success and require
the benefits provided by registered rights.
Page 42
STEPS TO DEVELOP AN IP STRATEGY

The steps in developing an IP strategy include:
o Considering ways you can use the IP system in your business strategy and
integrate IP into your business plan.
o Searching the patent, trade mark and design databases, as well as other
literature and the internet, to ensure your ideas are new and to avoid
infringing the rights of others. You can also search for new business
opportunities and monitor what your competition is doing.
o Weighing the risks and the benefits of registered and unregistered rights for example, you might find maintaining secrecy and being first to market
is a good strategy for you, rather than patenting.
o Conducting an IP audit to be sure you actually own the IP you think you
do, particularly if it has been produced by contractors.
o Developing an infringement strategy and consider IP insurance.
o Educating your staff as to their obligations and, where necessary, have
them sign confidentiality agreements.
o Make effective trade marks the core of your brand and image building
strategy.
IP can be a complex area and there is a range of professionals who can
provide advice on different IP issues.
Assess International Markets

As global markets grow, technology companies can increase the value of their
IP by protecting it in countries outside of the United States. Options are available
for international protection of many copyrights and trademarks, but patent
filings still need to be done on a country-by-country basis. When selecting
countries in which to seek patent protection, companies often struggle with the
cost/benefit analysis for each country. Companies should consider factors such
as customer locations, competitor locations, and strength of local patent laws
when deciding where to file for a patent.
Page 43
RECOMMENDATIONS
The Patent System added the fuel of interest to the fire of genius.
[Abraham Lincoln].
It is obvious that currently the emphasis in not on passage of international and
national legislative bills on IP; rather it is the protection of the intellectual
property rights through effective law enforcement, efficient administrative
machinery and receptive judiciary
Federal Shariat Court acknowledged a very broad definition of IP under the
Islamic law. It was observed that all intellectual properties are intangible
properties and conform to the word MAAL (property) anything having
monetary value. [PLD 1983-FSC 125]
Losses in terms of the inability to attract fresh investment, costs & damage to
consumers, and loss of international reputation due to infringement of
Intellectual Property Rights are incalculable
Like most other developing countries, piracy of nearly all major and famous
brands and products is uncontrolled in Pakistan. A few estimates regarding the
losses faced by the stakeholders as a result of rampant IPR violations are as
follows:
o Oil & Lubricants Industry: Annual Revenue Loss to Government Rs.1600
million.
o Books & Publishing: Revenue Loss to Government Rs.40 million.
o IT Industry: Job Losses, 31000 approx.
The message is clear for the nations racing for returns and desirous of
maintaining their competitive edge.
Anything under the sun, apart from a human being, should be

regarded as patentable.
Page 44
CONCLUSION
Every man has a property of his own person, the labor of his
body and the works of his hands are properly his"
[John Locke]
We are living in a century of scientific knowledge and innovation. The worlds
leading nations in these times are those who create, innovate and exploit
knowledge. Today the standing of a country in the comity of nations depends
on its ability to transform knowledge into opportunity, wealth and social welfare
through creativity and innovation. Trade and industry are becoming more
knowledge driven than ever. Trade in raw and natural substances has given
way to trade in high technology goods and services. Creative thinking and the
ensuing sea of knowledge and innovation has brought about a complete
transformation in the world we inhabit today.
Pakistani Courts had long realized the importance of protecting the rights of
owners of the Intellectual Property Rights. Their approach, when dealing with
issues relating to Intellectual Property Rights, has always been forward looking
and futuristic. The Courts of Pakistan were recognizing globalization and
international trade, and enforcing rights based on such principles, at times when
even some of the developed nations were only beginning to discuss these issues
Hence in a nutshell, while intellectual property laws demand international
harmonization the fact is that these laws are impossible to enforce. The on the
ground reality therefore is not a single global order, but rather a mix of different
zones both within and between countries where intellectual property laws are
enforced to varying degrees. It is the heterogeneity of these zones each of
which operates with a fair degree of autonomy that allows global piracy to
thrive
The future of the nation depends in no small part on the

efficiency of industry, and the efficiency of industry depends in
no small part on the protection of intellectual property
Page 45
A right that is had by a person or by a company to have

exclusive rights to use its own plans, ideas, or other intangible
assets without the worry of competition, at least for a specific
period of time. These rights can include copyrights, patents,
trademarks, and trade secrets. These rights may be enforced
by a court via a lawsuit. The reasoning for intellectual property
is to encourage innovation without the fear that a competitor
will steal the idea and / or take the credit for it.
Page 46

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