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Official Citation: 2024 SHC 10
Court / Jurisdiction: Sindh High Court
Year of Decision: 2024
Decision Date: 2024-01-10
Parties: M/s. Sadiq & Suharwardy vs Ismail Industries Ltd. and Eight Other Connected Suits and One J. Misc. as per Annexure "B"
Ruling Summary: This decision was rendered by the Sindh High Court on 2024-01-10, officially reported as 2024 SHC 10. In this matter between M/s. Sadiq & Suharwardy and Ismail Industries Ltd. and Eight Other Connected Suits and One J. Misc. as per Annexure "B", the court adjudicated key questions of statutory construction, procedural regularity, and legal precedent under Pakistani law.
Core Holding: The honorable bench evaluated governing statutory provisions and judicial authorities to establish the rights of the parties, delivering the binding reasoning set out below.
Case cited as 2024SHC10
Court Name: Sindh High Court Judge(s): Jawad Akbar Sarwana Title:M/s. Sadiq & Suharwardy vs Ismail Industries Ltd. and Eight Other
Connected Suits and One J. Misc. as per Annexure "B" Case No.: Suit No. 200 of 2020 Date of Judgment:2024-01-10 Reported As: 2024 SHC 10 Result: Order Accordingly Judgment
ORDER Jawad Akbar Sarwana, J.: The subject matter of these nine (9) suits and one (1) J. Misc. Application concern the judicial determination of future proceedings of trademark matters, which have been filed between the years 2005 and 2020, pending hearing at various stages before this bench and are currently retained in the High Court of Sindh at Karachi as per by his lordship, Mr Justice Munib Akhtar, who as a Judge of the High Court of Sindh at Karachi (currently a sitting Judge of the Supreme Court of Pakistan) authored a Note/Opinion regarding the transfer of cases from the High Court of Sindh at Karachi to the Intellectual Property Tribunal ("the IP Tribunal") established under Section 16 of the Intellectual Property Organization of Pakistan ("IPOP") Act, 2012. Following the Judgment of the Supreme Court of Pakistan in the case of Muhammad Multazam Raza v. Muhammad Ayub Khan, 2022 SCMR 979, and the enactment of the Trade Marks (Amendment) Act, 2023, on 11.08.2023, this bench put the parties and Counsels in the above- mentioned trademark matters on notice as to why these nine (9) suits and one (1) JM connected to one of the nine suits should not be transferred for hearing by the Tribunal established under Section 16 of the IPOP Act, 2012. 2. The learned Counsels for the Plaintiffs/Applicants in the ten (10) lis argued that after the Trade Marks (Amendment) Act, 2023, suits involving trademarks matters filed in the High Court which could have been transferred under the IPOP Act, 2012 from the High Court to the IP Tribunal need not be transferred, as most of the references made to "the District Court" in the Trade Marks Ordinance, 2001, resultantly stood substituted with reference to "the High Court". Therefore, such trademark matters filed in the High Court should remain pending to be decided by
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the High Court. The Counsels also contended that the trademark suits had been filed in the High Court pursuant to the Note/Opinion written by Justice Munib Akhtar, and these matters could not be subsequently transferred to the IP Tribunal until the Note/Opinion was varied or set aside. The litigating parties had relied on the said Note/Opinion of Mr Justice Munib Akhtar, which allowed/enabled the Plaintiffs to file and continue to prosecute their trademark claims in the High Court of Sindh at Karachi and as such vested rights have accrued to them in favor of proceeding in the High Court. The Counsels further contended that the continuation of the trademark matters in the High Court was contingent on the pecuniary value of the suit. Therefore, the pecuniary value of the trademark suits will determine the continuation of such suits in the High Court. Finally, the Counsels submitted that the High Court was comparatively more commercially sound than the IP Tribunal, hence, the parties were better placed to be heard by the High Court rather than by the IP Tribunal. 3. Ms. Saira Shaikh and Mr. Salman Ahmed Sheikh, learned Advocates, made slightly nuanced submissions. Counsel Saira Shaikh argued that after the establishment of the IP Tribunal, all suits are to be transferred from the High Court to the IP Tribunal. Thus, this bench cannot pass any further orders except to transfer all the cases. Mr Salman Ahmed Sheikh contended that there was a lack of consistency in handling the trademark matters by the High Court in that, the High Court had returned the Plaint in some cases, and in some cases the suit was transferred. He further contended that trademark matters, which involved rectification and cancellation, currently pending in the High Court of Sindh, could only be decided by the High Court of Sindh at Karachi. 4. I have heard the learned Counsels and perused the record. 5. Before proceeding further, it would be expedient to categorize the ten (10) trademark cases into three categories; namely Category "A", "B" and "C". Category "A" consists of cases filed on or before 28.12.2015, Category "B" consists of cases filed on or after 29.12.2015, and, Category "C" consists of cases involving "Rectification" and "Cancellation" provisions of the Trade Marks Ordinance, 2001. The three categories may be expressed in tabular form as follows: Category "A" Category "B" Category "C" Suit No.1161 of 2004 Suit No. 226 of 2004 Suit No. 08 of 2005 Suit No.1058 of 2006 Suit No. 584 of 2010 Suit No. 763 of 2010Suit No.2232 of 2016 Suit No.2679 of 2016Suit No. 200 of 2020 a/w J.M 34 of 2020 5. By way of background, it may be noted that Parliament enacted the Intellectual Property Organization of Pakistan ("IPOP") Act, 2012 on 06.12.2012. Section 2(h) of the IPOP Act, 2012 defines "Intellectual Property Laws" as the laws specified in the Schedule to the Act which include the following: (1) The Trade Marks Ordinance, 2001 (XIX of 2001). (2) The Copyright Ordinance, 1962 (XXXIV of 1962) (3) The Patents Ordinance, 2000 (LXI of 2000). (4) The Registered Designs Ordinance, 2000 (XLV of 2000). (5) The Registered Layout-Designs of Integrated Circuits Ordinance, 2000 (XLIX of 2000). (6) Sections 478, 479, 480, 481, 482, 483, 485, 486, 487, 488 and 489 of Pakistan Penal Code (XLV of 1860).
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6. Section 16 of the IPOP Act, 2012 provides for the creation of Intellectual Property Tribunals ("IP Tribunals"), and sections 17 and 18 of the Act determines the powers and jurisdiction of such Tribunals as follows: "17. Powers of the Tribunals. (1) Subject to the provisions of the Act, the Tribunal shall, (a) in the exercise of its civil jurisdiction, have all the powers vested in a civil court under the Code of Civil Procedure, 1908 (Act V of 1908); (b) in the exercise of its criminal jurisdiction, try offences made punishable under this Act and shall, for this purpose have the same powers as are vested in a Court of Sessions under the Code of Criminal Procedure, 1898 (Act V of 1898); (2) The Tribunal shall in all matters with respect to which the procedure has not been provided for in this Act, follow the procedure laid down in the Code. (3) All proceedings before the Tribunal shall be deemed to be judicial proceedings within the meaning or sections 193 and 228 of the Pakistan Penal Code (Act XLV of 1860). (4) Subject to subsection (5), no court other than a Tribunal shall have or exercise any jurisdiction with respect to any matter to which the jurisdiction of the Tribunal extends under this Act. (5) Nothing in sub-section (4) shall be deemed to affect any proceedings pending before such court immediately before the coming into force of this Act. (6) All suits and proceedings pending in any court instituted under intellectual property laws shall stand transferred to, and be heard and disposed of by, the Tribunal having jurisdiction under this Act. On transfer of proceedings under this subsection, the parties shall appear before the Tribunal concerned on the date previously fixed. (7) In respect of proceedings transferred to the Tribunal under subsection (6), the Court shall proceed from the stage which the proceedings had reached immediately prior to the transfer and shall not be bound to recall and re-hear any witness and may act on the evidence already recorded or produced before a court from which the proceedings were transferred (underling added)." "18. Jurisdiction of the Tribunals. (1) All suits and other civil proceedings regarding infringement of intellectual property laws shall be instituted and tried in the Tribunal. (2) Notwithstanding anything contained in any other law for the time being in force, the Tribunal shall have exclusive jurisdiction to try any offence under intellectual property laws." (underlining added) 7. According to Section 17(1) of IPOP Act, 2012, matters pertaining to Intellectual Property Laws pending in any Court shall stand transferred to the Intellectual Property Tribunal under Section 16 of the IPOP Act, 2012. However, the IP Tribunal in Sindh was not established until the Government of Pakistan, Law Justice and Human Rights Division published Notification No.P.15(1)/2013-A-IV dated 02.12.2014. Thereafter vide the Government of Pakistan, Law Justice and Human Rights Division published Notification No.S.R.O 1330(I)/2015 dated 29.12.2015 that the Federal Government was pleased to direct that section 15 as well as sub sections (2), (3), (8), (9), (10), (11) and (12) of section 16 and sections 17, 18 and 19 of the said Act shall come into force with immediate effect. 8. Following the above developments, pursuant to an Order dated 14.12.2017 in Suit No.2578/2014 (Muhammad Ali Barry v. Kaybee Snacks & Others), Mr. Justice Munib Akhtar, rendered an opinion/note pursuant to the directions of the Chief Justice of the High Court of Sindh relating to the transfer of cases to the IP Tribunal Karachi. The said Note/Opinion became a part of the Office Report put up by the Asst. Registrar (D-II)(O.S.) on 28.12.2017 to regulate IP matters filed in the High Court. A selection of relevant paragraphs is reproduced from Justice Munib Akhtar's Note/Opinion as follows: "2. One point appears clear. Since the Tribunal is intended to be a first instance (i.e. trial) forum, the appellate jurisdiction of the High Court is not involved. Thus (obviously) HCAs and Mas (Misc.
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Appeals) under or in respect of or arising out of the IP Laws are not affected and were not be transferred. 3. The first jurisdiction, generally speaking, under the IP Laws is conferred on the "court" which is usually defined as being the District Court or Judge. The Sindh High Court, being or having the jurisdiction of the principal Court of Civil Jurisdiction in Karachi Division by virtue of the (Provincial) Act of 1926 exercises this jurisdiction accordingly, essentially in forms of suits filed on the Original Side. Some of the provisions of the IP Laws, however, directly confer first instance jurisdiction on the High Court. These include Petitions regarding revocation of Patents and cancellation of designs and/or the Patents Ordinance, 2000 and Registered Design Ordinance, 2000, respectively. 4. As noted above, in my view the crucial provision is Section 18(1) and what is required in particular is the proper interpretation of the word "infringement" of intellectual property laws appearing therein. The reason is that it is only suit and civil proceedings "regarding" such "infringement" that fall within the (exclusive) jurisdiction of the Tribunal and need therefore be transferred. Quite obviously, suits for infringement of intellectual property rights such as registered trademarks, patents, designs, etc. would fall within the scope of the foregoing words. The fact that such suits above have been instituted in the High Court would not be relevant since as noted the High Court is exercising jurisdiction in such matters because it is the principle court of civil jurisdiction for Karachi Division. The statute confer jurisdiction in relation to such infringement not on the High Court but rather on the District Court or Judge or Court in relation to infringement of the right concerned. Thus Section 117 of the Trademark Ordinance, 2001 ("TM Ordinance"). . . speak of the District Court/Judge. . .Now, by far, the majority of the suits pending on the original side would appear to be those involving infringement in terms of the foregoing provisions. Thus, subject to what is stated below, the general rule would appear to be that suits pending on the Original Side arising out of the IP Laws would have to be transferred to the Tribunal. 5. It is to be noted that the IP Laws provide. For remedies against groundless threats of infringement proceedings: see s. 52 of the TM Ordinance, s. 66 of the Patents Ordinance and s. 22 of the Designs Ordinance. In these proceedings, essentially, the plaintiff is threatened by the defendant. the holder of the IP right on the basis of an alleged infringement of the latter's right(s), which the plaintiff denies. The remedies include suitable declarations, injunctions and even damages. In each case, the action is by way of a suit, which would, as explained above, ordinarily mean the District Court/Judge or court in general. It could be argued that the nature of such threats should not be considered to be "infringement of intellectual. property laws", the crucial words of section 18(1) of the Act. Indeed, it could be argued that such situations are quite the opposite: here the plaintiff is averring that he has not infringed the rlevant IP Law but has nonetheless been issued a (groundless) threat in this regard. However, on the whole the better view would seem to be that such suits would also be covered by section 18(1) as being "regarding infringement" and, hence, the suit would lie within the jurisdiction of the Tribunal. This is all the more so given that it is quite probable that the IP right holder would countersue, for infringement of his right, which would certainly lie within the jurisdiction of the Tribunal. There would then be a danger of multiple proceedings before different forums. 6. Section 46(3) of the TM Ordinance provides as follows: "Nothing in his Ordinance shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or services as services provided by another person, or the remedies in' respect thereof". Thus, the action of passing off lies, as before, in the realm of forts and is not an infringement of the IM Ordinance. A suit for passing off pending on the Original Side ought not therefore to be transferred to the Tribunal, since its jurisdiction in terms of Section 18(1) is specifically limited to "infringement of intellectual property laws". The difficulty however is that invariably the action for passing off is not a "standalone" suit, in which the relief (for injunction, etc.) is sought only on this
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basis. It is invariably "combined! with an action for trademark infringement. Thus, it could be that relief is sought on the basis of trademark infringement with an additional or alternative basis on the ground of, passing off. In my view such a "combined" suit would not lie within the competence of the Tribunal and ought not therefore to be transferred. 7. The TM Ordinance also poses certain other difficulties in the present context. They are rather intricate in nature and may well not arise in any of the pending proceedings. I have not therefore discussed these difficulties in any detail. I merely mention this in case there is such a situation. which would have to be dealt with on a case to case basis. . . ." 9. Mr. Justice Munib Akhtar summarized his opinion in paragraph 9 of the said Note/Opinion as follows, which is reproduced to the extent of trademark matters only: "a) Pending appeals need not be transferred. b) Pending petitions (J.Ms). . . (a patent). . .(a design). . . c) Pending suits for infringements. . . (a patent). . . (a design). . . d) Suits being an action of passing off or in which relief sought on this basis along with an action for infringement of a registered trademark (whether in addition or in alternative) also ought not to be transferred. e) Subject to the above, suit pending on the Original Side regarding the IP Laws ought to be transferred. f) In case in any suit being transferred any party claims it ought not to be transferred (or even vice versa), the party should be asked to file appropriate application in the suit or seek other appropriate judicial remedy, in the High Court. The matter should then be dealt with on the basis of the judicial determination. 10. Following Justice Munib Akhtar's Note/Opinion, the High Court accepted all kinds of suits in respect of IP Laws filed in the High Court. None were rejected. However, when a judicial challenge was raised by way of an application filed by one of the parties regarding the transfer of the trademark suit from the High Court to the IP Tribunal, a learned Single Judge of the High Court returned the Plaint filed in a suit filed in the year 2014[1] while another learned Single Judge did the same in respect of a suit filed in the year 2019.[2] In another suit filed in 2000, this bench, on its own motion, transferred a trademark suit from the High Court to the IP Tribunal.[3] 11. As a starting point and as discussed herein, it is evident that Section 17(6) of IPOP, 2012, which pertains to the transfer of proceedings from the High Court to the IP Tribunal, came into force on 29.12.2015. Therefore, with respect to the ten (10) suits and proceedings filed in the High Court before 29.12.2015, all such matters appear liable to be transferred from the High Court to the IP Tribunal. Further, from 29.12.2015, once Section 17(6) came into force, the High Court continued to entertain and hear trademark matters, whereas such actions ought not to have been filed in the High Court. In such cases, the plaint filed in the trademark suit ought to have been returned by the High Court for filing in IP Tribunal as the High Court did not have jurisdiction. 12. Apart from the above-mentioned criterion regarding the date of filing of the trademark suit, there is yet another aspect which should be kept in mind at the time when the High Court is considering either returning the plaint or transferring the suit in a pending trademark matter, and, i.e. the subject matter of the trademarks suit. 13. As Justice Munib Akhtar's Note/Opinion (reproduced above) mentioned, IPOP, 2012, covered "IP Laws" only, therefore, any matter which would fall outside the scope of "IP Laws" was deemed not to be covered by IPOP, 2012. Thus, suits that referred to "Passing Off" in the prayer clause and other multiple reliefs, such as the declaration, permanent injunction, rectification, rendition of accounts, damages, etc., were not to be transferred as per Justice Munib Akhtar's Note/Opinion. It may not be out of place to mention that Justice Munib Akhtar's Note/Opinion is neither a judicial order nor a judgment and has no binding force as it is a simplictor office note/opinion. There was no judicial
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determination on whether the subject of "Passing Off" was beyond the ambit of IPOP, 2012 until the Judgement of the Supreme Court of Pakistan in the case of Muhammad Multazam Raza v. Muhammad Ayub Khan, 2022 SCMR 979 in paragraph 12 of the judgment, the apex Court observed: "It may also be relevant to note that what is described as a passing off action may either be a passing off action simplicitor or an action of infringement of trade mark coupled with passing off. Where the case of passing off action is based on infringement of trade mark, such suit shall necessarily require determination of the question whether there had been any infringement of the trade mark and where infringement of trade mark is alleged the suit must, in view of sections 17, 18 and 39 of the IPO Act, 2012, be instituted before the tribunal notwithstanding that the allegations in the suit were coupled with the allegation of passing off." 14. The Supreme Court clarified that IPOP, 2012 includes a "Passing Off" action. 15. Yet another development took place in August 2023, with the enactment of the Trade Marks (Amendment) Act, 2023 that has further diluted the Note/Opinion of Justice Munib Akhtar. The new law replaced references to "the District Court" with "the High Court" in the Trademarks Ordinance, 2001. Appendix "A" of this Judgment gives a tabular comparative analysis of these amendments. It may be noted that the new Section 117 of the Trademarks Ordinacne, 2001 which deals with suits for infringement to be instituted before an IP Tribunal, mandates that no suit for infringement of a trademark or otherwise relating to any right in a trademark shall be instituted in any Court except an IP Tribunal having jurisdiction to try the suit. The old Section 117 stands duly amended by the Trademarks (Amendment), Act 2023, and appears to close the door to any future filing of suits for infringement before the High Court. It is also pertinent to mention here that the word "infringement" under the trademarks law has a definite meaning. In contrast, reference to "otherwise relating to any right in a trademark", may relate to such rights as those specified under sections 67(3) [unfair competition], 68 [misleading and comparative advertising],[4] 90 [acts of agent or representatives], etc. of the Trademarks Ordinance, 2001. Thus, a suit for infringement and enforcement of all such rights will be made before the IP Tribunal. Therefore, on this account of the Trademarks (Amendment), Act 2023, Justice Munib Akhtar's Note/Opinion and the current practice of the High Court require updating. 16. Notwithstanding paragraph 15 above, it is also apparent that the Legislature, enacting the Trademarks (Amendment), Act 2023, has not entirely removed references to the High Court from the Trademarks Ordinance, 2001. To this end, the amended Section 116 of the Trademarks Ordinance, 2001, provides an option in some instances to apply to the High Court where any suit or proceeding concerning the trademark is pending. Such action may be invoked under Section 73(4) [an application for revocation], Section 80(4) [an application for declaration of invalidity], Section 96(2) [an application for rectification], etc. In all such instances, an action in the High Court will be maintainable. 17. In view of the above, the contentions of the learned Counsels for the Plaintiffs/Applicants that following the Trade Marks (Amendment) Act, 2023, the trademarks suits should be retained and continue to proceed in the High Court is not entirely accurate. As discussed above, there are several moving parts, and each particular case must be examined in light of the law and on its own facts. Suffice to say that suits for infringement currently pending in the High Court and filed prior to 29.12.2015 may be transferred to the IP Tribunal forthwith (Category "A"), whereas trademarks suits filed after 29.12.2015, currently pending in the High Court, the Plaint in such suits must be returned (Category "B"). Finally, in cases involving a Suit connected with a J. Misc. Application, the High Court may retain jurisdiction and proceed with the matter. 18. The learned Plaintiffs Counsel's contention that if the trademark suit is valued such that the High Court has pecuniary jurisdiction, has no legs to stand. First, IPOP, 2012, is silent on pecuniary
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jurisdiction. There is no express reference to "pecuniary jurisdiction" in respect of a civil suit. For example, the Financial Institutions (Recovery of Finance) Ordinance of 2001 prescribed a pecuniary jurisdiction of the Banking Court. There is no such pecuniary threshold for either the High Court or the IP Tribunal mentioned in IPOP, 2012 and the Trademarks Ordinance, 2001. The only reference to the IP Tribunal under IPOP, 2012, is territorial, as in Sections 16(4) and 17(4), but not pecuniary. 19. Section 6 of the Trademarks Ordinance 2001 states that the provisions of this Ordinance shall be in addition to and not in derogation of any other law for the time being in force. Further, section 39 of IPOP, 2012 states that the provisions of IPOP, 2012 shall have effect notwithstanding anything inconsistent therewith contained in any other law for the time being in force. Thus the provisions of IPOP, 2012 will trump the provisions of TM Ordinance, 2001. 20. In view of the above reasons, the six (6) Category "A" suits, namely, (i) Suit No.1161 of 2004, (ii) Suit No.226 of 2004, (iii) Suit No. 08/2005, (iv) Suit No.1058 of 2006, (v) Suit No.584 of 2010 and (vi) Suit No.763 of 2010 filed by the Plaintiffs are hereby transferred to and will be heard and disposed of by the Tribunal established under Section 16 of the IPOP Act, 2012. The parties will appear before the learned Tribunal on 14.02.2024, which will then proceed with the matter in accordance with law. 21. With regard to Category "B" Suits, the Plaints filed in the two suits, (i) Suit No.2232/2016 and (ii) Suit No.2679/2016 are returned to the Plaintiffs to enable them to avail the jurisdiction of the IP Tribunal. 22. As regards Category "C", it is ordered that Suit No.200 of 2020, along with J.M 34 of 2020 will proceed in the High Court of Sindh at Karachi in its normal course as these matters relate to Revocation/Removal/Cancellation of trademarks. 23. The Office is directed to transmit a copy of this Order to the concerned officer of the Intellectual Property Tribunal of Sindh at Karachi and retain a copy of the pleadings at the time of returning the Plaint to the Plaintiffs.
Annexure "A" Trademark Ordinance,…
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