Civil Procedure of Trademark Enforcement in Pakistan: A Comparative Analysis with Malaysia and USA

Sohaib Mukhtar,Zinatul Ashiqin Zainol,Sufian Jusoh

doi:10.22158/jar.v3n2p95

Sohaib Mukhtar, Zinatul Ashiqin Zainol + Show 1 more

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https://doi.org/10.22158/jar.v3n2p95

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Abstract

<em>Civil procedure of trademark enforcement runs in Pakistan under Trade Marks Ordinance 2001, Code of Civil Procedure 1908 and Specific Relief Act 1877. Trademark is one of the components of Intellectual Property Law, it is a mark, name, sign, smell or a sound which distinguishes goods and services of one undertaking from goods and services of other undertakings. It is required to be distinctiveness and non-descriptive, it losses its distinctiveness when owner of registered trademark does not take prompt action against its infringement. The registered trademark owner may file civil suit against infringement of his registered trademark before the concerned District Court of Law for claiming damages and obtaining injunctions. The Trademark Registry works under Intellectual Property Organization of Pakistan (IPO-Pakistan) for registration and protection of trademarks in Pakistan. Similarly, Intellectual Property Corporation of Malaysia (MyIPO) is empowered agency of trademark registration and its protection in Malaysia. The United States Patent and Trademark Office (USPTO) is responsible for registration and protection of trademarks in United States of America (USA). Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) is the only International Treaty which contains exhaustive provisions on trademark enforcement includes civil procedure, administrative procedure, criminal procedure, provisional and border measures. Important civil procedure of trademark enforcement issues need to be clarified in trademark law of Pakistan includes trademark infringement, trademark dilution and rectification of trademark register. This article is comparative analysis of civil procedure of trademark enforcement in Pakistan, Malaysia and USA.</em>

Highlights

Civil procedure of trademark enforcement is required to be conducted in Pakistan under provisions of the Code of Civil Procedure 1908 and injunctions may be obtained under provisions of the Specific Relief Act 1877
There is a Trademark Trial and Appeal Board at United States Patent and Trademark Office (USPTO) in United States of America (USA) where an appeal against decision of the Registrar of trademark may be filed before adopting judicial procedure of trademark enforcement it is recommended that the Trademark Trial and Appeal Board should be formed at the Trademark Registry in Pakistan for saving time of the Court of Law and parties
Fair usage must be done in a way that trademark must not be used as trademark, usage is for description of goods or services and trademark must be used fairly in good faith (Section 115, United States Code, 1926; Beebe, 2006). These defenses of trademark infringement are recommended to be prescribed in trademark law of Pakistan for better civil procedure of trademark enforcement

Summary

Comparative Analysis with Malaysia and USA

Sohaib Mukhtar1*, Zinatul Ashiqin Zainol1 & Sufian Jusoh Faculty of Law, National University of Malaysia, Bangi, Malaysia 2 Institute of Malaysian and International Studies, National University of Malaysia, Bangi, Malaysia * Sohaib Mukhtar, Faculty of Law, National University of Malaysia, Bangi, Malaysia

Introduction

Conclusion and Recommendations

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