MUHAMMAD MULTAZAM RAZA vs MUHAMMAD AYUB KHAN Ss — 2022 SCMR 979 SUPREME-COURT

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MUHAMMAD MULTAZAM RAZA VS MUHAMMAD AYUB KHAN Ss. 17(4), 18 & 39---Trade Marks Ordinance (XIX of 2001), Ss. 24(5) & 40---Civil Procedure Code (V of 1908). O. VII, R. 10---Co-ownership of trademark---Infringement of registered trademark---Passing off---Intellectual Property Tribunal ('the Tribunal'), jurisdiction of---One of the co-owners (respondent) of the registered trademark "Ranchers", without consent of the other co-owner (petitioner) entered into a tripartite Joint Venture Agreement (JVA) and allowed use of the registered trademark "Ranchers"---Petitioner contended that his partnership firm with the respondent could not have participated in the said JVA without the consent of the petitioner; that by having agreed to extend to a third party, the right of master franchising "Ranchers" unilaterally, and without the consent of the petitioner, the third party had clearly infringed the registered trade mark jointly owned by the petitioner and respondent, against the clear restriction imposed by subsection (5) of section 24 of the Trade Marks Ordinance, 2001 ('the Ordinance 2001"); that respondent and the third party had incorporated a Private Limited Company by the name of "Ranchers Cafe (Pvt.) Ltd.", mainly for the same business as was being conducted by partnership of petitioner and respondent under its trade mark "Ranchers"; that use of the trade mark/name, "Ranchers", by the said company, would create an impression and lead to a belief that the entity was not different from, "Ranchers" jointly owned by the petitioner and respondent, and such would "amount to passing off the trade mark registered in the name of the partnership---Tribunal returned the plaint under Order VII, Rule 10, C.P.C., on the grounds that since the trade mark had not been physically used by the third party in the course of trade, the suit was not maintainable within the meaning of section 46(1) & (2) of the Ordinance 2001, and that since the dispute was between the respondent and petitioner, as co-owners of a trade mark, any violation of section 24(5) read with section 69 of the Ordinance 2001 could not be agitated before the Tribunal---Held, that respondent without the petitioner's consent granted master franchise rights in respect of the subject trade mark to the third party, which was clearly violative of section 24(5) of the Ordinance 2001 and clearly entitled the aggrieved co-proprietor i.e. the petitioner to initiate infringement proceedings---Furthermore use of the name "Ranchers CafÃ© (Pvt.) Ltd." by the company incorporated by the respondent and a third party was clear infringement of the trade mark "Ranchers" as described/explained by section 40 of the Ordinance 2001---Both acts complained of by the petitioner before the Tribunal had in clear terms been described by sections 24 & 40 of the Ordinance 2001, respectively, as infringement of registered trademark and as provided therein were actionable thereunder---Petitioner's case thus undoubtedly fell within the exclusive jurisdictional ambit of the Tribunal as laid down by sections 17, 18 & 39 of the Intellectual Property Organization of Pakistan Act, 2012 ('IPO Act 2012')---Petition for leave to appeal was converted into appeal and allowed, and the case was remanded to the Tribunal to proceed in accordance with law. Head NotesCase Description Citation Name: 2022 SCMR 979 SUPREME-COURTBookmark this Case MUHAMMAD MULTAZAM RAZA VS MUHAMMAD AYUB KHAN Ss. 17(4) & 18---Trade Marks Ordinance (XIX of 2001), S. 40---Infringement of registered trademark---Passing off---Intellectual Property Tribunal ('the Tribunal'), jurisdiction of---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 & 39 of the Intellectual Property Organization of Pakistan Act, 2012, be instituted before the Tribunal notwithstanding that the allegations in the suit were coupled with the allegation of passing off. Head NotesCase Description Citation Name: 2022 SCMR 979 SUPREME-COURTBookmark this Case MUHAMMAD MULTAZAM RAZA VS MUHAMMAD AYUB KHAN Ss. 24 & 40---Infringement of registered trademark---Passing off---Scope---Use of trade mark can also be attributed to the person who has got to the stage where he can be seen objectively to have committed himself to use the mark that is to carrying his intension to use the mark into effect---Use of trade mark can therefore be demonstrated also through the intention to offer the goods and services and/or services which are manifested through preparatory steps which show an objective commitment to using the trade mark. Head NotesCase Description

MUHAMMAD MULTAZAM RAZA vs MUHAMMAD AYUB KHAN Ss — 2022 SCMR 979 SUPREME-COURT

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