SADIQ & SUHARWARDY vs ISMAIL INDUSTRIES LIMITED Ss — 2025 CLD 1029 KARACHI-HIGH-COURT-SINDH

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SADIQ & SUHARWARDY VS ISMAIL INDUSTRIES LIMITED Ss.2(h), 16, 17, 18 & 39---Trade Marks Ordinance (XIX of 2001), Ss.6 & 117---Trade Marks (Amendment) Act (LVIII of 2023)---Trademark suits---Scope and adjudicating forum---Intellectual Property Tribunal---Jurisdiction---Pendency of cases at High Court filed before and after enactment of Intellectual Property Organization of Pakistan Act, 2012---Transfer of cases from High Court to Intellectual Property Tribunal---Exception---High Court's jurisdiction in revocation / rectification cases---The subject-matter of the present nine suits and one misc. application concerned the judicial determination of future proceedings of trademark matters, which had been filed between the years 2005 and 2020, pending hearing at various stages before the High Court---Intellectual Property Organization of Pakistan ("IPOP") Act, 2012 was enacted on 06.12.2012, S. 2(h) of which defined "Intellectual Property Laws" as the laws specified in the schedule to the Act which include (i) The Trade Marks Ordinance, 2001, (ii) The Copyright Ordinance, 1962; (iii) The Patents Ordinance, 2000, (iv) The Registered Designs Ordinance, 2000, (v) The Registered Layout-Designs of Integrated Circuits Ordinance, 2000 and Ss. 478, 479, 480, 481, 482, 483, 485, 486, 487, 488 and 489 of Pakistan Penal Code, 1860---Question for determination before the High Court was as to "Whether, after the Intellectual Property Organization of Pakistan Act, 2012 (the "Act, 2012") and the Trade Marks (Amendment) Act, 2023, the High Court could still hear trademark suits, including infringement, passing off, or cancellation cases filed before or after 29.12.2015, or if all such cases had to be sent to the Intellectual Property Tribunal"?---Held: According to S. 17(1) of the Act, 2012, matters pertaining to Intellectual Property Laws pending in any Court were to be transferred to the Intellectual Property Tribunal under S.16 of the Act, 2012---However, the IP Tribunal in Sindh was not established until 02.12.2014---Thereafter on 29.12.2015, S. 15 as well as subsections (2), (3), (8), (9), (10), (11) and (12) of S. 16 and Ss. 17, 18 & 19 of the said Act came into force with immediate effect---Moreover, where a suit included passing off along with trademark infringement, such action also fell within the scope of Act, 2012, and such suit was also to be instituted before the IP Tribunal---The Supreme Court in the case reported as 2022 SCMR 979 clarified that suits combining passing off with infringement were not beyond the IP Tribunal's jurisdiction---The old S. 117 of Trade Marks Ordinance, 2001 stood duly amended by the Trade Marks (Amendment) Act, 2023, and closed the door to any future filing of suits for infringement before the High Court---A suit for infringement and enforcement of all rights attached thereto was to be made before the IP Tribunal---However, there was an option in some instances to apply to the High Court where any suit or proceeding concerning the trademark was pending involving an application for revocation, an application for declaration of invalidity, an application for rectification, etc---In all such instances, an action in the High Court would be maintainable---The six (6) Category "A" suits were transferred to the Tribunal established under S. 16 of the Act, 2012---With regard to Category "B" Suits, the plaints were returned to the plaintiffs to enable them to avail the jurisdiction of the IP Tribunal---As regards Category "C", it was ordered that suit along with J.M 34 of 2020 was to proceed in the High Court of Sindh at Karachi in its normal course as these matters related to revocation/removal/cancellation of trademarks.

SADIQ & SUHARWARDY vs ISMAIL INDUSTRIES LIMITED Ss — 2025 CLD 1029 KARACHI-HIGH-COURT-SINDH

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