What are the causes of counterfeiting and piracy in Pakistan?
The cause could lie in the fact that the enforcement of IP has recently received much attention, which led to the 2017 notification to amend the Custom Rules. There are other domains like GI where the law is still under development.
Which are the goods that most often face counterfeiting and piracy in Pakistan?
The most common instances are those that are counted as luxury brand items. Also, as per the US Special 301 Report, books and CDs are accredited as constituting of one of the most pirated copies in comparison to other goods.
Does Pakistan have a well-established framework for the enforcement of Intellectual Property Rights (IPRs)?
What are the specific laws/orders/rules laid down in Pakistan for the enforcement of Intellectual Property Rights?
The provisions of enforcement are dealt within the respective IP Acts, which include:-
The Trademark Ordinance, 2001 and Rules, 2004, the Penal Code, 1860, the Code of Criminal Procedure, 1886, and the Drugs Act, 1976 (in relation todrugs/pharmaceuticals only).
The Patent Ordinance, 2000 and Rules, 2003
The Layout-Design Ordinance, 2000
The Copyright Ordinance, 1962 and Rules,1967
Apart from these, the Chapter XXVIII of the Customs Rules, 2001 deals with enforcement of IP.
What are the different types of IPRs protected by IPR enforcement in Pakistan?
The following types of IPRs are protected by the enforcement measures:
What are the general IPR enforcement obligations in Pakistan?
One has to establish the existence of his or her mark since the burden of proof lies on the enforcer. The certificate of registration is the most substantial proof; other unregistered marks can also give supportive evidences in favour of the owner’s mark.
What are the essential to-dos before an IP rights holder initiates the enforcement proceedings?
Devising a strategy in concurrence with the IP lawyer and Pakistani authority may serve good.
Is there any limitation period for filing an infringement action?
Which of the following IPR enforcement channels is/are available in Pakistan?
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
Are civil actions available for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in civil litigation?
Which of the following types of civil remedies is/are available in Pakistan?
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - No
D) Seizures - Yes
E) Destruction - Yes
Are there any other civil remedies available in Pakistan than the ones mentioned above? If yes, then kindly explain in brief.
Litigation cost, in addition to monetary compensation, account for profits (Anton Pillar Orders in accordance with Section 75, read with Order 39 Rule 7).
What is the approximate timeline of civil litigation related to IPR enforcement in Pakistan?
There is no fixed time frame for an infringement or dilution or related actions for cases being dealt at the trial court level, which as much depends on the individual case. A preliminary injunction takes approximately 02 to 06 months, whereas the finality of the lawsuit is attained within 02 to 03 years. The time frame for an appeal against an order against the preliminary or permanent injunction is not fixed, but may take around the same 02 to 03-year period.
What happens if an IP rights holder abuses the enforcement measures in civil litigation?
If an IP rights holder abuses the enforcement measures in civil litigation, a contempt of court proceeding may be initiated.
Are there any disadvantages of civil litigation in Pakistan? If yes, then kindly give 2-3 points?
Given the flexible period of litigation, lengthy trials may lead to irredeemable injustice due to loss of time, money, and effort.
Is criminal prosecution available in Pakistan for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in criminal prosecution?
Which is the responsible authority in Pakistan corresponding to the types of criminal remedies available? Also, mention the imprisonment term and the monetary fine.
A) Responsible Authority - District/High Court/IP Tribunal
B) Imprisonment Term – Maximum 03 years in case of copyright and trademark infringement, 02 years in matter of patent infringement, 02 years for infringement of layout-design
C) Monetary Fine – Maximum Pak Rupee 100,000/- in case of copyright and trademark, 50,000 in case of patent infringement, and 20,000 for infringement of layout-design
Are there any other criminal remedies available in Pakistan than the ones mentioned above? If yes, then kindly explain in brief.
What happens if an IP rights holder abuses the enforcement measures in criminal prosecution?
If an IP rights holder abuses the enforcement measures in criminal prosecution, a contempt of court proceeding may be initiated
Are there any disadvantages of criminal prosecution in Pakistan? If yes, then kindly give 2-3 points?
The punishment is not harsh enough.
Are there any alternative dispute resolution mechanisms which allow parties to resolve their dispute out of court?
An IP Tribunal has been set up in Islamabad, Karachi, and Lahore, which entertain all suits regarding IP.
Are border control measures (customs) available in Pakistan for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to the customs authority/department to support his claims of infringement against the opposing party/importer of counterfeit goods?
What are the remedies available under border control measures (customs) in Pakistan?
The following are the available remedies:-
Confiscation of goods
Payment of duty in respect of goods so lost or deficient shall be payable by the person-in-charge of the conveyance
Who must bear the costs of customs intervention during enforcement?
The rights holder whose rights have been infringed upon must bear the costs of customs intervention during enforcement.
What happens if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs?
Which are the best practices for enforcement of IPRs in Pakistan?
Civil and criminal proceedings are better since the ADR route is not well-practiced yet in Pakistan.
Are there any risks involved in the enforcement of IPRs in Pakistan? If yes, then kindly give 2-3 points.
There is a lot of uncertainty due to lack of awareness and no harsh punishments. The officials at the lower level do not account it as an important issue to be addressed.