IN THE SUPREME COURT OF PAKISTAN
(Appellate Jurisdiction)
PRESENT
Mr. Justice Maqbool Baqar
Mr. Justice Sayyed Mazahar Ali Akbar Naqvi
(,Fgj b 7
CIVIL PETITION NO. 3795 OF 2021
(Against The judgment doted 26.02.202 I of the
slamabod High Courl Islamabad possed h
P40 No. 57 of 2020)
Muhammad Multazom Roza
Petitioner
Versus
Muhammad Ayub Khan and others 
Respondents
For the petitioner
For the Respondents
Date of Hearing
Mr. Atnan Karim Kundi, ASC
Syed Rifaqat Hussain Shah, AOR.
Mr. Zia ir Rehman Tojik, ASC
Mr. M. Shout Jcinjua, AOR.
08.11.2021
ORDER
Mapbool Bapar, J. Through the impugned judgment dated
26.02.2021, a learned Judge of the Islamabad High Court has dismissed
the petitioner's FAQ against the order passed by the Intellectual
Property Tribunal ('the tribunal"), whereby the tribunal returned the
petilioner's plaint in Suit No.] of 2020, filed against the infringement of a
registered trademark Ranchers", for perpetual injunction restraining
the defendants from using the said trademark, as trade name of
respondent No.3, and for a preliminary decree of Rs.10 million for
causing loss, injury and damage to the goodwill and reputation of the
registered trademark of the petitioner and for rendition of accounts by
the respondent for the profits wrongfully mode by them from the
unlawful use of Ranchers without the consent of the petitioner, and
for a decree for payment of the amount that may be found due upon
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taking accounts under the preliminary decree, as being not
maintainable before the tribunal.
2. It was averred that the petitioner and respondent No.]
entered into a partnership agreement to conduct business of
promoting, developing and managing international franchises. A
partnership firm was thus formed and registered by the name of Zakori
International ("Zakori International"). Zakori international is currently
operating two successful brands in Pakistan namely "Mr. COD" and
RANCHERS". "RANCHERS', being an indigenous brand of Zakori
International, the trademark "Ranchers" has been registered under the
Trade Mark Ordinance 2001 ("the Ordinance 2001 t), in the joint name
of the partners, being the petitioner and respondent No.1. It is further
stated that under and in terms of a franchise agreement dated
13.10.2015, Zakori International granted to MIs Royal Manor a limited
license and franchise for operating a 'Ranchers" Restaurant in Sector
1-8 (Markaz), Islamabad. However the respondent No.1, without the
consent of the petitioner, entered, on behalf of Zakari International, into
a tripartite Joint Venture Agreement ("JVA") with MIs Royal Manor, and
one Afnan Shareef, the Respondent No.2, whereby Royal Manor
agreed to take respondent No.2, as its joint venture partner in respect
of the franchise restaurants operated by it under the name and style of
"Ranchers", whereas Zakori International in terms of the said JVA
purportedly undertook to grant master franchising rights regarding
"Ranchers" to respondent No.2. The petitioner contended that Zakori
International could not have participated in the aforesaid JVA without
the consent of the petitioner. It was further contended that by having
agreed to extend to respondent No.2, the right of master franchising
"Ranchers" unilaterally, and without the consent of the petitioner, the
respondent No.2 has clearly infringed the registered trade mark, jointly
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owned by the petitioner and respondent No.1, against the clear
restriction imposed by sub-section (5) of section 24 of the Ordinance
2001. In addition to the above, according to the petitioner, respondent
Nos.] and 2, have incorporated a Private Limited Company by the
name of 'Ranchers Cafe (Pvt.) Ltd, the respondent No.3, mainly for
the some business as is being conducted by Zakori International under
its trade mark 'Ranchers". It was contended that the use of the trade
mark/name, 'Ranchers", by respondent No.3 company, will create an
impression and lead to a belief that the entity is not different from,
"Ranchers" jointly owned by the petitioner and respondent No.], and
such would "amount to passing off the trade mark registered in the
name of the Zokori International".
3.
However as noted above, the tribunal through its order
dated 1] .3.2020 returned the plaint under Order VII Rule 10 CPC, on the
grounds that since the trade mark has not been physically used by
respondent No.2 in the course of trade, the suit is not maintainable
within the meaning of section 46(1) and (2) of the Ordinance 2001 and
that since the dispute is between the respondent No.], as co-owners of
a trade mark, any violation of section 24(5) read with section 69 of the
Ordinance 2001 cannot be agitated before the tribunal.
4.
We have heard the learned counsel and examined the
relevant laws.
5.
The Intellectual Property Tribunal, has been established
under section 16 of the Intellectual Property Organization at Pakistan
Act, 2012 ('the IPO Act 2012'). In terms of section 18 of the IPO Act,
2012, all suits and other civil proceedings regarding infringement of
intellectual property laws are to be instituted in and tried by the tribunal.
The said section further provides that notwithstanding anything
contained in any other law the tribunal shall have exclusive jurisdiction
W
to try any offence under the intellectual property laws. In terms of
section 2(h), read with Schedule to the IPO Act 2012, the Ordinance
2001, falls within the definition of intellectual property laws. Whereas
sub-section (4) of section 17 of the IPO Act 2012, provides, that subject
to sub-section (5) of the said section, no court other than the tribunal
shall have or exercise any jurisdiction with respect to any matter to
which the jurisdiction of the tribunal extends under the said Act. (for the
sake of clarity it may be mentioned that sub-section (5) of the section
77 simply provides that the provisions of sub-section (4) shotl not affect
any proceedings pending before such court immediately before
coming into force of the said Act). It may also be relevant to note here
that in terms of section 39 of the IFO Act 2012, the provisions of the said
Act shall have effect notwithstanding anything inconsistent therewith
contained in any other law.
6. The first grievance of the petitioner that emerges from the
plain reading of the plaint, and as noted earlier, is that though the
petitioner and respondent No.] are the co-owners of the registered
trade mark 'Ranchers" and the partnership agreement between the
two does not authorize any of them to grant a license to the use of the
said trade mark, or assign or charge each other's share therein, and
exactly to the some effect is the restriction placed by sub-section (5) of
section 24 of the Ordinance 2001, however the respondent No.)
without the petitioner's consent granted master franchise rights in
respect of the subject trade mark to respondent No.2, which is clearly
violative of the above provision and thus in terms of sub-section (6) of
section 24 of the said Ordinance which dearly entitles the aggrieved
co-proprietor to initiate infringement proceedings in such an
eventuality, the petitioner was/is fully competent to institute the
proceedings as he did.
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7. The other grievance as set out in the plaint is that the
respondent No.] and respondent No.2. along with two others have
incorporated a private limited company by the name and style of
"Ranchers Café (P4.) Ltd.", the respondent No.3. It is contended that
the name of the company conspicuously bearing the name
'Ranchers' whose principal line of business is the some as that being
conducted by the Zakori International under the trade mark/name
Ranchers' would lead a consumer into believing that the respondent
No.3 company is associated with the Ranchers brand owned by
Zakori International, and thus using the name "Ranchers' as above is a
clear infringement of the trade mark 'Ranchers" as
described/explained by section 40 of the Ordinance 2001, in terms
whereof a person infringes a registered trade mark if he uses, in the
course of trade, a mark which is identical with or deceitfully similar
thereto, in relation to similar goods or services for which the some is
registered, whereas sub section (5) of section 40 holds unauthorized use
of a registered trade mark as one's own trade name or port of his trade
name, as an infringement of the trade mark, and this is what exactly is
being complained of by the petitioner.
8. In view of the foregoing, there remains no ambiguity that
both kinds of acts of commission complained of by the petitioner before
the tribunal have in clear terms been described by section 24 and 40 of
the Ordinance 2001, respectively, as infringement of registered
trademark and as provided therein are actionable thereunder. The
petitioner's case thus undoubtedly falls within the exclusive jurisdictional
ambit of the tribunal as discussed and laid down by section 18, 17 and
39 of the lPO Act 2012.
9. Although, as noted above, the respondents' acts and
conduct as alleged by the petitioner clearly falls under section 24 and
N 
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40 offhe Ordinance 2001 respectively, but for the sake of clarity we may
observe here that 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 services1which are manifested through preparatory steps which
show an objective commitment to using the trade mark, whereas in the
instant case the respondents, in addition to having violated specific
provisions of Ordinance 2001 have also gone beyond the preparatory
steps. We wonder as to where from the question of so called physical
use arose.
10. Keeping in view certain observations found in the
judgments of the fora below, we feel that a clear exposition with regard
to the concept of passing off would be beneficial, and it would be
appropriate to reproduce the concept as enunciated in Harvard's Law
Review, Volume 68 (1954-1955) on the subject of development in the
law - Trade Marks and Unfair Competition, as follows:-
Basically a trade mark owner receives protection
against use of his mark by another in such away as is likely
to lead consumers to associate the other's goods with the
trade mark owner. This protection against trade mark
infringement, that is, against sale of another's goods as
those of the trade mark owner by use of the owner's
mark, may be described as protection against passing
off',,.
The observation, as contained at monograph 1348 at page 765 at
Haisbury's the Laws of England. Volume 27 (1913 Edition) in the
following words, may also be relevant here:-
The right to bring an action for passing off is founded on
the some principles as those relating to actions for the
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misuse of trade names and, in fact, actions for misuse of
the trade names of goods are only particular instances of
such actions.
H. Whereas though in the instant case, the petitioner
contended that use of "Ranchers', as part of the company's name
'amount to passing oft the trade mark registered in the name of the
Zakori International", however, as noted earlier, has in fact alleged
violation of specific restriction imposed by two separate provisions of
Ordinance 2001, which are clearly based on infringement of petitioner's
trade mark, within the meaning of the said two provisions.
12.
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 section 17,
18 and 39 of the IFO Act 2012, be instituted before the tribunal
notwithstanding that the allegations in the suit were coupled with the
allegation of passing off.
13.
In view of the forgoing we convert this petition into an
appeal and allow the same, set-aside the impugned judgment and
remand the case to the tribunal to proceed therewith in accordance
with law.
Islamabad, the 
81h November 2021
(Acniir Sb.)
APPROVED FOR REPORTING'