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

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.


Introduction
Civil procedure of trademark enforcement is required to be conducted called dilution by blurring and infringement occurs when it harms reputation of the registered trademark which is called dilution by tarnishment. These concepts should be added in the trademark law of Pakistan.
There is a need of many specialized Intellectual Property Tribunals where specialized judges on Intellectual Property would be appointed which would help to protect trademark rights in a better way in Pakistan and which would save time and money of the people as they would be required to give decisions within 90 days. Intended use and nature of goods and services would not become obstacle in registration of trademark.

Literature Review
Publication would take place before or after registration and if party fails to maintain usage for continuous 3 years, registration would be cancelled. Trademark owner may assign trademark with or without transferring his whole business with it. Term of protection for registered trademark at least 7 years and renewable indefinitely after expiration of initial time. TRIPS Agreement states about civil procedure of trademark enforcement that member states of WTO must provide opportunity of civil proceedings to right holder and defendant has right of notice before legal proceedings which must be made within a suitable time and contains adequate details based on claim. Personal appearances of parties must not be obligatory, and they may be represented through independent lawyers and present evidences. Trade of imported goods are required to be protected by preventing infringement of IP and infringer is required to pay damages to right holder as compensation for injury caused due to his infringement and he may also be required to pay expenses of attorney's fee and profits generated through trademark infringement. Infringed goods may be disposed of or destroyed without causing injury to right holder if it is not contrary to provisions of the Constitution of member state (Articles 42 to 48, TRIPS Agreement 1994).

Trademark Infringement
Trademark infringement is unauthorized usage of registered trademark on goods or services at market place for trade and that infringement causes likelihood of confusion to consumer. Trademark infringement occurs when one party uses trademark which is similar to trademark owned by other party in relation to identical goods or services. Trademark owner can file a civil suit before the Court against infringement of his registered trademark. Trademark owner cannot bring infringement proceedings for claiming damages if his trademark is not registered. Instead, the owner of trademark may be able to commence proceedings under common law for passing off, misrepresentation or under a law prohibiting unfair business practices for claiming preventive relief (Corgill, 1996;McChesney, 1992  Apart from trademark infringement proceedings by registered trademark owner, common law marks and well known marks are also protected without registration under International Convention in

Trademark Dilution
Trademark dilution involves unauthorized use of another's trademark on goods or services that do not compete with and have little connection with registered trademark. Trademark dilution is basis of trademark infringement. Trademark dilution gives the owner of famous trademark right to prevent others from using his famous trademark that would lessens its uniqueness and it is dealt under civil procedure of trademark enforcement (Butters, 2007;Klieger, 1996).
Trademark dilution is classified into blurring and tarnishing. Blurring impairs distinctiveness of famous trademark and tarnishing harms reputation of famous trademark (Martino, 1996).
Although trademark dilution originated from USA, it has been accepted in Pakistan. Section 2 (xiii) of  willful impairment or harm is occurred on famous trademark (Section 1125, United States Code, 1926Jacobs, 2004).
Trademark dilution concept exhaustively prescribed in USA under Lanham Trademark Act 1946.
Classification of trademark dilution, conditions to establish trademark dilution by the Court and exceptions to trademark dilution are required to be prescribed in trademark law of Pakistan for betterment of civil procedure of trademark enforcement.

Entry in Trademark Register
Entry in trademark register is attached with civil procedure of trademark enforcement as the owner of trademark may apply before the Court for removal of wrong entry of infringed trademark from the register. Aggrieved party is required to apply before the Registrar of trademark for rectification of the register but if Registrar is biased and acting in bad faith in favor of trademark infringer and adding his entry in trademark register, the owner may adopt civil procedure before the Court for rectification of trademark register.
In Pakistan, rectification application is required to be made before with procedure provided by law, deviation therefrom may result in refusal to exercise jurisdiction or exercise jurisdiction not vesting in the Court. It is duty of the Court to interpret law as it stands, yet it is well recognized principle of interpretation that statute must be interpreted in such a manner as would make it workable. It is cardinal principle of interpretation that redundancy must not be attributed to legislature.
Each word used in statute is to be read as integral part thereof, carrying meaning if in circumstances not impracticable which is assigned to it in ordinary parlance. Where general obligation is created by statute and specific statutory remedy is provided, statutory remedy is only remedy. It is also well settled principle of interpretation that where legislature has a special law laid down conditions for exercising powers by the Court. The Court is not justified in disregarding conditions and holding reference to a general law that it has powers beyond those given by special law ( 45, 46, 47, Trade Marks Act, 1976;Stanberry, 1991 to certify goods or services, (ii) has failed to observe provisions of deposited rules, or (iii) registration of trademark is no longer in public advantage and variation is required to be made in public advantage (Section 56, Trade Marks Act, 1976;Sangal, 1999 If relief of an alteration or rectification of the register is granted, the Registrar of trademark is required to appear before the Court. The Registrar may also be directed to submit similar nature cases presented before him and that can be taken as evidences in civil proceedings before the Court (Sections 61, 62, 63, Trade Marks Act, 1976;Chong, 1998 40, 41, Lanham Trademark Act, 1946;Halliday, 1950).

Conclusion and Recommendations
The owner of registered trademark may file civil suit against infringement of his registered trademark before