Intellectual property refers to creation of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce and in general sense, it is used for a set of intangible assets owned and legally protected by a company from outside use or implementation without consent.
In Pakistan, intellectual property rights have been protected and are regulated under various laws which include the Intellectual Property Organization of Pakistan Act, 2012 (the “IPO Act”), The Trade Marks Ordinance, 2001, the Copyright Ordinance, 1962, the Patents Ordinance, 2000, The Registered Designs Ordinance, 2000, The Registered Layout-Designs of Integrated Circuits Ordinance, 2000 and Sections 478, 479, 480, 481, 482, 483, 485, 486, 487, 488 and 489 of Pakistan Penal Code, 1860.
The term ‘Intellectual Property’ has been defined under Section 2(g) of the IPO Act which reads as follows:
“Intellectual Property includes a trademark, patent, industrial design, layout-design
(topographies) of integrated circuits, copyright and related rights and all other ancillary rights”.
Practice of infringing a trademark under the garb of copyrights deprecated. Copyright laws aimed to protect original works of art or creative articulation, may be of a trademark, in any tangible medium of expression, whereas, trademark is associated with the goods for the purpose of indicating or so to indicate a connection in the course of trade between the goods and some person having the rights, either as a proprietor or as registered user, to use or apply the trade mark on his goods.
Trade Marks Act protects the proprietor from using the trade mark on his goods and prevents other competitors from using and applying identical and/or confusingly similar trademarks on their goods of similar class or description.
No prohibition existed under the Trade Marks Act for the competitors/traders from making, producing or marketing same or similar goods and the only restriction placed is on the use and/or adoption of same or deceptively and/or confusingly similar trademarks.
Trader may make or market or sell the same or similar category of goods falling in the same class but under a different brand name or trademark that clearly distinguishes its goods from the same category or class of goods.
Copyright material can not be allowed to be used as an alternative and/or in substitution for the trade mark unless such copyright in the artistic work is also registered under the Trade Marks Act.
Practice of using copyright as a substitute for the trade mark is deprecated by the courts in Pakistan and defence of an infringer of trade mark resting on registration of copyright has been sternly rejected in a large number of cases.
In order to understand the Intellectual Property Valuation (IPV), the concept of valuation needs to be understood first. Primarily valuation has been defined as, “the action of estimating or fixing the monetary or other value of something, especially by a professional evaluator.”
In fact, valuation of IP is an act of estimating or fixing the monetary and other values of intellectual property rights (such as patents, copyright, design, trademark, trade secret and other recognized intangible rights).
The World Intellectual Property Organization (WIPO) in its IP panorama Module 11, defined IPV as, “a process to determine the monetary value of subject IP”.
Powers of Criminal Court: Tribunal created under Intellectual Property Organization of Pakistan Act, 2012 has exclusive jurisdiction to try offences with respect to intellectual property laws. Section 17 of Intellectual Property Organization of Pakistan Act, 2012 provided that Tribunal has, in exercise of its criminal jurisdiction, power to try offences made punishable under intellectual property Organization of Pakistan Act, 2012 and for the said purpose, can exercise same powers as are vested in the Court of Sessions under Cr.P.C. Subsection (4) of S. 17 provided that no Court, other than Tribunal, has jurisdiction with respect to any matter to which the jurisdiction of the Tribunal extended under intellectual property Organization of Pakistan
Act, 2012. Tribunal has been conferred with the power to try an offence.
Exclusivity of jurisdiction is provided in subsection (2) of S. 18, Intellectual Property Organization of Pakistan Act, 2012. Section 13(xix) & (xx) of the Act provided powers and functions of intellectual property Organization whereunder it had the exclusive power to initiate and conduct inquiries/investigation/proceedings relating to offences arising out of Copyright laws.
Powers of Civil Court – Intellectual Property Tribunal has all the powers vested in a civil court under Civil Procedure Code, 1908. The Tribunal has to follow the procedure laid down in Civil Procedure Code, 1908 if no procedure is provided in Intellectual Property Organization of Pakistan Act, 2012. Intellectual Property Tribunal while exercising powers under Civil Procedure Code, 1908 can pass all orders that a civil court could pass.
Registration of trade mark was not restricted to one word, but it may comprise composite and/or composition of common to use and/or invented words, coupled with numerical, device, diagram, picture and or any image etc. and/or any combination thereof.
Certain trade marks carried one or more prominent features that clearly distinguished goods of one proprietor from their competitors dealing in similar goods. Such distinguishing feature in parlance of intellectual property was termed as “dominant feature”.
The court while proceeding with the matters related to Copyrights must have to consider the moral rights. It is mentioned in Whale on ‘Copyright Fifth Edition that authors cannot assign their moral rights which would be inconsistent with their general nature. The moral rights and assignment thereof has been held by author and reference to the books will be advantageous for the instant controversy:
Whale on Copyright by Jeremy Philips Robyn Durie and Ian Karet, Fifth Edition (62):
Authors cannot assign their moral rights which would be inconsistent with their general nature, the law provides that they may waive them or give consent to acts which would otherwise amount to an Infringement of such rights.
Moral rights may be waived of by an instrument in writing signed by the person giving up the right. Waivers can relate to specific works, or be general. They may also relate to future works, be conditional or unconditional or revocable. If a waiver is made in favour of the owner or prospective owner of copyright in the relevant work, it would be presumed to extend to any licensees or assignees in the absence of contrary intention. The operation of the general law of contract or estoppel is expressly reserved, giving very limited protection to the moral right holder. He must either assert his rights regularly, or as required by the Act, or effectively waive such rights.
Moral rights are transmissible on death either by a Will or to the individual to whom copyright in a work passes. In the absence of either a Will or some other form of disposition to a literary executor, the author’s personal representative is entitled to exercise the rights.
Unlike the various forms of property which, after the owner’s death, vest in personal representatives and thereafter in beneficiaries or transferees, these rights cannot be transferred or divested, even, for example, by personal representatives after administration of the estate is complete.
Where the right passes to the person entitled to the copyright, the right does not become attached to the copyright and passes with it on a subsequent assignment. It remains vested in that person until a subsequent transmission under relevant law is made. It is unclear whether production of a grant is necessary to prove a person’s title to these rights in an action but it is suggested that it is.
Where the right passes to the person specifically appointed by testamentary disposition, the right apparently vests in such appointees immediately on death and not for example, in his executors where he dies testate or in the Public Trustee where he dies intestate.
Where the right passes with the copyright, the position is more complicated. On the death of the copyright owner, the copyright will vest first in his executors or in the Public Trustee and then in his administrators, depending on whether he died testate or in estate.
The copyright will then be subject to the usual trusts in the administration of the owner’s estate and liable to be sold along with his other assets to pay his debts and testamentary expenses.
Only if it is not sold in the course of administration will the copyright pass to the person beneficially entitled to it, whether under the will or under the intestacy rules, by assent or assignment, as the case may be.
Presumably the intention is that the right passes to whoever, incidents of administration apart, is or would have been beneficially entitled to the copyright.
It is not very uncommon that unscrupulous traders or the manufacturers tend to confuse and or mislead consumers of goods of known or popular brands by taking shield and protection under various other laws governing intellectual property rights namely Patent, Merchandise, Designs, TradeMarks and or Copyrights.
There is a growing tendency of using such terms interchangeably or treating such terms synonymously. It may be observed that there may be some similarities and overlapping in intent and purport of such rights, but rights of a proprietor/owner in each namely trademark, merchandise mark, Patent and Design and or Copyrights govern different category of intellectual properties and recognize host of different and special rights, obligations and remedies in their respective domain.
There is a growing tendency of misappropriating rights in one type of intellectual property by seeking protection under different statutes governing altogether different intellectual property.
Most abused are rights in trademarks under the garb of copyrights, later aims to protect original works of art or creative articulation may be of a trade mark in any tangible medium of expression, whereas, trademarks is associated with the goods for the purpose of indicating or so to indicate a connection in the course of trade between the goods and some person having the rights, either as a proprietor or as registered user, to use or apply the trade mark on his goods.