Defence of Copyright Protection in Trademark Disputes

In the Supreme Court of Pakistan's decision in M/s Farooq Ghee & Oils Mills (Pvt) Ltd vs. Registrar of Trade Marks & Others (2015 SCMR 1230), the Court addressed critical issues related to trademark registration and the interplay between different forms of intellectual property rights, specifically trademarks and copyrights. This judgment provides important guidance on the protection of trademarks and the limitations of using copyrights as a shield against trademark infringement claims.

Background:

The petitioner, M/s Farooq Ghee & Oils Mills, sought to register the trademark "FAROOQ'S Hayat" for edible oils and related products under Class 29. This application was opposed by the respondent, International Foodstuff Company (IFFCO) of UAE, which had already applied for the registration of the trademark "HAYAT" in the same class. IFFCO’s application dated back to 1997, and they had been using the mark "HAYAT" in various jurisdictions, including Pakistan, since 1996.

IFFCO’s opposition to the petitioner’s trademark was based on their prior use and established goodwill associated with the "HAYAT" mark. The Registrar of Trademarks, after hearing both parties, favored IFFCO, leading to the dismissal of the petitioner’s application. The petitioner’s appeals against this decision were subsequently dismissed by the Sindh High Court, prompting the present appeal before the Supreme Court.

Key Issues:

Likelihood of Confusion and Deception: The central issue was whether the petitioner’s trademark "FAROOQ'S Hayat" was likely to cause confusion or deception among consumers, given the similarity to IFFCO’s "HAYAT" mark. The Supreme Court examined whether the addition of the prefix "FAROOQ'S" sufficiently distinguished the petitioner’s trademark from the respondent’s well-established "HAYAT" mark.

Use of Copyright as a Defense in Trademark Disputes: The petitioner argued that their artistic representation of the trademark "FAROOQ'S Hayat" had been registered under the Copyright Act, 1962, and therefore, they had a right to use this trademark despite the opposition. The Court needed to determine whether the copyright registration provided a valid defense against the claims of trademark infringement.

Court’s Analysis and Conclusion: The Supreme Court upheld the decisions of the Registrar of Trademarks and the Sindh High Court, emphasizing the importance of protecting established trademarks from misuse and ensuring that consumers are not misled. The Court’s analysis included the following key points:

Dominant Feature of Trademarks: The Court highlighted that in trademark law, the dominant feature of a mark plays a crucial role in determining the likelihood of confusion. In this case, "HAYAT" was identified as the dominant feature of IFFCO’s trademark. The addition of the prefix "FAROOQ'S" by the petitioner was deemed insufficient to differentiate the products in the minds of consumers. The Court noted that the use of a common or strikingly similar dominant feature is likely to cause confusion or deception, particularly when the goods are of a similar nature.

Application of Sections 8 and 10 of the Trade Marks Act, 1940: The Court applied Sections 8(a) and 10(1) of the Trade Marks Act, 1940, which prohibit the registration of trademarks that are likely to deceive or cause confusion. The Court found that the petitioner’s trademark "FAROOQ'S Hayat" fell within this prohibition, as it closely resembled IFFCO’s "HAYAT" mark, which had already been in use and had acquired distinctiveness in the market.

Inadmissibility of Copyright as a Substitute for Trademark Protection: The Court rejected the petitioner’s argument that copyright registration provided a valid basis for using the trademark. It clarified that copyright and trademark protections serve different purposes and are governed by distinct legal regimes. While copyright protects artistic works, it does not grant the right to use a mark that is confusingly similar to an established trademark. The Court emphasized that allowing such a defense would undermine the integrity of trademark law and could lead to consumer deception.

Protection of Established Goodwill: The judgment reaffirmed the principle that trademark law is designed to protect not only the rights of trademark owners but also consumers from being misled. The Court stressed the importance of safeguarding the goodwill that businesses build over time through their trademarks. It warned against allowing new entrants to the market to usurp the established goodwill of others by adopting deceptively similar trademarks.

Conclusion and Implications: The Supreme Court's decision in this case reinforces the strict standards applied in trademark registration and opposition proceedings in Pakistan. It highlights the importance of the dominant feature in trademark analysis and clarifies that copyright protection cannot be used as a shield against trademark infringement claims. The ruling serves as a crucial reminder for businesses to conduct thorough trademark searches and consider the potential for consumer confusion before adopting new trademarks.

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