KARACHI: The Directorate of Intellectual Property Rights filed a number of petitions against Federation of Pakistan through Secretary M/o Law & Justice, Government of Pakistan and other private respondents including Stafford-Miller Ireland Ltd, M/s. ZNS Auto Corporation M/s Al-Jannat Traders and others.
An interesting question of law was posed in these petitions with regard to the competing jurisdictions of the Intellectual Property Tribunal (“IP Tribunal”) established under Section 18 of the Intellectual Property Organization of Pakistan Act, 2012 viz-a viz a matter pertaining to import of goods under the Customs Act, 1969 which has its own hierarchy of IPR adjudication under Section 15 recently more elaborated through the enforcement of Intellectual Property Rights Rules notified through SRO 170(I)/2017 (“SRO 170”), as well as which, in terms of Section 194 prescribes its own Customs Appellate Tribunal (“Customs Tribunal”), whose judgment is to be followed by the Customs authorities?
A per brief facts of the case when a consignment of goods comprising toothpastes was imported, upon acquiring knowledge thereof, the right holders (Petitioners in C.P Nos.D-8477 and D-8478 of 2019) approached the IP Tribunal by filing a suit bearing No.3 of 2019 alleging that such import was infringing their Intellectual Property Rights (IPRs) in SENSODYNE trademark and thereafter obtained an injunctive relief vide Tribunal‟s order dated 23.01.2019 to the extent of restraining the private defendants from using, exporting, importing, marketing, selling, distributing, supplying, trading and/or offering for sale the plaintiffs trademarked SENSODYNE goods. The official defendants (i.e., Customs Authorities) were also directed to forfeit and seize the consignments and not to permit release thereof. Such an order was duly communicated to the Authorities, which through Directorate of IPR (Petitioner in C.P No.D-533 of 2020), detained those goods under Rule 686 of the Customs Rules 2001. 3. Being aggrieved, the importer challenged such detention, which led to an Order-in-Appeal No.2261 of 2019 dated 18.11.2019 passed in favour of the importer mandating the IPR Directorate to release the consignment, and thereafter a decision also followed from the Customs Tribunal to release the goods. Being posed with divergent orders, the Directorate itself has approached this Court seeking clarification as to whose orders are to be adhered to i.e. whether the order of the IP Tribunal or that of the Customs Authorities or the Customs Tribunal should be complied with.
The counsel for rival side argued that there was consensus as to the contention that the specialist Tribunal created under the Intellectual Property laws i.e. IP Tribunal that actually enjoys the status of a Civil Court under Section 17 of the Intellectual Property Organization of Pakistan Act, 2012 as a specialized forum to adjudicate upon matters pertaining to IPR, and being a superior forum in judicial hierarchy, as any order or judgment of the IP Tribunal has more juristic value than that of any order passed by the Department in the departmental hierarchy, or even by the Customs Appellate Tribunal in an IPR matters. Mr. G.M Bhutto, Assistant Attorney General also subscribed to the above view. 5. Heard the counsel and perused the material available on record. 6. To answer the moot question posed in the opening paragraph, examining the relevant provisions of the laws would greatly help. Whilst Article 212 of the Constitution of the Islamic Republic of Pakistan 1973, empowers legislature to establish Administrative Courts and Tribunals, however that power is only restricted to the creation of Administrative Courts and Tribunals to exercise exclusive jurisdiction in respect of (a) matters relating to the terms and conditions of persons who are or have been in the service of Pakistan, including disciplinary matters, (b) matters relating to claims arising from tortious acts of Government, or any person in the service of Pakistan, or of any local or other authority empowered by law to levy any tax or cess and any servant of such authority acting in the discharge of his duties as such servant, and (c) matters relating to the acquisition, administration and disposal of any property which is deemed to be enemy property under any law1. This 1 Interestingly, through the creation of Service Tribunal under the Service Tribunals’ Act, 1973 (LXX of 1973) at Federal level and, Section 3 of the Sindh Service Tribunals Act, 1973 (Sindh ACT XV of 1973) service tribunals have been established at the Federal/Provincial levels, however no legislation has been made either at Federal or at -4- clearly excludes constitutional competency to create IP or Customs Tribunals, hence these were accordingly given birth by the parent statutes. Section 194 of the Customs Act 1969 aims to sets up an appellate tribunal to be called the “Customs Appellate Tribunal”, through the following language: – 194. Appellate Tribunal.- (1) The Federal Government shall constitute an Appellate Tribunal to be called the Customs Appellate Tribunal consisting of as many judicial and technical members as it thinks fit to exercise the powers and discharge the functions conferred on the Appellate Tribunal by this Act.
During arguments it was stated that while describing powers of the IP Tribunal under section 17, the law gives absolute monopoly to the said Tribunal by holding that no court other than the IP Tribunal shall have or exercise jurisdiction in respect of any matter to which the jurisdiction of the (IP) Tribunal extends under the Act, and as to jurisdiction of such a Tribunal, Section 18 carves in the stone that “all suits and other civil proceedings regarding infringement of intellectual property laws shall be instituted and tried in the Tribunal and notwithstanding anything contained in any other law for the time being in force, the Tribunal shall have exclusive jurisdiction to try any offence under intellectual property laws”, where “Intellectual Property Laws” are defined to mean the Trade Marks Ordinance, 2001 (XIX of 2001), the Copyright Ordinance, 1962 (XXXIV of 1962), the Patents Ordinance, 2000 (LXI of 2000), the Registered Designs Ordinance, 2000 (XLV of 2000), the Registered Layout-Designs of Integrated Circuits Ordinance, 2000 (XLIX of 2000) and Sections 478, 479, 480, 481, 482, 483, 485, 486, 487, 488 and 489 of Pakistan Penal Code (XLV of 1860).
In the given circumstances where, under international obligations as well as for restructuring the matters pertaining to intellectual property laws and more specifically to comply with the Special 301 proceedings under Section 182 of the United States Trade Act of 1974, Intellectual Property Organization of Pakistan Act, 2012 was enacted which inter alia created the Intellectual Property Tribunals through Section 16, and where under Section 17(4) such a Tribunal enjoys exclusivity of jurisdiction with regards IP disputes, and where other foras have been specifically barred to hear matters pertaining to intellectual property laws except the IP Tribunal itself, and where under Section 18, all suits and other civil proceedings relating to the infringement of intellectual property rights are mandated to be instituted and tried by the IP Tribunal, and where under Section 19 final judgment or orders of the Tribunal can only be heard by a High Court in an Appeal; and to the contrary where the adjudicating authorities under the Customs Act, 1969 at best have the power of detaining the goods under Rule 686 and where the judgments of the Customs Appellate Tribunal are only challenged on the point of law under section 196 of the Customs Act, 1969, we are of the considered view that doctrine of comity, and application of the Solange method dictates that trade mark infringement dispute at hand is exclusively adjudi-ciable within the jurisdictional competence of the IP Tribunal, whose verdict would prevail upon any order or proceedings adjudicated under the competing jurisdiction of the Customs Tribunal or any matter decided by the customs authorities within the ambit of the Customs Act, 1969 pertaining to intellectual property laws.
We therefore allow these petitions by directing the Directorate of IPR Customs to disregard departmental original, as well as appellate orders or even Customs Appellate Tribunal‟s orders/Judgment in the presence of any contradictory order(s) or judgment(s) passed by the IP Tribunal, unless there are orders passed by any appellate forum or a Court made available to it which prevents performance of the acts mandated by any order or judgment of the IP Tribunal.