FC FRI-CHICKS vs AKHTER MEHMOOD
This matter concerns a criminal original petition filed by the petitioner seeking to initiate contempt of court proceedings against the respondent for allegedly violating an undertaking given in a previous order dated 01.06.2015. The petitioner alleged that the respondent breached an undertaking to restrict the use of his trademark to goods only, rather than services. The core legal question was whether the respondent's use of a registered trademark for services, despite it being registered only for goods, constituted contempt or a violation of law, and whether the respondent had indeed given such an undertaking. The Court held that no such undertaking was given by the respondent. Furthermore, the Court found that the bona fide use of an unregistered trademark, or the use of a registered trademark for services not specifically covered by the registration, is permissible provided it does not infringe upon the rights of third parties or violate existing laws. Consequently, the Court dismissed the petition with costs, establishing that in the absence of specific statutory prohibition or third-party infringement, such usage remains lawful.
- Can a registered trademark be used for services if it is only registered for goods?
- Is the bona fide use of an unregistered trademark restricted by law in the absence of third-party infringement?
- Does the use of a trademark for services not covered by its registration constitute contempt of court?
- Trade Marks Ordinance, 2001
ORDER
' MUHAMMAD FARRUKH IRFAN KHAN, J.---Through this criminal original, the petitioner has prayed for initiating contempt proceedings against the respondent for allegedly disobeying the order of this Court dated 01.06.2015 passed in F.A.O. No,29 of 2015.
2. Learned counsel for the petitioner submits that the respondent had given an undertaking before this Court which is recorded in its order dated 01.06.2015 passed in F.A.O. No,29 of 2015 that he will confine his business under his trademark (Mark-A) which is registered in respect of goods and not in relation to providing services. He further submits that as the trademark of the respondent is only registered for goods, he cannot use it ostensibly for restaurant services etc.
3. When quarried as to whether there is any prohibition under the Trade Marks Ordinance, 2001, or any Act or law which is applicable in Pakistan to prevent use of an unregistered trademark or a service mark, learned counsel cannot point out any such provision or law. The Trade Marks Ordinance, 2001 lays down provisions for registration of 'trademark' as well as 'service mark'. If an original owner of a trademark fails to register its trademark in relation to its services, he cannot be taken to task for that failure. The respondent is not infringing the trademark of the petitioner or the rights of any other person rather in the previous round of litigation in F.A.O. No,29/2015 it was the respondent who claimed infringement of his trademark by the petitioner. In that appeal, the petitioner was found at fault as such, he was directed to make changes in his trademark in order to prevent confusion and deception amongst the consumers/general public.
4. Be that as it may I find that no undertaking was given by the respondent before this Court on 01.06.2015 in F.A.O. No,29/2015 for not using its registered trademark in relation to services. The bona fide use of an unregistered trademark cannot be restricted in relation to a lawful business being conducted by a bona fide owner of the said business as long as the said trademark is not in conflict with the rights of a third party or against the provisions of any law in force at that time.
Similarly, a registered trademark can also be used, even though, it has not been registered in relation to corresponding or some other services as long as the use in relation to said services does not infringe the rights of a third party or is contrary to any law being in force in the country at that time. Learned counsel for the petitioner has miserably failed to bring out a case of contempt against the respondent. This criminal original is, therefore, dismissed with a cost of Rs,50,000/- (rupees fifty thousand only) to be deposited by the petitioner in the Dispensary of the Lahore High Court Bar Association, within one month from the date of this order, receipt whereof will be deposited with Deputy Registrar (Judicial) of this Court for placing on this file, otherwise it would be collected as arrears of land. Office will place this file in the Chamber on May 23, 2016 as a "compliance case".