Background
Samsonite IP Holdings and its affiliate sued Famous Brands, their former distributor in Pakistan, for a declaration, a permanent injunction and damages. After the distribution relationship ended, Famous Brands continued to sell Samsonite products and kept Samsonite signage at its outlets in Karachi.
The single judge dismissed Famous Brands’ applications under Order VII, Rules 10 and 11 of the Code of Civil Procedure, and granted an interim injunction only to the extent of requiring removal of the signboard displaying the Samsonite mark. Famous Brands appealed.
Questions before the court
- Whether applications under Order VII, Rules 10 and 11 could be filed together.
- Whether the court at Karachi had territorial jurisdiction.
- Whether the suit should be stayed because of two suits pending in Lahore (section 10 of the Code of Civil Procedure).
- Whether the plaintiffs could sue without a registered mark of their own in Pakistan.
- Whether the Samsonite marks are well known under section 86 of the Trade Marks Ordinance, 2001, and whether the interim injunction was justified.
Decision
The Division Bench dismissed the appeal. The interim order, which required Famous Brands to remove the Samsonite signage but did not stop it from selling the goods, remained in force.
The court’s reasoning
- Filing applications under Rules 10 and 11 together was not, by itself, a valid reason to dismiss them, but the dismissal was upheld on other grounds. The court added: “By moving an application under order VII rule 11 a litigant does not surrender to the jurisdiction of the Court.”
- A cause of action arose in Karachi, because Famous Brands continued to sell the products and display the mark there after the relationship ended.
- The court did not decide the section 10 point, because no application had been filed.
- Under section 86, whether a mark is well known does not depend on registration, actual sales or goodwill in Pakistan. There was no serious challenge to the reputation of the Samsonite marks in Pakistan.
- Acquiescence under section 81 did not apply: the earlier distribution relationship showed use with permission, not acquiescence. Famous Brands had also undertaken before the single judge not to use Samsonite signage.
- An appeal court will not interfere with a discretionary interim order unless the discretion was exercised arbitrarily or perversely, or settled principles were ignored (Roomi Enterprises (Pvt.) Ltd. v. Stafford Miller Ltd., 2005 CLD 1805).
What this means in practice
Provisions and authorities
Laws and rules
- Trade Marks Ordinance, 2001: sections 81 and 86
- Code of Civil Procedure, 1908: section 10; Order VII, Rules 10 and 11; Order XXXIX, Rules 1 and 2
- Paris Convention for the Protection of Industrial Property
Cases referred to
- Roomi Enterprises (Pvt.) Ltd. v. Stafford Miller Ltd., 2005 CLD 1805
Source
Read the judgment on the High Court of Sindh case law portal ↗
The published copy gives the hearing dates (21 January and 4 March 2021) but not the date of the judgment.
This summary is general information, not legal advice. It may not reflect later appeals or changes in the law. Read the full judgment and take advice on your own facts. Checked on 25 October 2026.
Related
POWER SONIC trade mark dispute
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