Background
The appellant owns the registered mark TABIAT for rice. After his legal notice in February 2020, the Directorate of IPR Enforcement (South) of Pakistan Customs seized 20 consignments of rice in bags bearing TABIAT that an exporter was sending to the UAE. The exporter said it had permission from the owner of a TABIAT mark registered in Iran.
The appellant sued before the Intellectual Property Tribunal, which refused his application for an interim injunction. He appealed to the High Court.
Questions before the court
- Whether the Tribunal was right to treat the date of first use and the date of registration as contradictory.
- Whether the marks were deceptively similar.
- Whether S.R.O. 170(I)/2017 (Customs Rules, 2001, rules 678 to 686) applies to exports, and whether Customs could act against export consignments.
- Whether applying a registered mark to goods made only for export is use, and infringement, in Pakistan.
Decision
The High Court set aside the Tribunal’s order, allowed the appeal and granted the appellant’s application for an interim injunction.
The court’s reasoning
- Use of a mark can begin before it is registered, so the Tribunal was wrong to treat the dates as contradictory.
- TABIAT is the operative part of the mark and the goods (rice) are identical. Differences in colour scheme and livery did not matter, because they were not claimed as part of the mark.
- Rule 678 limits S.R.O. 170(I)/2017 to imported goods, so rule 680 did not apply to these exports: “SRO 170(I)/2017 was misapplied in the instant case.”
- Customs nonetheless has power under sections 15 to 17 of the Customs Act, 1969 to act against goods being exported, and the IPR Enforcement Directorate was created under S.R.O. 768(I)/2014. The seizure order had not been challenged, so the Tribunal’s task was to decide infringement, not to review the customs procedure.
- Applying a registered mark to goods for export is use of the mark in Pakistan under sections 5(2) and 40 of the Trade Marks Ordinance, 2001 (Pioneer Cement Ltd. v. Fecto Cement Ltd., 2013 CLD 201). The court also drew on UK, Indian, Australian and Singapore authorities, including Burberry Ltd. v. Megastar Shipping Pte Ltd. [2019] SGCA 01, that infringement does not require sale in the local market.
What this means in practice
Provisions and authorities
Laws and rules
- Trade Marks Ordinance, 2001: sections 5(2) and 40
- Customs Act, 1969: sections 3CC, 3E and 15 to 17
- Customs Rules, 2001: rules 678, 680 and 682 (S.R.O. 170(I)/2017)
- S.R.O. 768(I)/2014
- Intellectual Property Organization of Pakistan Act, 2012: section 19
Cases referred to
- Fazl-e-Rabbi v. Federation of Pakistan, 2020 PTD 281
- Pioneer Cement Ltd. v. Fecto Cement Ltd., 2013 CLD 201
- Burberry Ltd. v. Megastar Shipping Pte Ltd. [2019] SGCA 01
- British Sugar PLC v. James Robertson & Sons [1996] RPC 281
Source
Read the judgment on the High Court of Sindh case law portal ↗
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
Famous Brands (Pvt.) Ltd. v. Samsonite IP Holdings S.à r.l.
A former distributor’s appeal was dismissed, so the order to remove SAMSONITE signage stayed in place. The court confirmed that a well-known mark is protected under section 86 of the Trade Marks Ordinance, 2001 even without registration or sales in Pakistan. Sales of genuine goods were not stopped.
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