Law: Intellectual Property Organization of Pakistan Act, 2012

Section: 1(3),2(h),17, 18,16,

Law: Trade Marks Ordinance, 2001

Section: 117,73(4)

ORDER 

These three (3) appeals arise out of impugned orders passed in two separate suits, namely, Suit No.2578/2014 (Muhammad Ali Barry v. Kaybee Snacks & Others) and Suit No.2058/2019 (MECJC v. Azam Autos & Another), instituted in the first instance jurisdiction (original side) of the High Court of Sindh at Karachi, and concern the judicial determination of two (2) trademark-related cases which were pending hearing in the High Court since the years 2014 and 2019, respectively, and were retained as per his lordship, Mr Justice Munib Akhtar, who as a Judge of the High Court of Sindh at Karachi (currently a sitting Judge of the Supreme Court of Pakistan) authored a Note/Opinion regarding the contours of transfer of such cases from the High Court of Sindh at Karachi to the Intellectual Property Tribunal established under Section 16 of the Intellectual Property Organization of Pakistan (“IPOP”) Act, 2012. Following the issuance of the Note/Opinion, the defendants in the respective two suits (respondent(s) in HCA No.264/2021 and HCA No.02/2022) challenged the maintainability of the two lis instituted in the High Court under the Trade Marks Ordinance (“TM Ordinance”), 2001, i.e. whether the suit ought to be transferred and/or its plaint is to be either returned or rejected, leading to the judicial determination of each lis. These three (3) appeals also involve impugned orders passed in the two suits by the same learned Single Judge on different hearing dates: Order dated 01.11.2021 in Suit No.2058/2019 and Order dated 14.12.2021 in Suit No.2578/2014. The learned Single Judge ordered the return of the plaint(s) in each of the two suits. Both impugned orders, although passed in two separate suits, are similar and are based on the interchangeably the same reason. Hence, this Common Judgment decides all three appeals.
2.    Turning to the first action, Mahle Engine Components Japan Corporation (“MECJC”) filed Suit No.2058/2019 against Azam Autos
 and another for declaration, permanent injunction, damages, rendition of account against the infringement of plaintiff’s registered trademark “IZUMI” and or its logo: i+O “i surrounded with circle” and/or from using the infringing mark “CJIZUMI” by the Defendant(s) and/or from unfair competition under the TM Ordinance, 2001 read with all enabling provisions of law. On 01.11.2021, the learned Single Judge passed orders returning the plaint to the Intellectual Property Tribunal (“IP Tribunal”). Aggrieved by the said order dated 01.11.2021 in Suit No.2058/2019, MECJC has preferred an appeal,
i.e. HCA No.264/2021.

3.    Plaintiff, Muhammad Ali Barry s/o Zafar Ahmed Kalia (“MAB”) filed Suit No.2578/2014 against Kaybee Snacks and seven (7) others for groundless threats, declaration, injunction and damages under Section 52 of the TM Ordinance, 2001. On 14.12.2021, the learned Single Judge passed an impugned order returning the plaint. Aggrieved by the Order dated 14.12.2021, MAB preferred an appeal to the said Order, viz. HCA No.02/2022.