PAKISTAN: THE CHANGING LANDSCAPE OF IP PROTECTION AND ENFORCEMENT
Brief Overview of IP Law Practice in 2020
There is never a dull moment when it comes to Pakistan. The current economic and political climate of Pakistan may be going through a rough patch lately, nevertheless it carries the foundation for an optimistic market for foreign investment as emerging trends suggest a significant increase in foreign direct investment in various sectors in 2019.
With the new government and a new generation of leaders taking charge of the country post the election of 2018, Pakistan’s economy has shown resilience in the midst of the recurring currents of global financial crisis and has performed better than many countries in the South Asian region which creates a positive climate for investment and economic development. The current government has taken certain important initiatives in carrying out recent and future reforms towards ease of doing business in Pakistan which is likely to attract more international businesses and foreign investment opportunities in Pakistan.
It is natural that with increased foreign direct investment coming into Pakistan, a rise in intellectual property rights issues is expected and Pakistan has in place an IP rights protection and enforcement regime. However, Pakistan’s IP rights protection regime is still in its development phases and steps are being taken for improvement of the same.
In the past few years, there have been certain positive developments in the field of IP rights protection such as the transformation of the Intellectual Property Organization of Pakistan (IPOP) into a single management unit and then in 2016 integrating under IPOP the offices of Trademarks Registry, Patents and Designs Controller, and Copyrights Registry, through enactment of the Intellectual Property Organization of Pakistan Act of 2012 (IPOPA’12).
Moreover, IPOPA’12 also laid down the foundations for the establishment of specialized IP Tribunals to hear cases specifically relating to violation of IP laws in Pakistan including infringement cases and granted it all powers that were previously vested in a District Court or High Court. This is a welcome step not only for IP practitioners but also for right holders as this provides for specialized judges having the requisite knowledge of IP laws to effectively and efficiently hear and dispose of cases. However, although the law is very much clear on the jurisdiction of these Tribunals, in practice, since the IP Tribunals are fairly new, there are some jurisdictional issues associated with initiating certain actions before them, hence it requires some time for the procedural aspects of the law to evolve on those issues by way of superior court decisions on such matters and new case law for a coherent understanding of the jurisdiction of the IP Tribunals.
Another very important development concerning IPRs in Pakistan is the establishment of a department within Pakistan Customs, namely, the Directorate of Customs IPR Enforcement (IPRE Directorate). This department, formed through an executive order (SRO 170(I) of 2017) of the federal government, under the Customs Act of 1969 and Customs Rules of 2001, is devoted to overseeing and curbing imports of counterfeit articles into Pakistan.
This is a positive measure in strengthening the enforcement mechanisms of the IP border enforcement regime of Pakistan as the IPRE Directorate now has in place a system for right holders to record their rights such as trademarks, copyrights, patents, and designs following a specific procedure. Once this recordation of rights is done, the IPRE Directorate monitors all imports to ensure that the imported commodities do not infringe upon the protected IP rights, thereby providing effective protection to right holders. The IPRE Directorate also has vested prerogative powers to take action against and temporarily suspend clearance of any obvious counterfeit imports even in the absence of a formal complaint from the right holders to the IPRE Directorate.
In January 2019, the IPRE Directorate conducted its historic first ever destruction of counterfeit imports, some of which it had seized on the request of right holders while seizing others using its prerogative powers, containing different counterfeit articles including cosmetics, electronic products and watches. Thus, the establishment of the IPRE Directorate is a welcome development for investors, IP lawyers, brand owners and right holders alike.
Finally, Pakistan is expected to sign the Madrid Agreement and Protocol (Madrid System) for the international registration of trademarks and the Patent Cooperation Treaty (PCT) for the international registration of patents by 2020. This will significantly transform the market of IP law practice both for practitioners and right holders, as the role of domestic IP lawyers at the initial filing stage of the applications will be reduced for applicants from countries that are part of both the treaties as clients could benefit from the single filing system at the International Bureau at WIPO, saving both filing costs and time. The role of IP lawyers would then be more relevant and critical where an objection is raised by the Trade Marks Registry or the Patent Office against the application or if the application is opposed by a third party.
Becoming part of the Madrid System and the PCT would serve as a positive and crucial step forward for Pakistan’s IP rights protection regime as the Madrid System is the top choice for international trademark registration among export-oriented brand owners. The Madrid System makes it convenient for right holders to manage and protect their IP worldwide which means that right holders who are reluctant to invest in their IP protection in Pakistan due to budgetary and time limitations would be more willing to do so. This would mean more business and investment flowing into Pakistan and certainly be beneficial for Pakistan’s economy as well as for IP practitioners.
Pakistan’s IPR regime, as stated above, is still in its developmental stages; however with the recent reforms, legislation and expected developments in the future, it is certain that Pakistan is headed towards the right direction for strengthening its IP rights protection and enforcement regime. This promises a good market and opportunities for investors, brand owners, food chains and other stakeholders to invest in the Pakistani market whilst being confident that their valued IP is protected and enforced adequately.
Contributor: Faisal Daudpota (Senior Partner at: Daudpota International)