01 / ANALYSIS
Overview of the Case
This Judicial Miscellaneous Application was filed under Sections 73 and 96 of the Trade Marks Ordinance, 2001, seeking the cancellation, rectification, and removal of a registered trademark. The court laid down the principle that interconnected trademark infringement suits and statutory rectification applications pending in the High Court may be retained and heard together to prevent conflicting judgments and multiplicity of proceedings.
02 / ANALYSIS
Brief Facts
Dawn Foods Inc., a corporation incorporated in Michigan, sought cancellation or rectification of the registration for the 'DAWN & DESIGN' trademark, registration No.233878 in Class 31, dated 16 March 2007. A related trademark suit, Suit No.703 of 2015, had earlier been transferred to the District Court. While the statutory trademark application remained before the Sindh High Court, the parties requested that the transferred suit be brought back so that both proceedings concerning the mark could be dealt with together.
03 / ANALYSIS
Questions of Law
- Which forum has jurisdiction over intellectual property disputes and connected statutory applications under the Trade Marks Ordinance, 2001?
- Can a trademark infringement suit transferred to a District Court be recalled to the High Court to be heard together with a connected rectification application?
04 / ANALYSIS
The Court's Answers
Which forum has jurisdiction over intellectual property disputes and connected statutory applications under the Trade Marks Ordinance, 2001?
Answer. Connected statutory trademark applications and related suits may, in the relevant transitional category, proceed together before the High Court.
“Category “C”–Cases involving statutory applications filed directly in the High Court under the Trade Marks Ordinance, 2001 (e.g., under Sections 73, 80, or 96) that are interconnected with pending suits; these may continue before the High Court to avoid conflicting decisions and multiplicity of proceedings.”
Can a trademark infringement suit transferred to a District Court be recalled to the High Court to be heard together with a connected rectification application?
Answer. Yes. The record of the transferred suit could be recalled for coordinated determination with the pending rectification application.
“In view of the judgment rendered by the Division Bench of this Court, wherein various Judicial Miscellaneous Applications and connected suits relating to trademark disputes were categorized and specific directions were issued regarding their placement and hearing in accordance with the respective categories determined therein, and since, as submitted by learned counsel for the parties, Suit No. 703 of 2015, which had earlier been transferred to the District Court pursuant to the Civil Courts (Amendment) Act, 2025, squarely falls within Category “C” as defined in…”
05 / ANALYSIS
Practical Relevance
Businesses litigating trademark rights should consider whether infringement, cancellation and rectification proceedings are connected, and verify the applicable forum under the amended trademark regime.