P L D 1993 Karachi 766 (PLP)

This appeal under section 15 of Ordinance NoX of 1980 is directed against the order, dated 7-1-1993, passed by a learned Single Judge of this Court, whereby, he dismissed the appellant's application moved under Order N, rules I and 2, C.P.C. in Suit No.753 of 1992. The facts relevant for decision of this appeal are as follows:

Appellant Zakauddin filed above suit against the respondents for injunction, damages, accounts, and other various reliefs. The case of appellant is that he started business of manufacturing and selling of tooth powder, Cosmetic, Shampoo, and other allied goods in the year 1985% On 19th September, 1985, he applied f6r Registration of Trade Mark 'Bio-Amla' (word) under No.87611 in Class 3 in respect of Cosmetics., Said Mark was accepted by the Trade Mark Registry and was advertised in the Trade Mark General No.464 of June, 1989. He had also' filed an application for Registration of Copy Right work (portrait) in respect of artistic work label of Bio-Amla before the competent authorities and accordingly it was registered. He is also the registered Proprietor of Trade Mark 'FORVIL' under No.81341 in Class No.3, in respect of Cosmetics. It is averred in the plaint that appellant's Shampoo is sold in Pakistan since 1985, under the Trade Mark Bio-Amla and under Copy Right work (portrait) i.e. label, design, lay-out, colour scheme, and get up in particular style in Black Colour bottle. The back side of the bottle contains a label in which registered Trade Mark 'FORVIV is shown with other details. It is alleged that appellant Shampoo, under said trade mark has acquired great popularity, reputation and goodwill and since 1985 he made sale of about Rs.10 crore and spent about Rs. one crore on publicity and sale promotion through T.V., Radio, and other Medias of advertisement. According to the plaint, recently the appellant came to know that respondent No.1, who is his real brother, in order to earn on his (appellant) goodwill and reputation has started manufacturing, selling, and offering for sale his spurious Shampoo, under the Brand name 'Super Amla Shamj;Tco' with the same colour, scheme, design, lay-out, get up, style, essential features, and other minor details which are identical and confusingly similar to that of appellant above Trade Mark and also having the same type of bottle. The respondent No.1 is also using registered Trade Mark 'FORVII! of appellant as 'FARWILL as to inevitably lead to confusion, deception, and passing off. According to the appellant, the respondent No.2 is a distributor and the respondent No3 is a shopkeeper of the respondent No.l. Besides, the respondent No.1 is using Firm name as 'Bio Cosmetic' International Paris France on the label, which is similar to appellant's Mark. Alongwith the plaint, the appellant filed an Application (C.M.A. No-7689/92) under Order 39, Rules 1 and 2, C.P.C., for restraining the respondents from manufacturing, selling, offering for sale, distributing, advertising, or otherwise dealing with their product under the infringing Trade Mark Bio-Amla 'FORVIL' and Copy Right artistic work (label) and passing off their goods as that of the appellant. The case of respondent No.1 is that the (word) new 'FARWILL: being used by him on the back side of the label has no visual or phonetic resemblance whatsoever with that of appellant registered Mark 'FORVIL' and likewise there is no similarity on other points. It is said that words Amla and Shampoo are commonly used for articles of the same class, while the word 'Bio' used by appellant had no resemblance with the word 'SUPER' used for respondent products. It is alleged that the main feature of respondents' label is (portrait) of two women, while on the label of the appellant there is one woman and one man. About colour, the respondent has claimed that appellant 'has no exclusive right to use any particular colour and mere similarity of colour in the two labels is of no, legal consequence. The maintainability of suit was also challenged on certain legal pleas. Learned trial Court in the impugned order after referring the two ra-w-s (1) Jamia Industries Lid, v. Caltex Oil (Pak.) TAd. and another reported Ln P! D 1984 SC 8. (2) Burney Industrial Commercial Co. Lhi '- M/s- Rehman, Matti Works reported in PLD 19RI Kr. 357 and quoting certain observations from these two cases in the impugned order reached the following conclusion:

"Accordingly, prima facie there is likelihood of an average purchaser buying articles with ordinary caution, mistaking the product with the defendant's label as that of the plaintiff. Somewhat similar is the position with the other label on the back side of the bottle. Both the labels are in black colour with the printed material about the quality/character of the product being in white. Although there is difference in the word 'Forvil' on the plaintiff's label and 'New Farwill' on the defendant's, the difference in the pronunciation and sound of the keyword 'Forvil' and 'Farwill' is imperceptible. There is no serious dispute that the plaintiff had been marketing its product much before the defendant No.1 started making its product in about September, 1985 '-' Learned trial Judge, however, declined to grant temporary injunction mainly on the ground that both the labels of the appellants have the words "From the House of Forvil Division of Forvil Pomade Co. Paris and France" and since the Shampoo in question was being prepared in Pakistan and there being no connection whatsoever between appellant and the said French concern, the appellant was guilty of unfair trade practices and, as such, was not entitled to discretionary relief. Learned trial Court also observed that the position of the respondent No.1 was not better in any manner as he, on his label, too unauthorisedly mentioned "Bio-Cosmetic International Paris France". it is settled law that a plaintiff, under Order 39, Rules 1 and 2 of C.P.C., must establish that he has a prima facie case, that the balance of convenience is in his favour, and that he will suffer irreparable injury if injunction is not granted. It is contended on behalf of appellant that learned trial Court failed to appreciate documentary evidence on record and as such, reached. wrong conclusion. Learned counsel also argued that learned trial Court having arrived at the conclusion that, prima facie, case was made out in all fairness should have granted temporary injunction in favour of the appellant. In support of above contentions, learned counsel for the appellant cited (1) Rexona Proprietary Ltd. v. Majid Soap Works, reported in PLD 1956 Sindh 1, (2) M/s. Manoj Plastic India v. M/s. Bhola Plastic Industries reported in AIR 1984 Delhi 441, (3) M/s. Hindustan Pencils Pvt. Ltd. v. M/s. India Stationary Products Co. and another reported in AIR 1990 Delhi

19. In the case of Rexona Proprietary Ltd., it was held that "in case of infringement of trade mark obviously there would be resemblances and difference, and the question must be decided by contrasting the striking resemblances with the striking differences, and where the conclusion is that one is intended to pass for the other, there is a case for an interim injunction". In the case of M/s. Manoj Plastic India both plaintiffs and defendants were dealing in identical mirrors under same Trade Mark 'TONY. Evidence revealed that plaintiffs were prior users of said mirrors and had been dealing in them regularly before the defendants. It was held that balance of convenience, was in favour of plaintiffs and temporary injunction was granted. In the case of M/s. Hindustan Pencils Pvt. Ltd. it was held that trade mark used by defendants was similar to that of registered mark of plaintiffs. Under the circumstances, the interim injunction was granted in favour of the plaintiffs. As against this, Mr. Khawaja Mansoor learned counsel for the respondents Nos. I and 2 ' argued that since the appellant has not come to Court with clean hand and in spite of the fact that he had no concern whatsoever with "House of Forvil Division of Forvil Pomade Co., Paris France," yet, he mentioned so on his labels and thereby indulged in the unfair trade practices of passing off his product as that of a foreign company, as such, he is not entitled to the discretionary relief. He also argued that so far the nark of appellant has not yet been registered, therefore on this ground also emporary injunction cannot be granted in favour of the appellant. In support A these contentions, he cited (1) Sen and another v. E.S. Oakes reported in UR 1920 Cal. 1. (2) Abdul Wahid v. Haji Abdur Rahim and another reported n PLD 1973 SC

104. In the case of Sen, it was held that "where a person acquires a trade reputation, of whatever nature, by misrepresentation, the Courts win not grant him an injunction or other relief for the purpose of protecting the reputation so acquired". (2) In the case of Abdul Wahid, the scope of sections 8 and 10 .of made Marks Act, 1940 was examined and it was held that names, comprising of two syllables, used as trade marks and both names having same words as suffix or second syllable, in such a case mark of distinction should always be the first syllable or first portion of the names. On the basis of above, dictum learned counsel for respondents' argued that the label of appellant is 'Bio Amla' and that of respondents 'Super Amla' and since first syllable of them is different the appellant is not entitled to claim any relief against the respondents. Under the Trade Marks Act, a mark shall be deemed to be deceptively similar to another mark if it has close resemblance and is enough for causing confusion in the minds of purchasers. In the instant case, the mark/label of the appellant on black bottle, bearing words Bio-Amla Shampoo in Golden Colour on Top under Green Sticker in the Centre and red. rectangular base at the bottom of one side of bottle and word 'Forvil' Bio Amla Shampoo, containing directions for use on the other side of bottle, have virtually been adopted by the respondents with words/mark 'New Farwill', under same colour, design and get up to pass off their goods as that of the appellant. There is a mark degree of phonetic, similarity between the two marks. Under section 14 of the Trade Marks- Act, the proprietorship of a trade mark can be claimed either by its registration or by reasons of its use. The appellant in September, 1985, as pointed earlier, had applied for the registration of Trade Mark Bio-Amla (word) and said mark was advertised by the Trade Mark Registry. Said mark is being continuously, openly, and extensively used by the appellant since the date mentioned earlier. It being so, the appellant is legally entitled to claim the proprietorship of said mark and the objection of the respondents that said mark has not yet been registered in favour of appellant is of no legal consequence so far these proceedings are concerned. The respondents as mentioned in para. 9 of the counter-affidavit of Muhammad Zahid, have claimed that they are manufacturing and advertising their products since last 18 months only. Under the circumstances, we are of the view that a strong prima facie case is made out in favour of the appellant, as the respondents have virtually copied the label of the appellant with the sole intention to pass off their goods as that of the appellant. The balance of P convenience is also in favour of the appellant as he will suffer irreparable loss if the injunction is not granted. As regards the plea of the respondents of unfair trade practices by the appellant, it is noted that the mischief done by the respondent No.1 is greater in dimension than of the appellant. If both the parties have done similar type of mischief then the party first approaching the Court shall not necessarily be penalised. In such a situation, the discretion ought to be exercised in favour of the party, whose case on merits, is on better footing. In this case, the appellant has an. established business since long, but used the name of a French Company on his libel. The respondent No.1 also not only unauthorisedly used the name of a French company, but also has taken calculated steps to promote his business at the costs of goodwill and reputation of the appellant. I in consequence, the appeal is allowed with no order as to costs and the impugned order is set aside. Temporary injunction, as prayed, is granted against the respondents till final disposal of the suit. Before parting with the matter, we feel it necessary to direct the appellant to immediately delete the words 'From the House of Foivil, Division of Forvil' Pemade Co. Paris-France" from his Abel/mark, in a way that a notice to this effect shall also be published in two leading newspapers of Karachi and- the copies of clipping be submitted before learned trial Court within 15 days from today. In case of non compliance of this direction, the appeal would be deemed to have been dismissed. AA./Z-215/K Order accordingly.