P L D 1983 Karachi 402 (PLP)

By the two petitions filed under section 46 of the Trade Marks Act of 1940, the petitioners who claim to be owners of mark "Brite Sun" seek direction of this Court that the entries of the respondents trade marks "Brite" under registration Nos. 72123 and 71595 both in class 3, made in the Registrar of Trade Marks, be expunged. Alongwith the above petitions, applications have also been moved for stay of Suit No. 184 of 1982 filed by the respondents in the Court of District Judge Karachi for alleged infringement, passing off and perpetual injunction against the above-named petitioners on the plea, amongst others, that the petitioners with a view to trade on the reputation of the respondents and good will earned under the Trade Mark `Brite' secretly applied for registration of the same trade mark in their own name with an addition of the word `Sun' which has phonetical resemblence and is colourable imitation of respondents' mark. In the said suit the respondents claimed against the above-named petitioners the following reliefs : (a) Perpetual injunction restraining the defendants from infringing the Trade Mark "Brite" and passing off or attempting to pass off and from enabling others to pass off goods not of plaintiffs manufacture, by use of name Brite -or any other name having confusion or deceptive similarity with the word Brite in any manner. (b) Special damages which this Honourable Court may deem fit and proper under the circumstances." The above suit was filed on 28-12-1982 and ad interim injunction therein was obtained against the petitioners restraining them from manufacturing and selling their. goods under the mark `Brite Sun'. Mr. A. A. Zari, Advocate for the petitioners stated that the ad interim injunction. was obtained against his clients ex parte on a false plea that the petitioners had refused to accept notice issued by the learned District Judge.

2. In the circumstances, the petitioners moved the above-mentioned two petitions under section 46 of the Trade Marks Act and also filed applications in both the petitions wherein they have prayed for stay of proceedings in aforementioned Suit No. 184/82 till the decision of these petitions. Since common questions of facts and law are involved, these two applications by consent of the learned counsel for the parties were heard together and are being disposed of by this order.

3. Mr. Zari the learned counsel .for the petitioners in support of the applications urged the following ground: : (1) That this Court has jurisdiction to stay the above-mentioned suit, pending the decision of the petitions for rectification. (2) That the word `Brite' which the respondents have got registered in their favour is a mark which is unregisterable and its entry in the register is liable to be cancelled.

4. As to the .jurisdiction of this Court to stay the suit pending before the learned District Judge, until the disposal of the petitions for rectification. the learned counsel for the petitioners placed reliance upon rule 6 of the Rules framed by the High Court under section 77 of the Trade Mark Act, 1940. The said rule expressly provides that if any application or appeal is made to the High Court under the aforesaid Act and any suit or other proceeding concerning the Trade Mark in question, is pending before the High Court or any District Court, the High Court may stay the suit or proceeding until the disposal of the said application or appeal. Thus the power to stay the suit filed by the respondents concerning the trade mark in question and pending in the District Court cannot be disputed, the fact still remains that the discretion thus conferred must be exercised judicially on the petitioners making out a prima facie case in their favour for rectification of the entry in the register of Trade Marks. In order to appreciate the contentions raised it would now be relevant to reproduce hereinbelow subsection (2) of section 46 of the Act, reference to which was made by both the learned counsel as laying down the principles which would be applicable to the present case. Section 46(2). "Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may. make such order for making, expunging or varying the entry as it may think fit."

5. The learned counsel for the petitioners in support of his argument that the entries in dispute have been made without sufficient cause and that the same are remaining wrongly on the register and are liable to be expunged by order of this Court, submitted that the registration of the trade mark `Brite' has been fraudulently obtained by the respondents and that the word `Brite' is per se inherently unregistrable. The learned counsel referred to subsection (1) of section 6 of the Act which lays down that a trade mark shall not be registered unless it contains or consists of at least one of the essential particulars enumerated. in- clauses. (a) to (e). Emphasis was laid particularly upon clause (c) under Which a trade mark would not be registered unless it consists of "one or more invented words", and it was contended that the word `Brite' was a mis-spelt word of an ordinary descriptive word `Bright' conveying same sound and meaning and thus did qualify to be registered as an 'invented word'. I have considered anxiously the contentions raised by the learned counsel and find that the same find support from principles well accepted. Reference may be made to the commentary by S. Venkateswaran' (1963 Edn., p. 57) wherein while dealing with the question as to what constitutes `invented word', the learned author reproduced the principles laid by various Courts as follows : "The principles which should govern the iaterpretation of the expression `invented word' are laid down in the Solia's case (East man Photographic Material Co.'s Appn. (1898) 15 R P- C 476 and Diabolo's case (Philippart v. Whiteley Ltd. (1908) 25 R P C 565 at p.

569. In the latter case Mr. Justice Parker (later Lord Parker) said thus: "To be an invented word, within the meaning of the Act, a word must not only be newly coined, in the sense of not being already current in the English language, but must be such as not to convey any meaning, or, at any rate, any obvious meaning, to ordinary Englishmen. It must be a word having no meaning or no obvious meaning until one has been assigned to it To prevent a newly coined word from being an invented word, it is not enough that it might suggest some meaning to a few scholars. Further while on the one hand the fact that a word may be found in the vocabulary of a foreign language does not, in itself, preclude it from being an invented word, so on the other hand, a foreign word is not an invented word merely because it is not current in the English tongue." In the same treatise at page 59 while dealing with characteristics of an "invented word" and relying upon the case of Philips Phonographische Industries Appl: ((1955) 72 R P C 183) and the other cases reported as Hommel v. Gebruder Bauer & Co. ((1904) 21 1 P C 576) and Societe Le. Ferment's Appl. ((1912) 29 R P C 497) the learned author summarised the law in the following words :- "An invented word, is, therefore, one which is newly coined and which does not indicate any obvious meaning in the sense that it conveys a descriptiveness as its primary indication to the person who sees or hears it. The word must be coined for the purpose of applying to the goods but may have 'been used before its registration or might not be the invention of the applicant." The learned counsel then referred to the case of Solio and the opinion of Lord Halsbury who after referring to the argument that the word "Sol" in the mark meant the sun, observed : "It certainly is a very strange thing that you should take three letters out of a word, and by the somewhat circuitous process that has been adopted here, arrive at the conclusion that it is not an- invented word, and that it does describe the character and quality of the goods." Continuing his arguments the learned counsel for the petitioners further submitted that ordinary descriptive words which are merely mis-spelt or are merely combined with a common termination or which contain trifling variations or alterations but which, nevertheless, convey the same sound or meaning without constituting a substantially different word, or which are spelt "phonetically, fantastically or conventionally, or which are ordinary slang words," do not qualify as invented words under section 6 of the Trade Marks Act, 1940 even though they are coined words and are not be found in any dictionary. Reliance was placed on the cases of Oolwoola (misspelling of all wool) ((1909) 26 R P C 850) -, "Comphies" ((1901) 18 R P C170=(1902) R P C 281) Uneeda" ((1941) 58R PC281) (mis-spelling of You need a') "Dex" for bolts and -screws (mis-spelling of "Decks") Minigroove ((1955) 72 R P C 183) "Vapo Rub" (A I R 1950 Cal. 654). The learned counsel further submitted that the mark in dispute "Brite" is mis-spelt word of the word `Bright', that it is laudatory and descriptive of character as it evident from the words " Washes Extra White, Extra Bright" which follow the said trade mark.

6. Mr. Sohail the learned counsel for the respondents however referred to the Oxford Universal Dictionary illustrated and submitted that the word `Brite' therein is shown to have the following meaning : "Brite v. Now dial. 1669 of. on. brjota, Corresp. to oe. breotan to break, burst. See Brittle) intr. Of grain, etc. ; To become over-ripe and shatter." Accordingly the learned counsel contended that it is not a laudatory word but it is a word which appears in standard dictionaries and has its own meaning. The above argument of the learned counsel for the respondents for disposal of these interlocutory applications however cannot be accepted as in the case pleaded and set up by them the word "Brite" is claimed to be an "invented word". Reference be made to para. 1 of the plaint (Suit No. 184 of 1982) wherein the respondents expressly claimed : "That the plaintiffs are carrying on business of manufacture and sale of detergents and other goods. The main goods being the goods manufactured under the Trade Mark Brite, which is an invented word and a Registered Trade Mark under two separate Certificates and is pending registration under different classes." Again in the counter-affidavit filed in this Court on behalf of the respondents, it has been stated : "I say that the word `Brite' is not a mis-spelling of the word 'Bright' and (that) it is an invented word."

7. The learned .counsel for the respondents then proceeded to argue that the petitioners are adopting unfair means and are wrongfully and fraudulently training upon the good-will earned by the respondents who have made huge investments in making their trade mark popular in the public by vast publicity. The learned counsel for the petitioners on the other hand submitted that the products sold under the mark 'Brite Sun' by them have acquired high reputation and valuable good-will and that the same consist of three different products manufactured and sold by them namely (1) Insect spray oil, (ii) Dusting powder to kill insects, and (iii) Disinfectants phenyle, for use in W. C. bathrooms to kill ants, cockroaches etc. and that there was no likelihood of any confusion either in the two marks or even in the names of the two parties.

8. Considering the above submissions of the learned counsel for the parties I am of the opinion that prima facie case is made out by the petitioners.. raising triable issues as to the capability of the word 'Brite' being registered under section 6(l) (c) of the Trade Marks Act, 1940, as consisting of an` invented word.

9. The question then arises if the Suit pending in the District Court be stayed till the decision of these petitions. Mr. Sohail, the learned counsel for the respondents submitted that the suit filed by the respondents in the District Court, is not only for the infringement of registered trade mark but is based also on the cause of action for passing off. Though the learned counsel did not elaborate the point raised by him but I find that these two. different causes of action could lawfully be joined against the same defendants in then same suit under rule 3 of Order II, C. P. C. This principle finds support from the case of Formica International Limited v. Caprihanr (India) Private Ltd. and others (A I R 1966 Cal. 247) wherein the learned High Court observed : 'A plaintiff can always file a mixed action for infringement and passing off'. Many of the rules and principles relating to an action of infringement, in general apply also to an action of "passing off'", substituting proof or repute for evidence of title by registration ; (Kerly on Trade Marks, 8th Edn., p. 335). A plaintiff sues for infringement when his title by registration has been affected ; he sues for "passing off" when the reputation of his goods has been affected. If a registered trade mark is imitated an action for infringement lies, if a false or deceitful representation is made expressly or impliedlv an action for "passing off" lies. In one case the cause of action is founded on property in goods which has been infringed, in the other the plaintiff has to prove the reputation of his goods and prove further that reputation has been assailed. A plaintiff may fail to make out case of infringement of a trade mark because he cannot prove its registration, or that its registration extends to the goods, or to all g of the goods, in question, or because the registeration is invalid, and may yet show that by imitating the mark claimed as a trade mark, or otherwise, the defendant has done what is calculated to "passing off" his goods as those of the plaintiff. A case of "passing off" is generally added as a second string to an action for infringement, and is frequently successful where the claim for infringement fails : (see Kerly on Trade Marks, 8th Edn., p. 333). From what I have observed above its follow that the causes of action for infringement and "passing. off" are distinct and separate and one of them may fail while the other may succeed on the same evidence. The learned Calcutta High Court further proceeded to observe : "In a suit where the two causes of action are combined and the defendant seeks to invoke the provisions of section 1 I t the Court, in my view, has the power and the duty to stay the suit so far as it relates to infringement of trade mark. The Court trying the suit must wait for the . result of the rectification proceedings before it passes any final order or decree involving the validity of the registration. I realise that the result will be that the suit may have to be tried piecemeal. But having regard to the mandatory provisions of section 111, I do not see any other alternative.". The fact that two different causes of action have been joined in the suit filed by the respondents against the petitioners, cannot therefore be lost sight of while deciding these applications.

10. It was next contended by Mr. Sohail the learned Advocate for they respondents that the petitioners could not be considered to be `aggrieved'] persons within the meaning of section 46 of the Act. The contention raised as above by the learned counsel however for the purposes of the maintainability of these petitions, cannot prima facie succeed as the petitioners are persons against whom a suit has been filed by the respondents for alleged infringement of trade mark, and that ad interim order of injunction has also been obtained against them. In these circumstances I have no reason t doubt that the petitioners are persons aggrieved who are entitled to move this Court for rectification of the register and to show that the entry wa made therein without sufficient cause and that the same ought not to b allowed to continue on the register, reference, if needed, be made to the case of Ralph's Trade Mark ((1884) 55 Ch. D 194) which was followed in Gianaclis Trade Mar (1889) 6 R P C

467. I would like here to usefully refer to the case of Powell's Trade Mark ((1893) 10 R P C 195) Lindley L. J. wherein while considering the question if the respondents in the said appeal were persons aggrieved, observed: "Persons who are aggrieved are persons who are in some way or other substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained. It is - very difficult to frame a nearer definition than that. In the Apollinaris case it was - pointed out not as a complete or exhaustive definition that people would be aggrieved if they were in the same trade and dealt in they same article." The learned Judge further held :- "It would be, to my mind, an unbusiness like construction to place on the terms "aggrieved" to say that it could only be applicable to those who actually had formed a fixed and crystabllized intention of dealing in the particular article if permitted to do so. If a man is hampered in his arrangements of business -matters in the future by the fact the a trade mark is on the register which ought not to be there, .he is person who, to my mind, is sufficiently aggrieved to come within the section." It may be pointed out that the above observations were made in the appeal which arose out of a motion to rectify the register of trade marks.

11. In view of the discussion as above and being of the opinion that this Court has jurisdiction to stay the suit and that the petitioners have made out a prima facie case for challenging the validity of the entry of the trade mark `Brite' in the register, the suit filed by the respondent pending in the District Court is directed to be stayed so far as it relates to the - alleged infringement of the trade mark till the disposal of these petitions. - I would like to clarify that observations made above are tentative in nature and shall not in any manner be deemed to prejudice the trial of the causes on merits at the final hearing. M. Y. M. Petition allowed.