P L D 1973 Karachi 14 (PLP)

"Although there does not appear to be any infringement of trade mark fn respect of the goods traded in by the defendant, yet if any injunction to which the plaintiff is entitled is only this much that the defendant may be restrained from infringing the plaintiff's trade mark in suit and passing off goods thereunder by using as a trade mark the word "Techtronics" or the word "Tektronix" or any other word or mark, similar to or imitative of the trade mark of the plaintiff in suit, in respect to any goods similar to these as set out in Annexure "A" of the plaintiff."

4. It is an admitted position that the respondent is not ,doing any manufacturing business. His activities are only indenting of those very sophisticated instruments to his clients, among whom he lists, the Government of Pakistan, Atomic Energy Commission, Ministry of Defence. Atomic Energy Center, Karachi Nuclear Power Project, Pakistan Institute of Nuclear Science and Technology, etc. All that is alleged is that by arrogating the trading name of Techtronics Corporation, which is phonetically similar to the trading name of the appellants, he is practising deception, and passing‑off the goods of other manufacturers as the goods of the appellants, thereby affecting the volume of their business, as well as their goodwill.

5. According to Clark and Lindswell on Torts Note 1698, 11th Edition, p. 990:‑ "It is an actionable wrong for a trader so to conduct his business, as to lead to the belief that his goods or business are the goods or business of another. This wrong is known as "passing off". It is immaterial, whether the false represen tation, as to the goods o: business involved in passing off, is made expressly by word, or impliedly by the use or imitation of a mark, trade name or get up, with which the goods of another are associated in the minds of the public." Salmond in his Law of Torts, 13th Edition, page 690, writes :‑ "The true basis of the action is that the passing off injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business. In general the violation of the right to property is actionable, even though it is innocent and no damage has been proved."

6. Mr. Ibrahim Ahmad, learned counsel for the respondent, contended that the word "Techtronics" adopted by the respon dent is an invented word, being an abbreviation of Technology and electronics, and there can no: be any monopoly in descrip tive words. It has, however, not been controverted that the respondent till 1964 was an employee of Pakland Corporation, who are the dealers of the goods of the appellants with the trade mark of " 1"ektronix". Prima facie, it is too much of a demand on one's credulity to urge that the assumption of the trading name by the respondent was all that innocent. Patently, it betrays the anxiety to start off in "borrowed plumes".

7. Mr. Ehsan Nomani, learned counsel for the appellants contended, that even if the resemblances in the trading name were to be accidental, the possibility of confusion could not be ruled out, and the appellants would be entitled to a temporary injunction. He relied upon the following cases ; F. Woolworth Co. Ltd. v. Woolsworths (Australia) Ltd. (47 R P C 337), Southern Music .Publishing Co. Ltd v. Southern Song Ltd. (1966 R P C 13 7) and Suhner & Co. A. G. v. Suhner Ltd. and others (1967 R P C 336).

8. In the first named case, the plaintiff company was incor porated in the United Kingdom in 1909, for selling a large variety of articles, at a price not over 6 d. each. It had a network of shops. The defendant company was incorporated in 1929, and was the buying agency of another company, which was incorporated in Australia, under the name of Woolworths Ltd., for the sale of a similar class of goods, but mainly at a higher price. The plaintiff company brought an action, against the defendant company asking for injunction, restraining the defendant company from trading under its title or from using any other title calculated to deceive the public, or Lad the public to believe that the defendant company was in any way con nected with the plaintiff company. Notwithstanding the fact, that the defendant company had no intention of taking to retail business ; had inserted into a large number of trade journals statements that there was no connection between the plaintiff company and the defendant company, and even sent circulars in those terms to persons with whom it was dealing, ft was held:‑ "The defendant company's name is a name which so nearly resembles the name of the plaintiff company, as to be calculated to deceive if I look at the names alone, and the facts whiz have been proved before me do not establish to my mind that notwithstanding the resemblance of the two names there is no possibility of any real confusion or any such confusion as can damnify the plaintiff company. I think, on the whole that the evidence does show that the names are so alike as to cause confusion, that the area of the trading operation of the two companies is so much the same in many ways that there is serious risk of confusion and that in those circumstances there is a possibility of the plaintiff company being damnified. It follows therefore that in my judgment, I must grant an injunction."

9. In the second case, the plaintiffs Southern Music Publishing Co. Ltd. were Music publishers, and in the trade circles were known as "Southern." The defendants, Southern Song Ltd. were a newly incorporated company as song‑writers. On a motion for an interlocutory injunction, it was urged or behalf of the defendants company that the Court ought to be slow to grant an injunction when the words complained of, were descriptive or general words and not distinctive. Reference was also made to the decision in Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1963 R P C 39) but the argument was repelled on the consideration that the word "Southern" had acquired a distinctive meaning in relation to the plaintiff companies' business in the trade, with which the Court is here concerned."

10. In the last mentioned case, Suhner & Company A. G., which was a Swiss company, distributed their electronic goods in the United Kingdom, through a British company. It appears that though the goods were not identified as the plaintiffs', it was established that the plaintiffs had acquired goodwill is the country. A dispute having occurred between the two companies, the distribution agreement was terminated When the plaintiffs sought to register their own British company for the distribution of their goods under the name Suhner they discovered that the defendant company had been incorporated by agents of their former distributor, under the name of "Suhner", with objects similer to those of the plaintiffs company and therefore the latter's name could not be registered. On an application for injunction, it was held that as the plaintiffs had a prima facie case of the existence of goodwill, they were entitled to the relief on that basis.

11. Mr. Ibrahim Ahmad, learned counsel for the respondent, relied upon the following cases:‑ Office Cleaning Services Ltd. v. Westminster Window & General Cleaners Ltd. ; Hawtin E. Y. Ltd. v. Hawtin (John F) & Co. Ltd. 1960 R P C 95, Hennessy & Co. v. Keating 24 R P C 485 ; Dunlop Pneumatic Tyre Company Ltd. v. Dunlop Motor Company Ltd. 24 R P C 572; Bravingtons Ltd. v. Barrington Tennant 74 R P C 183; Tavener Butledge Ltd. v. Specters Ltd. 74 R P C 498 and Haji Abdul Ghani Haji Ibrahim and others v. The Registrar of Trade Marks, Karachi and another P L D 1961 Kar. 158.

12. The facts in the case Office Cleaning Services Ltd., succinctly stated were that the plaintiffs and the defendants both carried on the business of Office Cleaners, the former trading in the name and style of " Office Cleaning Services " since 1930 while the defendants had trades under the style of "Westminster Office Cleaning" since 1933, but in 1942 they assumed the style of "Office Cleaning Association". An action was brought by the plaintiffs for injunction but the plaintiffs admitted that they had no monopoly in the two 'Words 'office cleaning' and that these words had not acquired a secondary meaning so as to be distinctive of their firm. Judgment was given for the plaintiffs by the trial Court even though it was found that no fraud had been proved. The defendants took an appeal to the Court of Appeal which came to be allowed ; and then an appeal was preferred by the plaintiffs to the House of Lords which was dismissed. The considerations which prevailed were that the words 'Office Cleaning' were the words of common use and were more apt than other words to describe the service that they rendered; and that the appellants did not claim that the words 'Office Cleaning' had acquired the secondary meaning, that is, that they were the only persons in the field for the job of that type. Further the descriptive words in the appellants title was 'Service' and that of the respondent 'association' which was sufficient to dispel any confusion arising from the common use of ordinary descriptive words. It was however, observed by Lord Simonds who gave the leading judgment that when a trader adopted words in common use for his trade name, some risk of confusion was inevitable. "The Court will accept comparatively small differences as sufficient to avoid confusion." However, earlier it was observed that :‑ "It is otherwise where a fancy word has been chosen as part of the name. Then it is that fancy word which is discriminatory and upon which the attention is fixed, and if another trader takes that word as part of his trade name with only a slight variation or addition, he may well be said to invite confusion. For why else did he adopt it." It is also to be seen that it was expressly found that the defendants company had no fraudulent intention and that the word 'Westminster' had been dropped lest the company be considered not to be operating outside the area of Westminster. The fact also remains that the leading judgment started with the observa tion that the question involved in the case was one of fact Hawtin (E.V.) "a. v. Hawtin (John F.) & Co. Ltd., will hardly be relevant because that was not a case of descriptive name but of a personal name. In the case of Dunlop Pneumatic Tyres Company Ltd., the two companies were not dealing in the same articles to any considerable extent. It was further found that 'Dunlop' was a common name in Scotland and there could be no monopoly of the name Dunlop. In Bravington's case the similarity involved was in the get‑up of the shops of the two companies. Besides, Barrington was the Christian name of the defendant and the Court was not satisfied that the plaintiffs had discharged the onus which was upon them and being a triable issue would be decided on merits. There was also an element of delay in taking of the proceedings. In the case of Chelton (Poppits) Ltd., there was a motion for interlocutory injunction to restrain infringement of Patent and Trade Mark "Poppit" by use of mark "Poppin" and also to restrain passing off. It was observed :‑ "Quite plainly the defendants' argument would be consider ably enhanced were they able to support it on the ground that the monopoly conferred by registration includes the combination of the two well‑known English words 'Pop' and 'in' in relation to an article which in fact secures union by an action which can fairly be designated as 'popping in'." In the case of Hennessy & Co. v. Beating and Tavener Rutledge Ltd. v. Specters Ltd., the only question involved was whether the labels of the two manufacturers were such as to create confusion to the purchaser; and therefore will not be relevant. In the Karachi case the Registrar had accepted the application of 'Shipton Tea Company' for registration, with certain limitations and conditions in spite of the opposition of 'Lipton Tea Company', though in his opinion the word "Shipton" had been coined with an ulterior motive. The main reason given was that Lipton Tea Company had, despite knowledge, acquiesced in its user for a number of years. In appeal, the discussion was mainly in regard to the limitations and conditions imposed by the Registrar.

13. The words "Tektronix" and "Techtronics" admittedly are pronounced alike. "The iniquity of oblivion blindly scattereth her poppy", and the vagaries of human memory being, what they are, the chances of confusion and deception in the public mind, prima facie cannot be ruled out. The word "Tektronix" appears to be distinctive and not descriptive. The respondent, having worked in Pakland Corporation, could not feign ignorance about it. The adoption of Techtronics, therefore, as his trading style for operating the same business could not be just a coincidence. This could not be allowed, as the law stands.

14. Mr. Ibrahim Ahmad, learned counsel for the respondent, however, argued, that on the showing of the appellants, they had come to know about the trading style of the respondent in September 1967, but the suit was filed in April 1969. This delay of about 18 months on their part, would not entitle them to ask for a temporary injunction. He has also cited some English cases in that context, which find a mention earlier, but as held in Rexona Proprietary Ltd. v. Majid Soap Works (P L D 1956 Sind 1), and Vick Chemical Co. v. Hope Cosmetic & Chemical Works ((1957) 2 P L R 761), which is also a decision from this Court, in a case of fraud, as is prima facie discernible in this Court, the question of delay will be immaterial.

15. Mr. Ibrahim Ahmed further argued that the suit itself was Incompetent because it had been filed only against the respondent, while the latter had some other partners in the venture. The reply of Mr. Ehsan Nomani was that there was no mention of any partnership in reply to the notice given by the respondent, and otherwise too, the provisions of section 24 of the Partnership Act would come to the appellants' aid. The argument is prima facie not without substance.

16. In the result, I would set aside the order passed by the learned Additional District Judge and allow the appeal. There will whoever be no orders as to costs. S.A.H. Appeal allowed.