2002 PLP 1113 (CLD)

The plaintiff has vide this application sought a temporary injunction restraining the defendant, its servants agents, and dealers from infringing/ passing off the trade mark belonging to the plaintiff or otherwise using any other trade mark or word, get‑up, or design which is similar to the plaintiffs Trade Mark entitled Mezban Tea. Briefly stated the plaintiffs case is that it had acquired a Trade Mark No.99760 on 19‑9‑1988 in its name per depiction which appears as Annexure B/1 to the plaint which is entitled Tepal Tea Mezban Super Dust. A copy of the certificate itself has been filed as Annexure B. Accordingly the. plaintiff has been using its trade mark for a very long time i.e. since 1990 and has incurred huge expenses in promotion and publicity of the same which in the last few years has been approximately Rs.120 Million per year. It is the plaintiffs further case that a copyright has also been acquired by it of 'Mezban Label' of which a photostat copy appears as Annexure 'C' and consequently under both the Trade Marks Act, 1940 as well as the Copyright Ordinance, 1962 the plaintiff is fully protected in its right to the exclusive use of its trade mark and copyright.

2. The allegation against the defendant is that it recently adopted a Trade Mark entitled as 'Merjan Premier Dust' for the purposes of marketing its tea the colour scheme, get‑up, layout and calligraphy of which is identical to that of the plaintiffs label etc. per the plaintiff the word 'Merjan' is deceptively similar to 'Mezban' and hence to the common man they would appear to be the same particularly in view of their identical label, get‑up, colour scheme etc. A copy of the defendant's label is annexed as C/1. In the circumstances it has been prayed by the plaintiff that the defendant be restrained .from infringing the plaintiffs Trade Mark and/or passing it off as that belonging to the plaintiff till the decision of the suit.

3. In the counter‑affidavit filed by the defendant the main plea taken is that the plaintiffs colour scheme, get up etc. is not registered but only "Tapal" since there is disclaimer on the exclusive use of the word Mezban as well as letter Tea and device of tea leaf in the Trade Mark Certificate issued by the Trade Marks Registrar to the plaintiff. So also it has been maintained that the design and logo of the defendant is quite different to that of the plaintiff since the defendant's logo reads as "Merjan Premi Dust' followed by word 'Shahs'. It has also been pleaded that the defendant too has obtained a copyright entitled "Meerjan and Shahs" for its tea and a copy of the certificate is filed as Annexure D/4 to the counter‑affidavit. It is further asserted that the plaintiff had filed an application for rectification of the defendants' copyright before the Copyright Board which fact has been suppressed by the plaintiff and hence it is maintained that the plaintiff has not come to this Court with clean hands which would therefore, not entitle it to the relief sought. A copy of the rectification application has been filed as Annexure D/5 to the counter‑affidavit. The defendant has relied upon copies of sales tax receipts. Invoices and Income Tax Returns filed alongwith the counter‑affidavit to establish that it has been using its design/logo since the year 2000.

4. In support of the application Mr. Sultan Ahmad Shaikh, learned counsel for the plaintiff has asserted that the suit has been filed under section 21 of the Trade Marks Act for infringement of the plaintiffs trade mark as the defendant's trade mark is a reasonable duplication of the plaintiffs mark which would thus deceive the common main with the end result of losses and damages to the plaintiff. In this connection he has stressed that both labels are more or less identical and even the first and last word are the same and hence this is enough for this Court to grant the temporary injunction. Alternatively learned counsel has submitted that even if the plaintiffs case may not come within the four corners of infringement of its trade mark it is certainly a case of passing off by the defendant of the plaintiffs trade mark since admittedly the plaintiff is the prior user. In this connection learned counsel has referred to sales invoices etc. filed by the defendant which would show that the defendant has only been using its trade mark since the year 2000 whereas the plaintiff has been using its mark from 1988. In support of his contentions Mr. Shaikh has relied upon the following cases: (a) Rexona Proprietary Ltd. v. Majid Soap Works (PLD 1956 Sindh 1); Insaf Soap Factory v. Lever Brothers Port Sunlight Ltd. (PLD .1959 Lahore 381); Ferozuddin v. Muhammad Shaft (PLD 1975 Karachi 486); Telephone Soap v. Messrs Lever Brothers (1994 CLC 2135); Abdul Wahid v. Haji Abdul Rahim (PLD 1973 SC 108) and Sony Kabushiki Kaisha v. Assistant Registrar of Trade Marks (PLD 1974 Kar.136) .

5. On the other hand Mr. Khawaja Manzoor Ahmad, learned counsel for the defendant has submitted that section 2(1)(f) of the Trade Marks Act defines trade mark as a 'brand'. Heading, label, get‑up, letter etc. whereas section 3 of the Copyright Act defines a copyright as a right, inter alia, to the use of a trade name artistic, design. Consequently per the learned counsel the defendant's copyright in the name "Merjan" and "Shahs" is exclusive to the defendant and very different from the words 'Mezban Super Dust' adopted by the plaintiff. Learned counsel has further maintained that the two labels are different from each other and consequently there could be no possibility of any deception caused in the mind of the general public. In support of his submissions learned counsel has relied upon the following case‑law: Messrs Gorey International v. Colgate Palmolive (Pvt.) Ltd. (2000 MLD 8); Pakistan Tobacco Co. Ltd. v. Westend Tobacco Co. (1992 CLC 1728) and Karachi Textile Works v. Multan Handloom Factory (PLD 1958 Sindh 351). Learned counsel has further submitted that as the plaintiff has suppressed the fact that it has already filed a rectification application with the Copyright Board with regard to defendant's copyright, it has not come to this Court with clean hands, and is, therefore, not entitled to any relief. In support of this submission he has relied upon: Akbar v. Abdul Ghafoor (2000 SCMR 1000).

6. In reply Mr. Sultan Ahmad Shaikh has argued that section 2(1)(f) of the Trade Marks Act also defines a trade mark to be a label as well as and admittedly Annexure 'B' to the plaint is the said label which is black and white and per section 7 of the Act where a trade mark is black and white any colour may be used. Therefore, per the learned counsel the plaintiff was free to adopt any colour scheme for its label. In support of this submission he has referred to: Dabur India Ltd. v. Hilal Confectionery (Pvt.) Ltd. (PLD 2000 Karachi 190). Learned counsel has further contended that no opposition was filed to plaintiffs application for registration of its trade mark and whereas the defendant's application for registration of its trade mark filed on 27‑3‑2000 has not even been accepted for advertisement as yet in the Trade Mark Journal.

7. I have heard both the learned counsel and my conclusions are as follows.

8. It would be seen that at the interim stage in matters relating to infringement/ passing off of trade marks. It has been the practice of the superior Courts that both trade marks/labels are compared and an assessment is made whether the same are more or less similar. If the answer to such an exercise is in the positive then the earlier trade mark is given due acknowledgement and acceptance and consequently the use of the latter trade mark is restrained. For this proposition the cases of Rexona Proprietary Limited v. Majid Soap Works, Insaf Soap Factory v. Lever Brothers Port Sunlight Ltd., Sony Kabushiki Kaishai Japan v. Assistant Registrar of Trade Marks, Karachi and Telephone Soap v. Lever Brothers (supra) may be cited.

9. I have accordingly compared the labels of both the parties from which it is quite clear that the defendant's label has the same colour, get‑up and design as that of the plaintiff. The only dissimilarity appears to be in the words 'Mezban' and 'Merjan' and in my opinion this is not a total dissimilarity but a partial one. Consequently in my view, prima facie, the defendant's label is deceptively similar to that of the plaintiff as indeed the same colour, get‑up and design and logo has been used which can cause the common man to mistake the defendant's Tea to that of the plaintiff thus, resulting in immense losses to the plaintiff as admittedly the latter has invested huge amounts in the promotion and advertisement of its brand of tea under the name of 'Mezban Super Dust'.

10. As regards learned counsel for the defendant's contention that the defendant's copyright in its logo and design would give the defendant some justification as to the use of the same. In my opinion this cannot be either sustained or allowed. The reason is very simple. Since the defendant's copyright is quite similar to the earlier registered trade mark of the plaintiff, condoning the former's use of its copyright would give free reign to any unscrupulous person from adopting the mark/design which is already being used by another person to the detriment of the latter. Such in my opinion is not the intention of the law and for that matter could not be the intention of the law. In this connection it would be seen that perhaps the copyright obtained by the defendant which is quite similar to the registered trade mark of the plaintiff in the first place should not have been sanctioned by the Copyright Board. In fact in my opinion there should be some provision whereby applications for registration of a copyright could be advertised in order to invite objections which would then be dealt with so as to avoid conflicts between an earlier registered trade mark.

11. As regards learned counsel for the defendant's other objection that the plaintiff has not come to this Court with clean hands as it has suppressed the fact of having filed a rectification application before the Copyright Board, in my opinion the mere filing of such an application cannot fetter the plaintiffs right to approach this Court for discretionary and equitable relief by way of declaration and injunction. The rectification application of course would follow its own course before the Copyright Board whereas this suit would proceed independently since as previously noted the plaintiff has a right to file the suit in the circumstances of the case. Consequently I would hold that non‑disclosure of the rectification application by the plaintiff before the Copyright Board is not fatal to the plaintiffs case. As regards the case of Akbar v. Abdul Ghafoor (supra) cited by the learned counsel in support of this proposition, in my view the facts thereof are different as there the Hon'ble Supreme Court reached the conclusion that the petitioners had failed to disclose the existence of a prior suit op the same cause of action and the same subject‑matter.

12. As regards the cases cited by the learned counsel for the defendant in support of his contention on merits viz; Gorey International v. Colgate Palmolive (Pakistan) Ltd. in my opinion this goes against him because therein the defendant being a prior registered proprietor of the disputed design was entitled to continue to use the same, as against the plaintiff who were admittedly the later registered proprietor of the said design. In fact this is precisely the plaintiffs claim in the present suit. Similarly in the case of Karachi Textile Workers v. Multan Hand Tools Factory (supra) it was held that a temporary injunction would not be granted if the trade mark in question has been recently registered. In my view the facts of the case are entirely different as admittedly the plaintiffs trade mark was registered somewhere in 1988. As regards the case of Pakistan Tobacco Co. v. West End Tobacco Co. (supra) a learned Single Judge of the Lahore High Court came to the conclusion that the two marks of the parties viz. Craven and Caravan were totally different and so also there were sharp distinctions between the cartons used by the parties for the purposes of marketing their brand of cigarettes and consequently the injunction was refused to the plaintiff. In my opinion this case was decided on its own particular facts which are not similar to the facts of this case since I have reached the conclusion that the cartons of both the parties are deceptively similar as to their colour scheme, get‑up and design.

13. It would also be seen that the defendant did not care to file any opposition to the advertisement for the plaintiffs registration of its trade mark in the Trade Marks Journal. Similarly it would be seen that although the defendant is, per its own assertion been in the Tea marketing business for a very long time it is only marketing its Tea under the label of 'Merjan Premi Dust' since the year 2000. This in my opinion, has not been explained at all by the learned counsel for the defendant.

14. Consequently in my view the plaintiff has made out a prima facie case for the grant of the aforementioned injunction as prayed.

15. Above are the reasons for the short order passed on 25‑9‑2001 for allowing the application. S.A.K./25/K Application allowed.