2007 PLP 527 (CLD)

MAQBOOL BAQAR, J.

Through this application, the plaintiff has sought an order restraining the defendants from passing off their sweet balls under the trademark/name 'CHOCOLIQ', or by any name/trade mark, brand or colourable imitation, which closely resembles with the trademark of the plaintiff. The relevant facts of the plaintiffs' case, in brief, are that the plaintiffs are engaged in manufacturing, marketing and selling of candy, chocolates, sweet balls, sweets and toffees and other confectionery items, which have acquired exceptionally good name and reputation. It is claimed that sweet balls under the trade name 'CHOKLIK' are being produced and sold by the plaintiffs since the year. 2005, throughout Pakistan, and because of superior quality they have acquired valuable reputation and goodwill under the Trade Mark 'CHOKLIK'. It is further claimed that in order to distinguish its high quality product from these of other manufacturers and competitors, the plaintiff has, through Application No.226238 dated 22-8-2006, applied to the Trade Marks Office for registration of 'CHOKLIK' in class

30. It is claimed that during the period from June, 2005 to August, 2005, plaintiff sold its said sweet, balls under the aforesaid trade mark/name of the value of Rs.5,052,436,

68. It is further claimed that due to superior quality and extensive publicity the trade mark 'CHOKLIK' in relation to sweet balls has become distinctive of the goods of the plaintiffs and has come to he associated in the minds of purchasing public and traders with the plaintiffs. The plaintiff has thus acquired valuable goodwill and reputation in the Trade Mark 'CHOKLIK' in Pakistan, in relation to sweet balls. It is alleged that on or about 10-10-2006 the plaintiffs discovered that the defendants, with a mala fide intention and ulterior motives, to dishonestly misappropriate the outstanding reputation and goodwill of the plaintiff in the Trade Mark 'CHOKLIK' and in order to confuse the purchasers and general public as to the origin of the goods and to create an impression that there is some trade connection between plaintiffs and defendants, have commenced manufacturing, marketing and selling sweet balls and candy under the name 'CHOCOLIQ' which is confusingly and deceptively similar to the plaintiff mark/name 'CHOKLIK'. In support of their claim that they are manufacturing and selling sweet balls under the name, 'CHOCOLIK', they have along with their plaint annexed 24 Sales Tax Invoices commencing from June, 2005. In their counter affidavit, the defendants denied the plaintiff's claim and allegations, and submitted that the Sales Tax Invoices relied upon by the plaintiff do not pertain to the Trade Mark 'CHOKLIK' but they relate to 'CHOCOLIC'. It is further claimed that the defendants have adopted its trademark 'CHOCOLIQ' in February, 2006 in respect of Liquid Chocolate and have since then been using this trade mark and marketing their goods throughout the country without any let or hindrance from any quarters. It is indeed true that the two names/marks 'CHOKLIK' and 'CHOCOLIQ' are phonetically similar and it would be difficult, and specially for small children, who in fact are the main consumers of the product, and who usually call/demand and purchase such product by its name, to distinguish between the competing products of the plaintiff and defendants. However: in order to establish passing off by the defendant it was imperative upon the plaintiff to establish that they are the prior user of the name 'CHOKLIK'. However, as has been admitted by Danish Pesh Imam, the Director of the plaintiff company who was present in Court, that the Sales Tax Invoices annexed/relied upon by the plaintiff, being Annexures B-1 to B-24, in fact pertains to a product produced and marketed by them under the name of 'CHOCOLIQ' and not the present product i.e. 'CHOKLIK'. Therefore, the plaintiffs have not been able to establish their presence in the market with the name of 'CHOKLIK', whereas the Sales Tax Invoices filed by the defendants along with its counter-affidavit show that the defendants are producing their product with the name of 'CHOCOLIQ' since 3-2-2006. It is indeed true that the plaintiff has applied for registration of its Trade Mark 'CHOKLIK' on 22-8-2006, whereas, the defendant has applied for registration of its trademark on 12-12-2006, however, since the plaintiff has failed to produce any material in support of his claim of prior user of the Trade Mark 'CHOKLIK', he can at best, claim its user from the date of his application i.e. 28-8-2006. It is indeed true that in the said application, the plaintiff has claimed having used the name 'CHOKLIK' since 2005 but as noted earlier, no material has been produced in support of his above claim whereas the defendants through the various Sales Tax Invoices has, prima facie established that he is producing, liquid Chocolate under the trade name 'CHOCOLIQ' since 3-6-2005, further more, the plaintiff has also not produced any material to establish that the trade name 'CHOKLIK` has come to be associated with it. In the circumstances, I do not find any merits in the application. The application is therefore, dismissed. It may however, be noted that the observations made herein are merely tentative in nature and shall have no bearing on the final adjudication of the matter. H.B.T./S-6/K Application dismissed.