2005 PLP 802 (CLD)

4. They further asserted that some time in May 2003 they came to know that defendants were indulging in the manufacture and sale of counterfeit products under their world renowned genuine trade marks and genuine colour scheme, design and get-up for packaging claiming themselves to be the original proprietors thereof. Thereafter they first required the defendants to stop the using of trade mark and colour scheme but they (defendants) instead of doing so filed an application for rectification of plaintiffs trade mark and copyright. It has further been asserted in the plaint that the use of trade mark and copyright of the plaintiff by the defendant for their products of brake fluid is clear infringement of their right and title therefore they be restrained perpetually from using the same.

5. Together with the plaint, the plaintiff also filed an application for temporary injunction restraining the defendants from using the trade mark and colour scheme design and get-up of the packaging/label till the decision of the suit.

6. In the counter-affidavit the defendants have opposed the prayer. They however, have not disputed the use of trade mark and the colour scheme, design and get up of the packaging by the plaintiff. Also they have not denied the registration of the trade mark and copyright in Pakistan as claimed in the suit. They however, pleaded that the trade mark and colour scheme, design and get-up for the packaging of the products i.e. brake fluid was adopted and used by them since 1994 and they have acquired proprietary rights therein. They also pleaded that in view of the money, time and labour spent by them on establishing the product and publicity thereof under the Trade Mark "Wagner Lockheed Brake Fluid" it has acquired substantial goodwill. Also they have applied for registration of trade mark for their products, and rectification of the Trade Mark "Wagner" registered under No.18806 in the name of Messrs Moog Automotive Products, which petitions are pending before Registrar of Trade Mark, Karachi. They also pleaded that the plaintiffs have never used Trade Mark Wagner" in Pakistan.

7. Arguments were heard. The learned counsel mainly contended what was asserted and pleaded in the pleadings filed by the parties respectively. Now I proceed to pass the order keeping in mind the material on record and the arguments.

8. It is an accepted fact that the trade mark and colour scheme, design and get-up of packaging of products of the defendant is exactly same that of the plaintiff. The fact that Engineer Mr. Wagner established Wagner Electric Manufacturing Company in U.S.A. which started manufacturing and selling brake fluid in 1890 under Trade Mark "Wagner", "Lockheed", "21" and "Sunburst Logo" also has not been controverted Registration of that trade mark in U.S.A. in 1938 and then registration of colour scheme, design, get-up and form of label also have not been disputed. The registration of the same trade mark in Pakistan during 1952 in the name of "Moog Automotive Products Inc." and registration of copyright of artistic work comprising of label in 2000 are not controversial.

9. As regards the defendant's plea about concurrent use of the same trade mark and colour scheme; get-up, design of packing by them in Pakistan since 1994 they have placed on record certain documents. Although some material weakness in those documents have been highlighted by the plaintiffs learned Advocate but I refrain from commenting upon them. However, it deserves to be mentioned here that they have not filed income returns relating to the business concerned for the year 1994 and onward. Non-filing of returns leads to the inference adverse to them.

10. Even if, the plea of use since 1994 is accepted tentatively then also the legal requirements are prima facie wanting in the present case. Adoption of everything i.e. Trade Marks and colour scheme, design, get-up, label for packing in respect of the same product i.e. brake liquid seems planned and calculated and not incidental. For such a copy which includes the name of Engineer who was the founder of the company having produced the liquid and adopted the trade mark with his name decades before, no explanation and justification has been advance. Such an adoption prima-facie, does not seem to be an honest user as required by subsection (2) of section 10 Trade Marks Act, 1940.

11. Moreover said subsection (2) of section 10 is not to be read in isolation of section 21 which confers the exclusive rights of use of the trade mark in relation to the goods for which it has been registered. The provisions of section 21 are subject to provisions of sections 22, 25 and 26, out of which section 25 is directly on the claim under subsection (2) section 10 of Trade Marks Act. It protects the request for and registration of the identical and resembling trade mark relating to same goods under section 10(2) Trade Marks Act, only when the use of trade mark by the subsequent applicant was prior to the use /registration of the earlier one. In present case the use claimed by the defendant is much more after the use and registration of trade mark by the plaintiffs in Pakistan. Therefore, prima facie, they (Plaintiff) have exclusive right to the use of the trade mark in suit.

12. Additionally in a use of plaintiffs trade mark by the defendant great possibility of misleading the purchasers and their deception is present. In presence of such possibility the user even if honest is disentitled to any protection by Court of justice. In a famous case of Toshiba Corporation reported in PLD 1991 SC 27, it has been held that in. a case where deception and confusion are the grounds of opposition, honesty of intention in user cannot be of any avail.

13. The other objection by the learned counsel for defendant was that the plaintiff and Premier Corporation have never used the trade mark in Pakistan. It is simple denial on their part. Against it the plaintiffs have produced on record bulk of documents, many of which are the copies of authentic documents such as shipping documents/bills of lading. They are Annexures C-1 to C-98 to the plaint and show the import of the products of Wagner Division Cooper Industries Inc. U.S.A. into Pakistan by Premier Corporation from 1984 till 2004. Those products include the brake fluid also.

14. The judgment in plaintiffs own appeal Messrs Wagner Electric Corporation v. Paramount Oil and Chemical Co. reported in PLJ 1973 Kar. Note 68 at page 91 also indicates the use of Trade Mark "Wagner", "Lockheed", "21" and "Brake Fluid", in Pakistan. Not only that but the decision is also a judicial recognition of the exclusive right of the use of this trade mark in Pakistan by the plaintiff's predecessor-in-title.

15. The other contention of the defendants learned counsel was that the trade mark is of Cooper Industries and the plaintiff has no nexus with it. This argument has no force, firstly for the reason that the defendant has not produced any material to establish the independent existence of Cooper Industries, secondly the trade mark is registered in Pakistan in the name of "Moog Automotive Products Inc." a former name of plaintiff Federal Mogul Products, Inc. The defendants have not challenged the position taken by the plaintiff about their earlier name.

16. In view of the above the use of trade mark "Wagner", "Lockheed", "21"and "Sunburst Logo" and the get-up and colour scheme for the packing by the defendants for their products i.e. "Brake Fluid" is prima facie infringement of the plaintiffs right of trade mark. They therefore, have strong prima facie case. .

17. In the circumstances where the use of trade mark by the defendant has potential to affect the image and goodwill acquired by the plaintiff, the balance of convenience lies on their side and they would also suffer irreparable loss in case the temporary injunction prayed for is refused. They therefore, have a case for temporary injunction prayed for. Consequently interim injunction granted on 7-4-2004 and continuing till this day is confirmed till decision of the suit. With this order the application C.M.A. No.2176, of 2004 made by plaintiff is disposed of. Consequent upon this order the application C.M.A. No.5565 of 2004 filed by the defendants also stands dismissed.

18. Needless to mention that the observations made in this order were inevitable, and are tentative except the legal propositions. H.B.T./F-21/K Interim injunction granted.