2012 PLP 905 (CLD)

UMAR ATA BANDIAL, J.

There are two restaurants located side by side at Qadafi Stadium one is owned by the appellant with registered trademark of "Dera Restaurant". The word "Dera" is in large size as compared to the 'word "Restaurant'. The adjoining restaurant was allegedly named as "Fazl-e-Haq Family Restaurant" at one time but on account of appellant's success it has now been named as "Fazl-e-Haq Dera". The violation of appellant's registered trademark dated 28-7-2003 is alleged by the use of word "Dera" in the name of respondent's restaurant. The learned trial court has declined the interim relief by the impugned order dated 3-11-2009 primarily on the ground that the name of "Fazl-e-Haq" clearly distinguishes the said eatery from the appellant's restaurant.

2. Learned counsel for the respondents adds that Mr. Fazl-e-Haq owns a number of other restaurants in Lahore. The signboard of each of such restaurant bears the owner's portrait. He submits that therefore no confusion or deception is caused by the use of word Dera in the name of the respondent restaurant.

3. The statutory test for infringement is laid down in section 40 of the Trademarks Ordinance, 2001. If the objected trademark is identical or deceptively similar to the registered trademark and is used in relation to goods or services identical with or similar to the goods or services for which trademark is registered, then there is a case for infringement. In the present case evidence has not yet been recorded. The respondents deny that their restaurant adjoining appellant's restaurant was ever called "Fazl-e-Haq Family Restaurant". It is further explained that to establish bona fides, during the course of hearing, the respondent has changed the format of its name on the signboard. The words "Fazl-e-Haq" are now displayed in larger size so as to undo the effect of word Dera as a distinct name.

4. Learned counsel for the appellant has relied on Jamia Industries Ltd. v. Caltex Oil (Pak.) Ltd. and another (PLD 1984 SC 8) and Messrs Mehran Ghee Mills (Pvt.) Limited and others v. Messrs Chiltan Ghee Mill (Pvt.) Limited and others (2001 SCMR 967) to support his case. The upshot of the precedents is that similarity between the trademarks adopted by the, contesting parties should be such as to create reasonable confusion and deception in the mind of as unwary purchaser.

5. Evidence has yet to be recorded in the present case on whether there is sufficient basis for confusion and deception to be inferred in the facts of the case. However there is merit in the appellant's contention that the two establishments being located adjacently, the respondent's restaurant on account of common word in its name has a likelihood of attracting/diverting customers away from the appellant's restaurant. Accordingly, for the reason of proximity between tie two establishments there is a likelihood that word Dera in the name of respondent's restaurant would cause confusion and deception among customers. Photograph of the latest signboard installed outside the respondent restaurant during the course of the proceedings as a step to demonstrate bona fides, has been placed on record. It does not minimize the effect of the name "Dera" which is written in large size but in a font that is different from the one used for the name of "Fazl-e-Haq".

6. In the circumstances and for the purpose of interim relief the said notification adopted by the respondent is not satisfactory. Consequently, the respondents are not allowed to use the word Dera distinctly from the name of Fazl-e-Haq either in terms of its placement on the signboard of the restaurant or by a different font used therefor.

7. Accordingly, subject to the outcome of the main suit proceedings, it is ordered that the name of respondent's restaurant may include the word Dera in it only if it is written in one line and in one font of equal size as "Fazl-e-Haq Dera". If the respondent does not comply with the direction within one month from the date of a certified copy of this order, the appellant may approach the learned trial Court for penal action against the respondent by striking out the word Dera from its name.

8. Appeal partly allowed. K.M.Z./M-939/L Appeal partly allowed.