2009 PLP 1005 (CLD)

SYED HAMID ALI SHAH, J.

Messrs National Tool Industry (Registered), appellant herein instituted a suit before learned District Judge, Rawalpindi under section 73 of the Trade Marks Act, 1940, for permanent injunction and recovery of damages against the respondent. The respondent contested the suit and out of the divergent pleadings of the parties, 7(seven) issues were framed and the evidence of the parties was recorded in response thereto. Learned District Judge, Rawalpindi on conclusion of the trial, vide his judgment and decree dated 9-5-2000, dismissed the writ of the appellant, holding therein that the trade mark used by the defendant is distinct, leaving no similarity with the trade-mark of the respondent. While reaching the said conclusion, it was observed by the learned Court that the appellant has failed to prove that anyone has been deceived by the trademark of the defendant.

2. Learned counsel for the appellant has contended that tine appellant is a registered proprietor of the trademark vide Serial No.79351 with effect from 2-4-1983. The appellant is selling shovels bearing the trademark of one cancel and falls in the category of Tools and Instruments thrilling part of clause 8 of schedule

2. The defendant's trademark is identical in every respect to that one of the appellant's except that it contains two camels. Learned counsel while referring to order dated 9-12-1986 submitted that the only plea of the defendant in the snit, was dissimilarity. The defendant had not taken the plea of prior use of the trademark. He has added that Issues Nos.2 to 4 were decided in the impugned judgment in favour of the appellant; plaintiff and the findings of learned trial Court qua issues Nos.1, 5 and 6 were against the plaintiff/appellant which are now assailed in this appeal. Learned counsel contended that while passing the impugned judgment has observed that the impugned trademark is not identical Learned Court has not compared both the trademarks side by side. Learned Court has failed to ascertain the fact that both the trade marks so merely resemble that there is every likelihood to deceive the customer. Learned counsel submitted that comparison by learned Judge, is valid and recognized manner for determining time similarity or otherwise of the impugned trademark. Learned counsel in support of his contentions relied on the cases of "Bashir Ahmad v. Registered Firm Hafiz Habibur Rehman and another" 1980 CLC 1268 and "Austin Nichols and Co. v. The Assistant Registrar of Trade Marks, Karachi" PLD 1993 Kar.

129. Learned counsel went on to argue that the evidence of' the expert witness is of no avail and supported this contention by relying on the cases of "Messrs Burney's Industrial and Commercial Co. Ltd. v. Messrs Rehman Match Works" PLD 1983 Karachi

357. Learned counsel emphasized that the impugned judgment was passed and is now defended by learned counsel for the respondent, on the premises that there is no evidence to prove deception. He added that when get-up is so close that it can be ascertained, merely on it's cursory look, no evidence of deception is needed. Learned counsel supported this contention, by referring to the cases of "Messrs K.S. Sulemanji Esmailji and Sons v. Messrs M. Sulemanji and Company Ltd." 1986 CLC 775 and "Kaviraj Pandit Durga Dutt. Sharma v. Navaratna Pharmaceutical Laboratories" AIR 1965 SC

980. He further submitted that to ascertain deception, over all similarity is to be seen and in this exercise the pattern, the size and the colours, are the parameters to judge the similarity. While placing reliance on the cases of "Jamia Industries Ltd. v. Caltex Oil (Pak) Ltd. and another" PLD 1984 SC 8 and National Match Works. Sivakasi, v. S.T. Karuppanna Nadar (died) and others AIR 1979 Madras 1957, it was contended that broad and essential features in competing trademarks are to be taken into consideration. It was argued that in the comparison of trademarks, the Court has to examine and decide the controversy from various angles namely similarity and dissimilarity of trademarks, over all get-up and to find that unwaried purchasers can be deceived in view of close resemblance. The issue of deception can be decided by comparing both the trademarks side by side. Learned counsel submitted that U.W.2, in his cross-examination has admitted that trademark is pasted around the handle of the shovel horizontally. He then submitted that when trademark is pasted around the handle one camel disappears and the other becomes conspicuous. Learned counsel while discussing the evidence has submitted that D.W.1 appeared himself and D.Ws Nos.2 to 4 are the shopkeepers of Mochi Bazar, Rawalpindi. They slated that there was no complaint from the customers that they wanted to purchase the shovel with one camel but the shovel having the trademark of two cancels was sold to them. Learned counsel submitted heat no purchaser was brought to witness box but the sellers who sell the shovels of the defendant/respondent. The witnesses are interested witnesses and their statement cannot be relied upon.

3. Learned counsel for the respondent, on the other hand, has submitted that the appellant is manufacturing shovel with it's trademark "single camel" and the same is registered. While the respondent is manufacturer of shovel carrying the label of "two camels". The appellant has filed a suit for injunction and recovery of damages. He failed to produce a single witness from Rawalpindi who stated that he was misled while purchasing the shovel due to similarity of the brand of the respondent. He added that the appellant has no agent selling his brand in Rawalpindi. Thus the claim of damages is false and not legally tenable. He went further to argue that onus to prove issues Nos.3 to 6 was on the plaintiff who failed to prove the same. P.W. 1 the star witness has not stated anything towards infringement of the trademark. He added that it was a primary responsibility of the appellant to prove infringement of the brand/label. There is remarkable difference between the two brands. The brand of the appellant conspicuously mentioned name of it's manufacturer "National Tools" while the brand of the respondent contains the name of it's manufacturer "Azhar Enterprises". The buyer, through a glance at the brand name, earl differentiate between the two. Learned counsel while referring to the case of "Formica Corporation v. Pakistan Formica Ltd." 1989 SCMR 361 contended that primary test to decide whether a trademark which was owned by another has become publics juris is to sec whether it's use by other persons is still calculated to deceive the public. Learned counsel then contended that where an unwary user is likely to be deceived, is the test wherefrom infringement of the trademark can be ascertained. Mere similarity of competing trademarks is not enough. What has to be adopted is that both the trademarks are so striking that an unwary purchaser would be deceived. Learned counsel in support of his contention has referred to the cases of "Jamia Industries Ltd. v. Caltex Oil (Pak) Ltd. and another" PLD 1984 SC 8, "Insaf Soap Factory v. Lever 13rothers Port Sunlight Ltd." PLD 1959 (W.P.) Lahore 381 and Bandenawaz Ltd. v. Registrar of Trade Marks. Karachi and another" PLD 1967 Karachi

492. Learned counsel submitted that trademark should not be placed side try side to land out the similarity. He added that both the brand of trademarks should not be compared side by side as alleged by the appellant but infringement has to be tested while comparing one mark in the absence of outer. He supported his contention from the dictum laid down in the case of 'The Welcome Foundation Limited v. Messers Karachi Chemical Industries (Private) Limited" 2000 YLR 1376.

4. Heard learned counsel for the parties and record perused.

5. Learned counsel for the respondent mainly defended the impugned judgment and decree of learned trial Court on the plea that the infringement of a registered trademark is essentially proved from evidence showing that get up of two trademarks/brands is similar and there is every likelihood of deception by an unwary purchaser. A plaintiff has to lead evidence in this regard and in the absence of such evidence, suit is not liable to be decreed. The contention of learned counsel for the respondent is not convincing. Similarly the observation of the learned Court, is that the plaintiffs failure to produce witness deposing that he fell victim to misunderstanding because of similarity of the trademarks is not well founded. The plaintiff was non-suited on this sole reason/plea, erroneously. Section 21 of the Trade Marks Act, 194.0 is relevant which reads as under:-- "21(1) Subject to the provisions of sect ions 22, 23 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trademark in relation to those goods and, without prejudice to the generality of the foregoing provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the trademark or a registered riser thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it. as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either-- (a) as being used as a trade mark; or (b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such person as aforesaid is connected in the course of trade."

6. Perusal of the above provision of law reflects that the legislature in it's own wisdom has used the terms "likely to deceive" and "cause confusion". The term "likely to deceive" is wide enough to negate the stance of' the respondent drat absolute proof is needed to make out a case of infringement of trademark. A plaintiff can establish the case of infringement of trademark, by proving that impugned trademark has caused confusion or it so nearly resemble with registered trademark that there is likelihood of it's deception, without calling the witness in the witness box, who was so deceived.

7. Necessity of leading evidence to prove the infringement of trademark came up for consideration before the superior Courts and the issue was examined in the following cases, as under:-- (i) The Privy Council in the case of "Lever v. Goodwin" (1887) 36 Ch. D.1) observed that in the matter where there is no evidence that no one has in fact being deceived is immaterial. It is not necessary that there should be evidence that no one in fact had been deceived. It is enough it the plaintiff satisfies the Court that lire defendant's goods marked in the manner so as to lead the purchaser to believe that there being the goods of the plaintiff. (ii) In the case of "Messrs Burney's Industrial and Commercial Company Limited v. Rehman" PLD 1983 Kar.357, Honourable Sindh High Court observed that evidence of an expert witness or an intelligent customer or even a customer of average intelligence who takes ordinary care while buying goods in the market, world not be relevant as the lest is that of an unwary purchaser and it is only the evidence of an unwary purchaser which would be relevant. Learned Court went further and observed that some witnesses for the plaintiff, in a trademark infringement action, may state that they were deceived by the infringing mark whereas other witnesses giving evidence for the defendant may depose to the contrary. It may, therefore, be observed that invariably the Court, alter taking into consideration the two marks, the registered and the infringing, decide whether the unwary purchaser is or is not likely to he deceived.

8. Survey of above case-law and the provisions of section 21 of the Act, 1940 (now repealed) brings me to conclude that infringement of trademark cannot be proved through bringing the buyers in the witness box. Each side can lead the evidence of it's own choice and pass through the test of cross-examination. The Court can examine the material relevant evidence and two marks and decide that the unwary purchaser is or is not likely to be deceived.

9. Learned Court has non-suited the plaintiff and dismissed the suit on the solitary ground that no witness was produced in evidence to prove that at the time of purchase he (the witness) was deceived. Learned Court has not only committed material irregularity while reaching this conclusion but has neglected to follow the law settled through various judgments of the superior Courts. The impugned judgment and decree is based on wrong assumption of law and as such it is not sustainable.

10. Now, I will advert to the instant controversy. On mere examination of both the trademarks, it is evident that colour scheming, border, design and get up, is similar and closely resembled. Normally, in a picture sky is portrayed in blue while soil/ground is shown as green. In the registered trademark, the background is yellow and ground is red with grey strips. The respondent has dishonestly followed the same pattern and used the same colour scheme, opting to make his label identical and similar to that one of the appellant. No doubt that both the labels are worded differently. The label of the appellant comprises of the word "Improved" while the respondent's, label carries the words "'Two Camels". The address mentioned in the former label is National Tool Industry Chowk Kotli Behramji Sialkot No.3, while Azhar Enterprises Umar Road, Rawalpindi is the address mentioned in the latter label. Lower portion of both the labels is similarly worded. Both the labels comprise three parts and their colour scheming and size create the element of deception. No matter both the labels are examined side by side, or one in the absence of other. The deception becomes more conspicuous when the label is affixed at the handle of the shovel, which is round in shape. If infringing label is fixed at the top of the handle one of the camels becomes invisible and gives impression of one camel instead of two camels. An unwary purchaser in the instant case is whether a farmer or a labourer or an illiterate person, as the tool is meant for this class of users. Such class of purchasers cannot distinguish the label by the English words used therein. They normally purchase the product by device or get up. This aspect cannot be ignored.

11. The claim of the appellant for damages is permissible only when the damages claimed are asserted in the suit under each head separately and proved through cogent evidence. The appellant has failed to prove damages and his claim has rightly been declined by learned trial Court. Thus, the appeal to this extent is dismissed.

12. For the foregoing, this appeal is partially allowed, the judgment and decree of learned trial Court qua dismissal of the claim of the appellant for infringement of trademark is set aside, the suit of the plaintiff is decreed for permanent injunction, restraining the respondent from infringing the appellant's registered trademark. Parties are left to bear their own costs. M.H. /N-31 /L Order accordingly.