P L D 1988 Karachi 569 (PLP)

This order will dispose of C . M . A . 5/ 86, an application filed in this suit by the plaintiffs seeking temporary injunction against the defendants. In this suit, the plaintiffs allege infringement of their registered trade mark by the defendants. It is also a passing off action. Both parties are manufacturers, sellers and exporters of macaroni, spaghetti and vermicelli. In the plaint, it is averred that the plaintiffs have been carrying on this business for over 25 years as a family firm and from 1975 as a private limited company. Paras. 3 and 4 of the plaint are reproduced here:‑ "The plaintiffs are marketing or selling and supplying their goods among others under mark "Kolson's Pasta" shown in Annexure 'A' herewith, which includes word "Kolson" derived from their name as part of their mark for over last 20. years in labels . imprinted on bags of 450 grams bearing their said mark shown and which mark the plaintiffs got registered on 20‑12‑1980 under Trade Marks Act. Photostat copy of Certificate of Registration is marked '13' and herewith annexed. The Trade Mark was advertised before acceptance in Trade Marks Journal No.375 Vol.XXXII dated 1‑4‑1982 in class 0 page 131.4 with disclaimer to exclusive use of word "Quilite Superieure". Photostat copy of the Journal is annexed and marked "B‑1". The mark was registered without any opposition. The plaintiffs lave applied for certified copy of their registered Trade mark and will produce the same when received. The plaintiffs' mark "Kolson's Pasta" printed on bags has a distinctive shape and get up on colour scheme shown in Annexure 'A' herewith which includes word "Kolon", figure or device of "white Duck printed upon abstract geometrical device of "bowl and lid" in green and its bottom in red colours, figure of duck, words "Kolson's Pasta" and other descriptive matters printed ire white can front as well as registered without limitation s to colours but the plaintiffs have, since registration adopted and are continuously using the green, red and white colours in the distinctive manner as shown above to identify and distinguish their goods." The case of the plaintiffs is that their goods (vermicelli and All the products) under the mark "Kolson's Pasta" have acquired a reputation for high quality among consumers inter alia in countries of Persian/Arabian Gulf and the Middle East and they are the largest manufacturers and exporters from Pakistan of these types of goods and , that they have built up an extensive market for their goods under the sail hark in the said countries and the product of the plaintiffs is known and identified by its distinctive mark, get up and colour scheme. The plaintiffs allege that in November, 1985 the defendants started using, for their products, lags with marks, including get up and colour scheme of plaintiffs' registered trade mark, by imitating and adopting the features of plaintiff trade mark and replacing defendants' earlier distinctive mark. according to the plaintiffs, the new mark adopted by the defendants in November, 1985 infringes the registered mark of the plaintiffs and the defendants are dishonestly passing off their goods as the geode of the plaintiffs by use of the new marl. Pare. 9 of the plaint reeds as under;‑ "9. 'The goods of plaintiffs and the defendants are of the same description and are sold in the same markets and shops and countries and are purchased by consumers of all sorts including housewives, servants and illiterate and uneducated persons. The gods of the defendants in impugned bags are infringing registered Trade mark of plaintiffs and are causing confusion and deception ire the minds of the purchasers and also goods of defendants are being passed off as goods of plaintiffs". This suit was filed on ‑1‑1986 praying for an injunction restraining the defendants from using bags with infringing mark and for a direction to deliver the infringing material. Prayer has also been made for rendition of accounts of sales and profits made by the defendants on sales of their gads under the challenged mark. The plaintiffs lave also claimed Rs.2000000 as compensation. In this suit, C.M.A. 51/86 has been filed by the plaintiffs under Order XXXIX, rules 1 and 2 read with section 151 C.P.C. seeking a temporary injunction restraining the defendants from using the challenged mark (Annexure ".E.2" to the plaint) on the bags in which their goods are wrapped. The application for .temporary injunction is hotly contested by the defendants who have filed a counter‑affidavit challenging the various claims made by the plaintiffs. In the counter‑affidavit, inter alia the following pleas have been taken by the defendants:‑ (a) The plaintiffs have not been selling goods under the mark "Kolson's Pasta" for the last 20 years; (b) Registration of plaintiffs' mark is not admitted. It is averred that without certified copy of the register of Trade Marks under section 75 of the Trade Marks Act, 1940, there is no prima facie evidence of the registration of the plaintiffs' mark; (c) The application for registration of their mark made by the plaintiffs was fraudulent and based on misrepresentation as their mark was copied from the French Trade Mark "Pates Panzani" which is owned by a French company and that the mark of "Swan" had been taken from the French Trade Mark "SIPA" owned by another French company; (d) The colour green and red are common to the trade in question; Goods of both parties are exported to Saudi Arabia and Gulf States and the importers in those countries know from whom and whose goods they are buying; The plaintiffs are not the largest manufacturer of these goods; The defendants have been using the challenged mark (Annexure 'E‑2') and offered their goods under this mark to customers in Saudi Arabia and Gulf States since 1980 and it was denied that this mark was introduced by the defendants in November, 1985; (h) It is denied that defendants' mark is ,a copy of plaintiffs' mark. Imitation is denied; (i) It is averred in para. (8) of the counter‑affidavit as follows:‑ "That the lettering of the trade mark, the trade name are totally different and the design is substantially different. Besides the mark of the plaintiffs has a white swan in a red circle which totally does not exist in the mark of the defendants' while the back sides of the two plastic wrapping film bags are totally different. The back side of the plaintiffs' bag has two parallel red stripes showing the manner in which the dish is made in English and in French while that of the defendants has the same figure in green and red with words in the green portion "Ajian Crispo" and "Man Sanaf A1 Aala" in Arabic in the red portion. These are more than enough distinct differences to draw the attention of even an unwary purchaser, to the different origin of the goods, who is not expected to keep his eyes shut." It may be observed here that the defendants have also filed their statement in which the same pleas have been taken.

2. I have heard at length the arguments of Mr. J.H. Rahimtoola, learned counsel for the plaintiffs and Mr. Iqbal Kazi, learned counsel for the defendants. I may at the outset refer to the preliminary objection raised by Mr. Kazi that as certified copy of the register of Trade Marks has not been filed there is no prima facie evidence that the mark of the petitioner is registered. Reliance had been placed on section 75 of the Trade Marks Act 1940 which reads as follows:‑ "75(1) A printed or written copy, of any entry. in the register, purporting to be certified by the Registrar and sealed with the seal of the Trade Marks. Registry shall be admitted in evidence in alt Courts in Pakistan and in all proceedings without further proof or production of the original. (2) A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing that' he is authorised by this Act or the rules to make or do shall be prima facie evidence of the entry having been made, and of the contents thereof, or of the matter or thing having been done or not done." The suit has not reached the stage of trial. Issues are yet to be settled. At this interim stage the following material is available on record in connection with the registration of the plaintiffs' mark:‑ (a) Affidavits on behalf of the plaintiffs; (b) Copy of the certificate of registration (Annexure 'B' to the plaint) dated 1‑11‑1982 of the Registrar of the Trade Marks, Trade Marks Registry, Karachi to the effect that the plaintiffs mark has been registered on 20‑12‑1980; (c) Copy of extract from page 1314 of Trade Marks Journal No.375 Volume XXXII; dated 1‑4‑1982 showing advertisement of plaintiffs' mark in the Journal before acceptance. It may further be observed that Annexure 'B' to the plaint, copy' of the certificate of registration of the plaintiffs' mark, has not been denied by the defendant and then on this objection, premised on section 75 of the Trade Marks Act, having been raised in the counter affidavit on behalf of the defendants the plaintiffs have filed alongwith their rejoinder copy of the relevant entry in‑ the Register of Trade Marks relating to the registration of the plaintiffs' trade mark. This copy has been issued under section 75 of the Trade Marks Act read with Rules 82‑83 of the Trade Marks Rules. The above documentary material prima facie shows that the plaintiffs' mark is registered. The preliminary objection raised on behalf of the defendants in this regard has no merit. 3.. As noticed earlier, the case of the plaintiffs' is that the challenged mark is, similar to the plaintiffs' mark and will cause confusion in the minds of the ultimate purchasers who go to the market for purchasing plaintiffs products. A great deal of arguments were addressed by learned counsel on the type of the purchaser who is likely to be deceived by resemblance of the marks. Mr. Iqbal Kazi, learned counsel for the defendants, had stressed that it is not the unwary purchaser who is relevant. but the purchaser with average intelligence and average recollection that is a customer. who knows the distinguishing features of the product he wishes ‑to buy. It was contended that there are three vital differences, apart from other differences; between the two marks and these are:‑ (i) The trade names are different‑‑" Kolson" of the plaintiffs and "Crispo" of the defendants.. (ii) Plaintiffs' mark has a red cricle with .a swan which is not there in the mark of the defendants. (iii) Back side markings on the wrapping bags are completely different. According to Mr. Kazi, all the similarities and differences taken together, the two marks were not so similar that one product may be taken for the other and that in the course of trade there was no likelihood of deception. In support of this contention and on similarities Mr. Kazi cited the following reported judgments‑.‑ (i) Pakistan Soap Factory v. Chittagong Soap Factory P L D 1970 S C 460. (ii) Sunkist Growers Inc. v. Karachi Aerosol Col. Ltd. P L D 1987 Kar. 119. . (iii) Abdul Wahid v. Abdul Rahim P L D 1973 S C 104. (iv) .National Electric Fans Manufacturers v. S. .Muhammad Din and Sons Ltd. 1980 S C M R 97. (v) Lever Brothers Ltd. v. Bedingfield (1899) 16 R.P.C. 3. (vi) Payton & Co. Ltd. v. Titus Ward & Co. Ltd. (1900) 17 R.P.C. 58. (vii) Claudius Ash Sons & Co. Ltd. v. Invicta Manufacturing Company Ltd. (1911) 28 R.P.C: 597. (viii) Master Thread Ball Works v . H . A . Karim P L D 1969 Dacca 734. (ix) Thomas Bear & Sons (India) Ltd. v. Prayag Narain A I R 1940 P.C. 86. (x) Modi Sugar Mills v. 'rata Oil Mills A I R 1943 Lah. 196. (xi) Lipton Ltd. v. Frontier Camellia P L D 1954 Sind 124. (xii) Rexona Proprietary Ltd. v. Majid Soap Works P L D 1956 Sind 1. (xiii) The Coca Cola Co. of Canada Ltd. v. Pepsi Cola Co. of Canada Ltd. (1942) 59 R.P.C.

127. Reliance was also placed on the law of Trade Marks by Venkateswaran, 1945 Edition, at pages 259 to

262. Mr. Iqbal Kazi, learned counsel for the defendants also referred to the Division Bench judgment of the Lahore High Court in the case of Insaf Soap Factory v. Lever Brothers Port Sunlight Ltd. P L D 1959 Lah. 381 in which the test of "unwary purchaser" was approved and which judgment was followed by me in Burney's Industrial and Commercial Co. Ltd. v. Rehman Match Works P L D 1983 Kar.

357. Mr. Kazi reiterated that the test of "unwary purchaser" is not the correct test in law and the Division Bench in the Lahore High Court in P L D 1959 Lah. 381 had erred in approving such test. I do not find much difference between an "unwary purchaser" and a purchaser of average intelligence with usual imperfections of memory. When reference is made to a purchaser in this context, it is reference to a purchaser of goods belonging to the category or class of purchasers who normally or usually purchase such goods. For instance purchasers of computers would in almost all cases be literate persons with reasonable educational qualifications or background and the level of their intelligence would generally be higher than the intelligence of an average housewife. Housewives belong to another A class of purchasers whose purchases in the market are generally for day‑to‑day and routine requirements of. their house and members of their households including themselves. In trade mark actions, when reference is made about the likelihood of deception amongst purchasers, one does not deal with purchasers in the abstract. If the item available in the market is generally purchased by housewives, the test would be whether an average housewife would be deceived or not. When we talk of average customers, concession must be given for imperfect recollection and mistakes that are made by such average customers. Average customers are neither too clever nor fools and neither over careful nor over careless Clark v. Sharp (1898) 15 R.P.C.

141. They are persons possessed of an average memory with its usual imperfections (1942) 59 R.P.C.

127. An average customer is not an imbecile‑ Red daway & Co. Ltd. v. Frictionless Engine Packing Co. Ltd. (1902) 19 R.P.C.

505. Saleem Akhtar, J. of this Court observed as under in P L D 1987 Kar. 119:‑ "Therefore, while judging the question of confusion or deception likely to be caused the Court has not to take into consideration extraordinary or abnormal person but a purchaser of ordinary and average intelligence, understanding and comprehension giving due allowance to usual imperfections of memory, sight, hearing and intellect." ' An average .customer with usual imperfections of memory, who is not very careful but who is also not ignorant or an imbecile, can perhaps be described as "an unwary purchaser". The selection of the words is perhaps not very appropriate and if the term gives the impression of an imbecile, the choice of words is not correct. I am, therefore, of the view, as observed earlier, that there is not much difference between the term "an unwary purchaser" and a purchaser of average intelligence with usual imperfections of memory. Use of the term an average customer or purchaser with usual imperfections of memory instead of an "unwary purchaser" would, however, be more appropriate. Here reference may be made to a previous judgment given by me and reported in P L D 1983 Kar.

357. There, relying upon P L D 1959 Lah. 381, I had observed as follows:‑ "I may observe that what has to be determined in such cases is whether the unwary purchaser is likely to be misled or deceived. The test is not whether an intelligent or. careful purchaser is likely to be deceived. The test is neither that a customer of average intelligence exercising ordinary caution is likely to be misled. It may be repeated that the test is whether the unwary or incautious or careless or unguarded purchaser is likely to be misled or deceived into purchasing the goods of the proprietor of the trade mark." The words "unwary", "incautious", "careless" and "unguarded" do not mean imbeciles or fools. These words refer to customers who are not on their guard against dealers in goods who are out to deceive them by bringing in the market goods bearing infringing marks. They refer to average customers with usual imperfections of memory. As they. have imperfect memories they cannot be described as careful or cautious purchasers: It may be pointed out that even the Supreme Court of Pakistan has referred to the "unwary purchaser". In Pak Soap Factory v. Chittagong Soap Factory P L D 1970 S C 460 at 464 after pointing out a striking difference between the two marks it was observed thus:‑ "Instead of creating any confusion, it should prevent any such confusion even in the mind of the unwary purchaser. An unwary purchaser is not expected to exercise wariness but is expected also not to keep his eyes shut." I may, however, observe that the use of the words "unwary",: "incautious", "careless" and ".unguarded" was perhaps not very appropriate and the term an average customer with usual imperfections of memory would have been more appropriate.

4. At this interim stage I am only required to give my tentative view about, the deceptive resemblance of the two marks. There are certainly some differences between the two marks and if the wrappers of the two parties are placed side by side an average customer will note the differences and perhaps will not be deceived. But as observed by Noorul Arfin, J. in P L D 1967 Kar. 492 Bandenawaz Ltd. v. Registrar of Trade Marks, for purposes of resemblance, the two l marks should not be compared side by side and the question in cases L of alleged conflict between two marks always is whether a person Will be deceived when he sees one mark in the absence of the other. The purchaser of the product in question‑vermicelli‑available for sale in markets, retail shops and super‑markets would generally be a housewife or a servant and, in lower middle. class and poor families having no servants, a male member of the family in case the housewife does not go out for household purchases. On examination of the two marks, notwithstanding differences pointed out by learned counsel for the defendants, it prima facie appears that an average customer of this product with usual imperfections of memory is likely to be deceived into. buying defendants' product with their mark (Annexure "E‑2" to the plaint) under the impression that he was buying plaintiffs' product with their mark (Annexure 'A' to the plaint). This prima facie view is based on taking the mark of the defendants as a whole. As observed earlier, the mark of the defendants (taken as a whole) is, prima facie, likely to deceive the average customer of the plaintiffs' product in question.

5. The plaintiffs' case is that they got their mark. registered in 1980 and they have been using this mark for the last 20 years in labels printed on bags in which their product is packed. It is also their allegation that from December, 1985, the defendants started using the mark (Annexure 'E‑2' to the plaint) which resembles the mark of the plaintiffs and prior to that they had been using 'a mark (copy filed as Annexure 'E‑1' to the plaint) which mark is totally different from the plaintiffs' mark and the mark used since December, 1985 by the defendants. The allegations of the plaintiffs have been denied by the defendants. The documents filed with the plaint and the fact that the plaintiffs' mark is registered since December, 1994 and the affidavits on behalf of the plaintiff prima facie support the position taken by the plaintiffs. The defendants had taken the position in their counter‑affidavit that they have been using the challenged mark since 1980, but, as observed earlier, the documents filed by the plaintiffs indicate that the defendants started using the challenged mark some time in 1985. It is an admitted position that before registration of the plaintiffs' mark, it was advertised in the Trade Marks Journal and that no opposition had been filed by the defendants against the acceptance and registration of the plaintiffs' mark. If the defendants had been .using this mark since 1980, and as prima facie the plaintiffs' mark and the challenged mark resemble each other, it was expected in the normal course of things that the defendants would have filed opposition to the acceptance and registration of the plaintiffs' mark. Admittedly this was not done.

6. It had also been contended on behalf of the defendants that the plaintiffs' mark is a copy of the foreign French marks but this has been denied by the plaintiffs. Except filing copies of the alleged French marks, at this 'stage, there is no material on record which would prima facie show that the plaintiffs have copied some foreign marks.

7. As observed in the earlier part of this order, the product of the plaintiffs as well as of the. defendants is exported to Middle East and Arabian Gulf countries. Obviously the importers in these foreign countries of the products of the plaintiffs and the defendants would not be deceived and must be aware of the fact whether the product was of the plaintiffs or of the defendants. The deception would be caused upon the ultimate purchasers in the market and retail shops in the foreign countries. Mr. J . H . Rahimtoola, learned counsel for the plaintiffs, had argued that as the wrappers bearing the challenged mark are printed in Pakistan, the plaintiffs are entitled to maintain a suit for injunction restraining the defendants from using the challenged mark notwithstanding the fact that the goods are exported and ultimately sold in the foreign countries. Mr. J.H. Rahimtoola had referred to para. 175 of Vol. 48 of Halsbury's Laws of England, 4th Edition, which para is reproduced herein:‑ "

175. Passing off where misrepresentation is made indirectly. A trader is not permitted to use any mark, device or other means whereby, although he does not make a false representation to a direct purchaser‑of his goods, he enables such a purchaser to make a false representation to ultimate purchasers of those goods. Where goods are sold to trade customers who are not themselves deceived but the goods are so marked or got up as to be calculated to deceive ultimate purchasers, the plaintiff's cause of action for passing off is regarded as complete, both at law and in equity, as soon as the goods are disposed of to the trade customers. It is not enough that the goods are merely capable of being used by dealers to perpetrate frauds on their customers; the goods, or leaflets or other material supplied with them, must be intended or must be of such a nature as to suggest, or readily or easily lend themselves to, such passing off, as otherwise the consequence is too remote to be attributed to the supplier of the goods. The fact that some middlemen have chosen to pass off goods which are capable of being sold in a perfectly lawful manner does not mean that the supplier has caused or enabled the passing off. Goods may be regarded as calculated to deceive when they are marked with a distinctive feature by which the plaintiff's goods have become known in the market which enables dealers to supply them in response to requests for the plaintiff's goods. It is unnecessary that the goods should actually be marked deceptively when they. are supplied to middlemen if the goods, packaging or labels are supplied in component form for the purpose of final assembly into products which will be deceptive. The supply of goods in the United Kingdom for export to a country where they are calculated to deceive amounts to passing off, at least where the trader in the United Kingdom has sufficient knowledge that the sale of the goods abroad will be deceptive. Similarly, indirect misrepresentations may be made in connection with the passing off of services or businesses, although such a misrepresentation occurs more rarely than in connection with the passing off of goods." Learned counsel had also referred to section 21 of the Trade Marks Act, 1940 and submitted that being the owner of the registered mark, the plaintiffs have the exclusive right to use the said mark and as the defendants' challenged mark is printed in Pakistan, the use is in Pakistan. Learned counsel for the plaintiffs had also relied upon the following judgments:‑ (a) Johnston & Co. v. Orr Ewing (1882) 7 Appeal Cases 219. (b) George Ballantine & Son Ltd. v. Ballantyne Stewart & Co. Ltd. (1959) R.P.C. 273 at 281. (c) Price's Patent Candle Co. Ltd. v. Ogstan (1909) 26 R.P.C. 797. (d) K.S. Sulemanji Esmai1ji & Sons v. M. Sulemanji & Co. btd. 1986 CLC 775.

8. Mr. Iqbal Kazi on the other hand had submitted that this Court will not grant an injunction on the ground that persons in Saudi‑Arabia or other foreign countries will be deceived. According to the learned counsel, infringement must occur within Pakistan and reference was also made to section 21 of the Trade Marks Act submitting that although the goods are manufactured in Pakistan but not for any trade in Pakistan and the trade in the goods of the defendants with the challenged mark takes place in foreign countries. It was contended that as there was no use in the course of trade in Pakistan the goods not being sold in Pakistan‑‑the case of the plaintiffs is not supported by section 21 of the Trade Marks Act. Learned counsel also relied upon the following judgments:‑ (a) Bulcan v. Palanichany A I R 1969 Calcutta 43. (b) In the matter of Bagots Hutton & Co. Ltd. 33 R.P.C. 357. (c) Hassan el‑Madi's Application 71 R.P.C. 281.

9. Admittedly the wrappers of the defendants are printed in Pakistan and, after the goods of the defendants are packed in such wrappers, such goods are exported for sale in foreign countries. Prima facie I am of the view that the action of the defendants in getting the wrappers printed with the challenged mark in Pakistan. which mark prima facie resembles the mark of the plaintiffs, and the goods of the defendants being wrapped iii Pakistan in such wrappers, the defendants are apparently using the goods with the challenged mark in the course of trade in Pakistan. The action for injunction restraining the defendants from using the said mark is, therefore. apparently maintainable in this Court. Perhaps the position might have been different if the printing of the defendants' wrappers with the challenged mark and packing of defendants' product therein was done outside Pakistan. However, it is not‑necessary to consider this point as admittedly the printing of packings /wrappers and packing of defendants' products is done in Pakistan..

10. I am, in the circumstances, of the view that the plaintiffs have made out a case for grant of interim relief. Till the disposal of this suit, the defendants are restrained from using the challenged mark (Annexure E‑2 to the plaint) on their goods. C.M.A. 51/86 stands disposed of. M.B.A./K‑97/K Injunction granted.