1999 PLP 1010 (YLR)

Jamia Industries Ltd. v. Caltex Oil (Pakistan) Ltd., Karachi PLD 1973 Kar. 246; Jamia Industries Ltd. v. Caltex Oil (Pak.) Ltd. and another PLD 1984 SC 8; Cecil De Cordova and others v. Vick Chemical Company PLD 1951 PC 108; Rexona Proprietary Ltd. v. Majid Soap Works PLD 1956 Sindh 1; Messrs K.S. Sulemanji Esmai1ji & Sons v. Messrs M. Sulemanji & Co. Ltd. 1986 CLC 775; Burney's Industrial and Commercial Co. Ltd. v. Muhammad Ismail 1982 CLC 2468; Messrs Burney's Industrial and Commercial Co. Ltd. v. Messrs Rehman Match Works PLD 1983 Kar. 357; Messrs Hiralal Parbhudas v. Messrs Ganesh Trading Company and others AIR 1984 Born. 218; Prem Nath Mayer v. Registrar of Trade Marks AIR 1972 Cal. 261; Parle Products (Pvt.) Ltd. v. J.P. & Co., Mysore AIR 1972 SC 1359; Insaf Soap Factory v. Lever Brothers, Port Sunlight Ltd. PLD 1959 (W.P.) Lah. 381; Ferozuddin v. Muhammad Shafi PLD 1975 Kar. 486; The Coca‑Cola Co. of Canada Ltd. v. Pepsi‑Cola Co. of Canada Ltd. (59) RPC 127; Pianotist Company Ltd.'s case (1906) 23 R.P.C. 774; Bagots Hutton & Co. Ltd.'s case (1916) 33 R.P.C.

357. Angus Watson & Co.'s case (1911) 28 R.P.C. 313; R. Demuth Limited's case (1948) R.P.C. 342; Hellena Rubinstein Ltd.'s case (1960) R.P.C. 229; The Monarch Company Inc. v. The Seven‑up Company 1993 SCMR 758; Pakistan Soap Factory v. Chittagong Soap Factory and another PLD 1970 SC 460; Seven‑up Company v. Assistant Registrar of Trade Marks II and another 1992 CLC 694; Messrs Aftab Soap Factory Ltd. v. Mujahid Soap Factory, Rawalpindi and another 1991 SCMR 796; Pakistan Tobacco Company Ltd. v. West End Tobacco Company 1992 CLC 1728; Premier Tobacco Industries Ltd. v. Prince Cigarette Industries (Pvt) Ltd., F.A.O. No.35 of 1992; Khan Iftikhar Hussain Khan of Mamdot v. Messrs Ghulam Nabi Corporation Ltd. PLD 1971 SC 550; Government of Pakistan v. Premier Sugar Mills and others PLD 1991 Lah. 381; Messrs Standard Hotels (Pvt.) Ltd. v. Messrs Rio Centre and others 1994 CLC 2413 and Abdul Rahim and 2 others v. Messrs United Bank Ltd. PLD 1997 Kar. 62 ref. Saleem Ghulam Hussain for Plaintiff. Munawar Ghani for Defendants. This application has been filed by the plaintiffs under Order 39, Rules 1 and 2 read with section 151, C.P.C. praying therein for an order restraining the defendants from manufacturing, selling or offering for sale or for using, advertising the scheme, get up, style and design or any label, get up, chevron design with colourable imitation or any of them on the packet of "Ronson' till the final disposal of the suit.

2. The case of the plaintiff is that the plaintiffs are selling and exporting since 1972 millions of rupees cigarettes under the registered trade mark 'Morven Gold' with red chevron design with gold border and white back ground; the plaintiffs are also paying huge amount in excise duty; millions of rupees have been spent on advertisement, publicity and sales promotional activities on the said brand; the plaintiffs are registered proprietor of trade mark Morven Gold with its particular red chevron design in Pakistan and also other countries; chevron design is also registered under the Copyright Act; the Cigarettes of the plaintiffs are known by its red chevron design; the defendants in November 1998 launched their cigarettes under the brand name Ronson with the identical and confusingly similar red chevron design of the plaintiffs; the defendant got the registration of trade mark 'Ronson' Annexure 'BB' to the affidavit‑in‑rejoinder of the plaintiff but they started using red chevron label on their packet which is shown in Annexure "Q" to the plaint; the packets of the defendants are likely to deceive the unwary customers; the packets of the defendants will pass off to the consumer as the packet of the plaintiffs; the suit has been filed by a competent person; the person who has signed the plaint is duly authorized by the board of directors vide resolution, dated 13‑5‑1993 and Articles of association's the copies of the resolution and Articles of Associations have been annexed with the affidavit‑in‑rejoinder. In support of their case plaintiffs have relied upon the Annexure placed with the plaint and the affidavit‑in‑rejoinder; the cases of Jamia Industries Ltd. v. Caltex Oil (Pakistan) Ltd., Karachi PLD 1973 Kar. 246, Jamia Industries Ltd., v. Caltex Oil (Pak.) Ltd., and another PLD 1984 SC 8, Cecil De Cordova and others v. Vick Chemical Company PLD 1951 PC 108 have been referred on behalf of the plaintiffs to show that while comparing the trade marks, the emphasis should be laid on the essential feature of the mark. Paras. 17.48 and 17.49 of Law of Trade Mark and Passing Off, by P. Narayanan has also been referred to show that side by side comparison of the trade mark is not a sound one; labels, trade marks should be looked as a whole. In support of the injunction application the cases of Rexona Proprietary Ltd., v. Majid Soap Works PLD 1956 Sindh 1, Messrs K.S. Sulemanji Esmailji & Sons v. Messrs. M. Sulemanji & Company Ltd. 1986 CLC 775, Burney's Industrial and Commercial Co. Ltd. v. Muhammad Ismail 1982 CLC 2468, Messrs Burney's Industrial and Commercial Co. Ltd. v. Messrs Rehman Match Works PLD 1983 Kar. 357, Messrs Hiralal Parbhudas v. Messrs Ganesh Trading Company and others AIR 1984 Bom. 218, Prem Nath Mayer v. Registrar of Trade Marks AIR 1972 Cal. 261, Parle Products (Pvt.) Ltd. v. J.P. & Co. Mysore AIR 1972 SC 1359, Insaf Soap Factory v. Lever Brothers, Port Sunlight Ltd., PLD 1959 (W.P.) Lah.

381. In respect of passing off the cases of Ferozuddin v. Muhammad Shafi PLD 1975 Kar. 486 has been relied upon by the plaintiffs.

3. The case of the defendants is that they have not infringed the plaintiff's registered trade mark 'Morven Gold' packet/label with chevron design, colour scheme, get up and style; the defendant No.1 is in business since 1954 and has got a very high reputation and good‑will for producing high quality cigarettes; the defendant No.2 is a registered proprietor of trade mark Ronson; the defendant No.2 is the proprietor of other famous trade marks; under agreement, dated 14‑4‑1997 defendant No.2 appointed defendant No. l as licensee for user of various trade marks including the registered trade mark Ronson; the plaintiff's registered trade mark Morven Gold packet/label with chevron design is different from that of defendant's trade mark Ronson; the price of the packet of the plaintiffs is much higher than the price of the defendants and, therefore, there is no likelihood of any confusion as the customer usually knows the price of his brand of cigarettes; there are number of different striking features between the packets of the plaintiffs and that of the defendants; unless the plaintiffs make out a case under section 21 of the Trade Marks Act, 1940 that the trade mark of the defendants is identical to or so closely resemble with the registered trade mark of the plaintiffs and that the use thereof will cause confusion and deception in the normal course of trade; the plaintiffs are not entitled to injunction as prayed; the defendant No. l has incurred huge sum of money on the publicity of the brand Ronson and if an injunction is granted the defendants will suffer irreparable loss; the suit is not maintainable as it has been filed by a incompetent person not authorized by board resolution; on the ground of similarity of two trade marks, the defendants have referred to the case of The Coca Cola Co. of Canada Ltd. v. Pepsi Cola Co. of Canada Ltd. (59) RPC

127. In the matter of an application by the Pianotist Company Ltd for the registration of a trade mark (1906) 23 R.P.C 774, In the matter of an application by Bagots Hutton & Co. Ltd. to Register a trade mark (1916) 33 R.P.C.

357. In the matter of An‑us Watson & Co.'s application for registration of a trade mark (1911) 28 R.P.C.

313. In the matter of an application by R. Demuth Limited for the registration of a trade mark (1948) R.P.C.

342. In the matter of Hellena Rubinstein Ltd.'s application for the registration of a trade mark. (1960) R.P.C.

229. The Monarch Company, Inc. v. The Seven‑up Company 1993 SCMR 758, Pakistan Soap Factory v. Chittagong Soap Factory and another PLD 1970 SC 460, Seven‑up Company v. Assistant Registrar of Trade Marks II and another 1992 CLC 694 (Karachi). Messrs Aftab Soap Factory Ltd. v. Mujahid Soap Factory, Rawalpindi and another 1991 SCMR 796, Pakistan Tobacco Company Ltd., v. West End Tobacco Company 1992 CLC 1728 (Lahore), unreported judgment in the cases of Premier Tobacco Industries Ltd., v. Prince Cigarette Industries (Pvt) Ltd., (F.A.O. No.35 of 1992) passed by the Multan Bench of Lahore High Court on the ground that the suit has not been filed by an authorized person and therefore, it is not maintainable, the cases of Khan Iftikhar Hussain Khan of Mamdot v. Messrs Ghulam Nabi Corporation Ltd., PLD 1971 SC 550 (Lahore), Government of Pakistan v. Premier Sugar Mills and others PLD 1991 Lah. 381, Messrs Standard Hotels (Private) Ltd. v. Messrs Rio Center and others 1994 CLC 2413, Abdul Rahim and 2 others v. Messrs. United Bank Ltd. PLD 1997 Kar. 62 have been referred on behalf of the defendants.

4. Considered the cases of the parties and also perused the case law referred on their behalf. A cursory examination of the three Annexures i.e. H, H.1 and Q to the plaint (H and H‑1) of the Morven Gold and 'Q' of Ronson shows that the red colour chevron on Annexure "Q" is closely similar to the red colour chevron on Annexure "H‑1". At the first glance it looks that all three Annexures are packets of one and the same cigarette. Though it is true that on a detailed examination distinctive features are found but if one seen in the absence of other a confusion is likely to cause in the mind of the customers. All the grounds raised by the parties require a full‑fledged inquiry by recording the evidence. It is admitted that the defendants have not so far brought these packets in the market and they are intending to do so in future. At this stage if the cases of the two parties are placed in juxta‑position it will be appropriate that the defendants are restrained from using the red colour chevron design at their packets as they are not likely to suffer any substantial loss on the other hand if they are allowed to bring the disputed packets in the market the plaintiffs are likely to suffer irreparable loss and there is likelihood of multiplicity of litigation. To avoid such a situation it is just and proper that interim order passed earlier be confirmed. It may be to the advantage of both the parties that they expedite the matte and get it finally disposed of on merits. The interim order passed on 24‑11‑1998 is confirmed and the application C.M.A. No. 10231 of 1998 is allowed. H. B. T./L‑18/K Interim order confirmed.