1986 PLP 775 (CLC)

Mr. Rehmatullah learned counsel for the plaintiffs has replied to this argument by saying that the question of examining the evidence on various issues would arise only after issues are framed and the case is mature for recording evidence. According to the learned counsel for the plaintiffs his long standing in the market which is evidence from the fact that he applied for registration of the mark as early as 17‑5‑1979, although he was using it since 1965, would be enough to raise a presumption that he is the owner of this trade mark. So far as the question of proof of losses likely to be suffered is concerned, the learned counsel points out that the balance‑sheet of his business and other documents relating to export of his goods, the taxes paid thereon are more than enough to establish the volume of business which he is 'handling and which is likely to be affected by the infringement of the mark and passing of the goods by the defendants for the goods of the plaintiffs. In my opinion for the purpose of this application and in the circumstances of the case this material can be treated to be satisfactory so far as the requirements of the injunction are concerned. Nor there is any force in the contention of the learned counsel for defendants that because a copy of the certificate of registration Annexure 'B‑1' has been produced, it should be rejected outright because‑this certificate cannot be used for purposes of legal proceedings or for obtaining registration abroad, "as indicated by the footnote in the certificate itself. According to the learned counsel for the defendant if this certificate is excluded from consideration, nothing would be left to show that his mark is duly registered mark. Mr. Rehmatullah learned counsel for the plaintiffs has produced original certificate of the registration issued by the Registrar to show that the registration has been effected. Moreover the objection of the learned counsel for defendants may be technically right but factually it is not denied any where that registration has not been obtained by the plaintiffs. This formal objection also, therefore, fails. Before discussing the case‑law which has been profusely quoted by the two learned counsel in this case let us first have a look on a few section's of the Act to evaluate the claim of registration of a trade mark. I may observe that considerations for granting or refusing injunction in a case of trade‑mark are a little different than those applicable in cases of patent and designs, and, therefore, the decisions relied upon during the arguments of counsels relating to the Patent and Designs Act would not be of much assistance. In trade‑mark cases protection to the ownership of the trade‑mark would be readily given and injection should as a rule be issued to prevent infringement of the registered trade‑mark if other requirements are fulfilled. While in disputes relating to infringement of copy‑rights, in patents and designs, the Courts are reluctant to grant injunction and the defendant is usually ordered to file periodic accounts of the business during pendency of the suit. The reason is not far to seek. Registration of a patent or design is obtained by applying to the Registrar and after scrutiny of the application by the Registrar the Registration is granted. But it is not so where registration of a trade?mark is desired under the Trade Mark Act V of 1940 (hereinafter called the Act). The registration is regulated by a bunch of sections is Chapter‑III of the Trade Mark Act. After application for registration of the trade‑mark is filed in the Registry of the trade‑mark under section 14 of the Act, the Registrar may outright refused to accept the application or "may accept it absolutely or subject to such amendments, modifications, conditions or limitation, if any, as he may think fit." If the application for registration of a trade‑mark is accepted, the Registrar shall, as soon as may be cause the application to be advertised in the Trade Mark Journal in the prescribed manner and any person may after this advertisement give notice of opposition to the registration in terms of section 15 of the Act. After the opposition has been received, the Registrar shall furnish its copies to the applicant. After exchange of claims and counter-?objections and after examining the contentions of both the parties the Registrar shall decide whether the registration should be given or refused. 'After hearing before the Registrar, is concluded and if he decides in favour " the registration, the mark should be registered under section 16 of the Act and this registration should be deemed to be effective from the date of the application. In this way the registration of the trade‑mark is obtained after an elaborate enquiry and after publicity of a public notice. Rights secured after going through such a detailed procedure and after close scrutiny of the case must be protected and the registration must be treated a good prima facie evidence of the ownership of the trade‑mark in terms of section 21 of the Act. With this background of the case on hand now let us turn to the case‑law on the subject. Mr. Rehmatullah learned counsel for the defendant has relied upon a case Rexona Proprietary Ltd. v. Majid Soap Works P L D 1956 Sind 1 decided by a Division Bench of this Court. Some very valuable observations have been made by Constantine, C.J. (as he then was) in this case and it would be quite appropriate to quote few passages from this case. In this case an interim injunction was refused by a learned Single Judge of this Court and a miscellaneous appeal was filed against the order of dismissal of the application. In this appellate order passed in the Miscellaneous Appeal these observations were made. After comparing two wrappers of the two cakes of soaps their Lordship of the D.B. disagreed with the conclusions of the learned Single Judge and relying on a very old English case (Lord Lindley) in Lever v. Goodwin (XXXVI C.D. 1) held that:‑-- "Both are coloured green, though not exactly the same shade of green. On the upper face of the wrapper when it is wrapped round the soap appear the name in cursive script, below that a horizontal bar in black with white lettering, and below a circle with white and black in it. On the other sides appear on each wrapper the name in cursive script. The learned Judge held that the difference between the two names was obvious and that the colour was not exactly the same, and hence thought that there was not sufficient resemblance as to be likely to deceive the purchaser or cause confusion. We respectively but firmly disagree with this conclusion." The quotation would show that in spite of the dissimilarity in the two wrappers which were the basis of the decision of the learned Single Judge the points of similarity overweighed with the appellate Court and injunction was granted. The very useful quotation from the judgment of Lord Lindley in Lever v. Goodwin (XXXVI C.D. 1) has been quoted in the judgment and it would be very helpful if I insert this quotation here as well. In this judgment Lord Lindley dealt with the question of similarity and dissimilarity in the following manner:‑-- "Of course, in all these cases there are differences as well as resemblances, and the question, so far as the packages are concerned, must always be decided by contrasting the striking resemblances with the striking differences. Now, the only difference which strikes me at all is this that Goodwin has substituted the word "Goodwin", in large letters, for "Sunlight". That is the whole difference which catches the eye.' Then look at the resemblances; look at the paper, look at the printing, look at the blank space, and the catch‑words; look at the whole thing, and it is impossible not to arrive at the conclusion, not only that one was intended to pass for the other, but that intention has been realised. I say that apart from the evidence". The judgment of Constantine, C.J. proceeds further and deals with the point where evidence of deception must be forthcoming at the interim stage. This is how the judgment has dealt with the point:‑-- "The next point that arises in this appeal is that it was said that there is no evidence that any one has in fact been deceived. The authorities are plain that where the get‑up is so similar, it is not necessary there should be evidence that any one has in fact been deceived. It is enough if the plaintiff satisfied the Court that the defendant sells his goods marked in a manner so as to lead purchasers to believe or to create a probability of so believing that they are buying the goods of the plaintiff. The learned Advocate for the respondent relied upon A I R 1938 Cal.

458. But there the learned Judge himself described the case as a borderline case and hence this was one of the factors namely, the absence of proof of actual deception, that led the Judge to refuse an injunction." Dealing with the question of balance of convenience, the following very valuable observations fell from the learned Judge:‑-- "The next point is that in such a case the balance of convenience lies in favour of refusing a temporary injunction on the ground that the plaintiff would not be ruined by refusal of injunction whereas the defendant would be ruined by granting the injunction, and that at this stage one should not anticipate the final result of the case. It is perfectly true in this case that the plaintiff is a subsidiary company of Lever Brothers, and is a wealthy firm, whereas it appears the defendants are comparatively a petty concern. But in this case the evidence of the wrappers themselves is so clear that fraud is intended that the argument of convenience cannot be sustained." Lastly, a few lines to show how the Court reacted. to the conduct of the defendant may be quoted which run as under:‑

"Secondly, where the defendant's conduct is a gross fraud on the public, an interlocutory injunction may be granted in spite of a certain amount of delay. In this case we think the fraud is obviously so gross that we rely upon this consideration." In my opinion all the elements which persuaded the Division Bench in the above case to issue the interim injunction are present in the present case to the fullest measures. The next case is 'Abdul Jabar and another v. Ahmad Jan PLD 1973 Kar.

298. This case arose out of the dispute between two sellers of 'Bidis'. The infringed mark printed on the wrapper consisted of description "Koh‑i‑Noor Beedi" written in a bracket with figure '505' placed in a circle and also carrying the name of the concerned seller in English language. The words 'Koh‑i‑Noor Beedi' were written in Urdu and Sindhi scripts. Suit was filed complaining of infringement of the trade‑mark and passing of action on the allegations that the defendant was selling inferior quality of goods under the name or mark "Koh‑i‑Soor Beedi 506" printed on the wrappers adopting the same colour scheme, design and get‑up on his packet as those of the plaintiff. After comparison the learned Judge found that: "A cursory look at the two wrappers will show that except for the difference in name and number namely, Koh‑i‑Soor Biri instead of Koh‑i‑Noor Bidee and 506 instead of 505, the two wrappers are identical so much so that even the name and numbers are written in the same manner. Again the design and the colour scheme of the two wrappers are identical. There is in my opinion substantial resemblance between the two wrappers, in material respects, which is likely to deceive or cause confusion in the mind of unwary purchasers." Dealing with the question of convenience the learned Judge observed as follows:‑-- "I have found that the resemblance between the two marks is so striking and the intention to infringe so obvious that the argument of balance of convenience is of no avail to the appellants. In my opinion a very strong prima facie case has been made out by the respondent and it is not open to the appellants to say that they ought to be allowed to continue to take advantage of their own wrong." The next case is 'Ferozuddin v. Muhammad Shafi and another' P L D 1975 Kar.

486. This was a case in which two competitors were selling their goods under titles "WHITO" and "WHITE" and both had applied for registration of their respective marks. Naturally upto the stage of registration of the mark action could be maintained only for trading as 'passing‑off' of goods. The learned Judge granted temporary injunction and the following observations may be helpful in the present situation as well:‑-- "When facts relate to 'passing off' of the goods one of the relevant considerations governing the grant or refusal of the injunction is the length of time or the prior use of the mark by one or the other party. The plaintiff has placed documents on record to show that he applied for registration of the Trade Mark in April, 1961. The plaintiff has also produced a photostat copy of the judgment delivered by an Additional District Judge, Karachi, on 5‑11‑1966 and such judgment also clearly shows that the plaintiff was selling his merchandise in the name of 'WHITO'. The plaintiff has also produced other documents to show that he had been carrying on business in the same name since 1961

?????????? In any case the defendants have stated in the written statement as well as in the counter‑affidavit that in the application for registration of their Trade Mark submitted by them to the Registrar of Trade Marks on 28‑8‑1970, they had initially stated that they had been using the Trade Mark since three months before the date of the application." It was further held "the Courts generally protect a person in such circumstances even though the trade mark is not registered, specially if it is prima facie established that the plaintiff has been using the name of the product as a manufacturer since a long period.". In the present case it is fully established before me that the plaintiffs have been marketing their products under the name of 'Cock' in English and ?Aldeak' in Arabic languages and their packets also bear the figure of 'Cock'. Admittedly the defendants have appeared with this mark only before few weeks of the filing of the suit while the plaintiffs have established that they are in the market at least since 17‑5‑1979 when the application for registration of this mark was moved before the Registrar, if not early as claimed by them. In another case reported in 1981 C L C 1519 Sajjad Ali Shah, J. has confirmed in an appeal an interim injunction which was granted by the trial Court. A dispute relating to the sale of threads under a registered 'trade‑mark' "EVERREADY" with a numerical '999' printed on the packets arose. The defendant in the suit had started selling his goods under the title "EVERLIFE" with a numerical '990'. This was a very peculiar case. The plaintiff, as stated above, had obtained registration of his trade‑mark from the Registrar on 28‑10‑1976, while the defendant had applied for registration of his mark and this application was advertised by the Registrar on 1‑1‑1979 and was being opposed by the plaintiff before the Registrar. While this controversy was continuing before the Registrar the defendant had started selling his goods under the mark "EVERLIFE" with numerical '990' and this is how the suit came to be filed by the plaintiff complaining infringement of the trade?mark and a 'passing‑off' action. The defendant had contested the action as well as prayer for injunction on the ground that there was no similarity between the two marks. The main burden of the argument of the learned counsel for the defendant in this case was that the two numericals "999" and "990" are so different from each other that a purchaser cannot be deceived. On the strength of a case decided by the Supreme Court as Pakistan Soap Factory v. Chittagong Soap Factory P L D 1970 the learned counsel for the defendant wanted to bring his case also under the principles enunciated by the Supreme Court in that case. This argument remained unconvincing and the trial Court had granted injunction against which order the defendant had filed an appeal which came to be disposed of by the learned Judge in the High Court as stated above. This is how the learned Judge disposed of the contention of the learned counsel for the appellant/defendant:‑

"In the reported case dispute was between two Trade Marks '1937' and '1947' which were used for soaps. Except this similarity in numerals, there were many other points of dissimilarity in the two fascinules. Markings were different .....words acid figures were printed differently and not only that but even their sizes were different. In the case under consideration I have carefully examined and compared the two labels in dispute marked A and B on this file. The size of both is same. Both are box covers to carry 12 spools. Colour scheme is same i.e. red on top, yellow in the middle, then green and blue at the bottom. Designing, printing and the sizes thereof are of almost same. Words and letters are of same size "EVERREADY" and "EVERLIFE" are printed in white against the background of blue with "999" and "990" in an egg like circle in the background of black. In the middle are printed word Brand, Mercerised sewing thread in very similar manner. Then there is a small triangle containing monograms with different letters of AB and FB and at the bottom names of m4nufacurers on both sides are printed in Sinahi and Urdu almost the same words 'neat, clean and strong thread for stitching.' The only difference between the two is that one is "EVERREADY 999" and the other is "EVERLIFE 990" so the difference in reading is 'LIFE' instead of 'READY' and '0' instead of '9' and of course the small letters in monograms and names of manufacturers. On very close scrutiny it can be found that colours in "EVERLIFE" liable are just a little shade lighter. From this comparison I have formed the opinion that both labels are very closely similar and can cause confusion and deception in the mind of unwary purchaser." The learned counsel for the defendant has also relied on the case of Pakistan Soap Factory v. Chittagong Soap Factory P L D 1970 S C

460. But I would respectfully adopt the reasonings of my brother Sajjad Ali Shah, J. in the case referred to above and would add that in the present case also dissimilarity in the two boxes of 'Macaroni' is too insignificant as compared to large number of similarities including colour scheme, size, colour and sizes of the letters of descriptions and the last but not the least the figure and word 'Cock' printed on the packets. The last case in this chain in which Courts have granted injunction is reported in 1985 'Syed Muhammad Maqsood v. Naeem Ali Muhammad, 1985 C L C 3015. This was also an appeal against an order of the learned VIIth Additional District Judge, Karachi granting injunction in a suit for infringement of trade‑mark. The appeal filed by the defendant was dismissed and injunction preventing the defendant from using the mark was confirmed with the following observations:‑-- "

7. I have examined the two cartons of the disputed trade mark 'Rasily' placed on record and I am clear in my mind that there is a likelihood of causing confusion and deception in the mind of an unwary purchaser, as both the labels of the cartons are similar in the calligraphy, complexion, get up and the colour scheme." I need not examine and distinguish the Supreme Court case of which a reference has been made by Sajjad Ali Shah, J., but must make a mention of another reported case in P L D 1954 Sind 124, which was decided by a very eminent Judge of this Court Z.H. Lari, J. in a dispute. Messrs Lipton Ltd. v. Messrs Frontier Camellia, who had started selling their tea in packets allegedly imitating the design, getup, etc. of plaintiff's labels and copying the monogram which was a registered trade‑mark. The learned Judge refused to grant injunction because he found that: "The resemblance between the label and monogram on the packets of the contending parties is not of such a nature as to deceive a prudent prospective purchaser in believing that the packets offered by the defendants are those prepared by the plaintiff." This case I must say does not advance the cause of the defendants because on facts the two marks were determined to be different from each other. The last case which remains to be examined is a Privy Council case reported in Indian Cases 1940 Vol. 187 p‑

658. In this case the dispute originated in United Provinces of India and. was decided by a learned Judge of the High Court of Allahabad against which appeal was taken to the Privy Council and the leading judgment in the case was written by Viscount Maugham, J. It is interesting to note that by that time there was no statutory law relating to trade‑mark in British India and as observed by the Privy Council "the law which is applied there on the subject is substantially the same as that applied in England before the Trade Marks Act, 1905". The articles involved in this case were cigarettes sold under the popular name as "Hathi Markha" or "Lal Hathi" or "Elephant Mark" with representation of the elephant on a red‑background. The defendant started selling chewing tobacco normally used with 'betel'/'Pan' in tins and packets with the figure of an elephant on them not unlike the elephant of plaintiff, though with the difference of colour of the elephant. The complaint in the suit was not that the plaintiffs were exposed to some financial loss on account of the sale of I chewing tobacco which the plaintiffs were admittedly not selling in the market, but the basis of the complaint was that because the 'elephant' and its association with the 'cigarettes' and 'smoking tobacco' of the plaintiffs had gained so much popularity in the market that the chewing tobacco of the defendant may also be taken to be a product of the plaintiffs, a position to which the plaintiffs would not reconcile. The Privy Council in this peculiar situation came to the conclusion that the article involved, though basically prepared from tobacco leaves, were so different from each other that there was no possibility of any deception and unless the loss is established through evidence, the grievance of the plaintiffs would remain a case of being super sensitive about their mark and about the use of word/figure 'elephant' by any one. Some extracts from the judgment of this case are quoted hereunder to show the approach of .the Court in trade‑mark action:‑

"There can obviously be no monopoly in the use of the trade mark. A manufacturer of cigarettes under an undoubted trade mark such as an animal, or any other device, cannot legally object to the use of the identical mark on, say, hats, or soap, for the simple reason that purchasers of any of the latter kinds of goods could not reasonably suppose, even if they were well-?acquainted with the mark as used on cigarettes, that its use on hats or soap denoted that these goods were manufactured or marketed by the cigarette manufacture: see Somerville v. Schembri 20887) 12 A C 453; 56 L J P 0 61; 56 L T

454. Those would be simple cases, but some much more difficult ones can be suggested. If a manufacturer of a special kind of smoking tobacco under a trade mark seeks to restrain the use of it on cigars, or on a very different kind of smoking tobacco, or on cigarettes, or on snuff, or on chewing tobacco, or on tobacco in some form sold for use as a weed killer‑‑All these things being made of tobacco‑questions, sometimes of great difficulty, may arise. It is, however, very important to observe that each of these questions will be a question of fact to be decided on the evidence adduced. The vital element in such a case is the probability of deception. This may depend on a number of matters as well as the question of similarity of the marks or of the get‑up. Witnesses can be called to prove the circumstances and the places in which the articles are sold, the classes of persons who buy them, and whether they include persons who are illiterate or ignorant or the reverse, the manner in which the public are accustomed to ask for the articles, and any other matters which will assist the Court to decide. Whether deception is probable. Evidence of actual deception may be available and if available may be very valuable. There is no such person as an expert in human nature, and it is now well‑settled that a witness cannot be called to say that it is likely that purchasers of the goods will be deceived. This can only be a matter of opinion formed after the dispute has arisen and too often without any judicial consideration of the opposing contentions. On the other hand a person who is accustomed to buy the articles in question may be called to say that he would himself be deceived, and cross-examination will often show what weight should be attached to such a statement." The above‑quoted discussion would show that in the case before the Privy Council the mark or figure of Elephant was on a different article. The plaintiffs were using the figure of Elephant on Smoking Tobacco in the shape of cigarettes, while defendants were trading in tobacco in powder form used with betel leaves. Had the Elephant been printed by the defendants on the Cigarettes, the approach would have been different. Moreover in the situation of that case the sale of plaintiffs remained unaffected because they were not trading in powder tobacco (Pan tobacco) and no loss could be caused to the plaintiffs by printing Elephant on "Pan Tobacco". This case does not in any way help the defendant for the simple reason that he is also using the figure of a 'Cock' on Macaroni and creating a real and imminent possibility of deception bound to hit at business interest of the plaintiff.‑-- The result is that the defendants are restrained from selling, exporting and in any manner publishing, or advertising their goods with the figure or words "Cock" or in any manner copying the trade‑mark of the plaintiffs. On the cartons packings or any containers of whatever kind till the disposal of the suit. In the above terms the application for injunction is granted with no order as to costs. Directions issued from this Court to the Assistant Collector of Customs of Export, M.I. Yard, and Messrs Burhani Agencies clearing agents, Karachi to be withdrawn to the extent of the goods covered under L/C No. 05730406927, dated 4‑9‑1985 and Invoice, dated 8‑9‑1985. Intimation be issued to the above persons by this office intimating them about the withdraw or the restrain order in respect of these goods. M.Y.H.??????????????????????????????????????????????????????????? Injunction granted