P L D 1975 Karachi 486 (PLP)

By an order dated 9‑5‑1973, 1 bad declined to grant an injunction in favour of the plaintiff. The main reason for declining the relief was the fact of applications by both the parties pending before the Registrar, Trade Marks for Registration. These applications had been pending since a sufficiently long time before the Registrar and I had stated in the order that if the Registrar did not decided the applications within two months, the plaintiff could repeat the application for grant of interim injunction. The admitted case before me is that in spite of my order being passed on 9th May 1973, the Registrar has not disposed of the applications for registration of the Trade Mark. The plaintiff has, therefore, repeated the application.

2. Mr. Saeeduzzaman Siddiqui the learned Advocate for the defendants has raised a preliminary point that my earlier order was one on merits and for such reason the same matter cannot be reopened. I have read my earlier order wherein I had clearly stated that "any expression of opinion by me at this stage with regard to the rival claims of the two parties will as of necessity be taken into consideration by the Registrar in dealing with the applications of the two parties for registration. Since the applications are pending and the Registrar is a statutory functionary, I purposely refrain from expressing any opinion on that aspect of the case.

3. I am of the view that the earlier application was not dismissed on merits but only on the ground that the Registrar was seized of the case for registration of the Trade Mark.

4. The facts in the case are that the plaintiff had been using the mark in question since 1961 and had applied for registration of trade mark on 5‑4‑1961. That application was not decided so that the plaintiff submitted another application on 23‑9‑1970. On 10‑10‑1970, the plaintiff published a Press‑notice warning against "passing off" their goods in the same name. The defendants on 26‑10‑1970 replied to the press notice wherein they claimed to have introduced the product in question in 1947 but the manufacture was stopped due to circumstances beyond their control. The defendants however, stated in the said notice that they had started using the same mark since "more than three months".

5. 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. On the other hand the defendants' case is that they had started manufacture and sale of "WHITE" in 1947 but discontinued the same later. It is further stated in the notice of the defendants dated 26‑10‑1970 that they have resumed production in the same name since three months prior to the date of the notice. The defendants have placed photostat copies of the counter‑foils of cash‑memos to indicate that the defendants have been selling "WHITE" since June 1947. Such photostat copies do not show the name of the defendants and curiously the price of the product has been shown to be Rs. 9 per dozen from 1947 up to 1965. Whether such counter‑foils of cash‑memos. should be relied, will have to be determined at the time of trial but for the present I must state that it is difficult to believe that the price of this product should have remained at the same level since 1947. 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.

6. The allegations in the plaint are that the defendants have not only counterfeited the name of the product but even the name of the manufacturer. The Courts generally protect a person in such circumstances even though the A 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. Halsbury's Laws of England, Third Edition, Volume XXXVIII at page 594 has stated the case with clarity in the following words : "The consequence of the application of the right to prevent passing off is that a trader, who uses a name or mark or get‑up that has become distinctive of his goods, can prevent others using the same or a similar name or mark, where that use will deceive or is calculated to deceive a substantial number of members of the trade or public into thinking that goods, offered for sale or supplied by them are his." Protection can be given against "passing off" the goods of another.

7. The plaintiff has produced the labels on the containers on "WHITO" as are used by the plaintiff and defendant and I find that both the labels are printed in the same colour, design etc. In fact the defendants have not contested the position. Even the name of manufacturer appearing on the containers is the same so that an unwary customer is very likely to be deceived or confused and as a consequence, the sales of the plaintiff may deplete.

8. At the time of passing of the previous order I had directed the defendant to submit fortnightly statements of manufacture or sale of the goods in this Court. Such statements have been submitted and I find that. at an average the defendants have sold about 30 dozens of this cleansing powder every fortnight which would roughly amount to about 700 dozens per year. The price as disclosed by the defendants is Rs. 9 per dozen so that the total sales per year amount to roughly Rs. 6,

000. Mr. Sami Ahmed, the learned Advocate for the plaintiff has stated that he was prepared to furnish security to the extent of approximate profits which the defendants could earn by the sale of the goods. I would not like to go deeper in such questions but accept the offer which Mr. Sami Ahmed has made and direct the plaintiff to furnish security in the sum of Rs. 5,000 to the satisfaction of the Nazir of this Court within a week. Such security will enure to the benefit of the defendants in case the suit fails.

9. In the result I allow this application and grant the injunction to restrain the defendants from selling his merchandise in the name of "WHITO" and using trade name of plaintiff. K. B. A. Application accepted.