2001 PLP 1368 (CLC)

'1243. Unregistered marks can only be directly protected by an action for infringement when they were used before the 13th August, 1875, and have been refused registration. The owner of such mark may still bring an action for passing off'." With regard to passing off, the following observation contained at monograph 1348 at page 765 in the same volume is important:-- "The right to bring an action, for passing off is founded on the same /principles as those relating to actions for the misuse of trade names, and in fact, actions for misuse of the trade names of goods are only particular instances of such actions. The most usual form of action is for the use of a distinctive mark or get-up of goods. As the various grounds on which the right of action is based are only different instances of the same cause of action, the plaintiff may rely on some or all of them and there are many cases where the use of a trade name not in itself distinctive, together with imitation of get-up, or carelessness or fraud in supplying articles, or in the manner of trading, or the use of a label not in fact infringing the plaintiff's registered trade-mark, have established a case of passing off." There is a clearer exposition of the manner in which trade-mark is protected, in Harvard's Law Review, Volume 68 (1954-55) on the subject of Development in the Law -- Trade Marks and Unfair Competition, in the following words:-- "Basically a trade-mark owner receives protection against use of his mark by another in such a way as is likely to lead consumers to associate the others' goods with the trade-mark owner. This protection against trade-mark infringement, that is, against sale of another's goods as those of the trade mark owner by use of the owner's mark, may be described as protection against 'passing off'. Passing off however also includes any other method by which one person's goods are made to appear as if they one-fed from another, whether or not a trade-mark is involved. Thus, one could pass off his goods as those of a competitor by imitating just the appearance or shape of the competitor's product, because the consumer might be deceived as to the source of the product, Protection against passing off in this broader sense is afforded by the tort action of unfair competition." "...In a passing off action which is based on the infringement of an unregistered trade-mark section 73 would clearly be applicable and it is to such passing off cases that Venkateswaran in his treatise refers when he says 'the words 'otherwise relating to any right in a trade' suggest that the section applies also to actions for passing off'. " In the same case, he states, that when the question of grant of injunction I comes up, the Court shall have to look into the question of balance of convenience and likely irreparable injury and concedes, that such will be the case as, if it is allowed to be used by the defendants in fact irreparable injury shall be caused. For the aforesaid purpose and for the purpose of injunction, Mr. Khawaja Mansoor has referred to the case of Century Traders v. Roshan Lai Duggar & Co. and others AIR 1978 Delhi 250 in which it has been held as follows:-- "in an action for passing off in order to succeed in getting an interim injunction the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendants. The registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry does not prove its user by the persons in whose names the mark is registered and is irrelevant for the purpose of deciding the application for interim injunction unless evidence has been led or is available of user of their registered trade mark." He further states that proof of actual damage or fraud is unnecessary in cases of an action of passing off which has also been held in the aforesaid case. Mr. Khawaja Mansoor has referred to the case of Messrs K.S. Sulemanji Esmailji & Sons v. Messrs M. Sulemanji & Company Ltd. 1986 CLC 775 in which it has been held:-- "In my humble opinion the mere fact that the defendants have resorted to the device very recently and have printed the figure of 'Cock' oil their packets as late as March or April, 1985 as alleged by the plaintiffs or January, 1985 as admitted by the defendants themselves is by itself sufficient to turn the scale in favour of the plaintiffs. Admittedly the defendants are selling these very goods for a long number of years perhaps earlier than the plaintiffs but they have printed the figure 'Cock' on their packets few weeks before the tiling of the suit, is something which cannot be overlooked in this case. If the 'Cock' has no significance as the learned counsel argues and the printing of the figure 'Cock' on the- packets is immaterial and makes little difference from the point of view of an average customer, then allow the plaintiffs to enjoy the benefit of this device to its fullest measure instead of intruding on his rights and creating a confusion in the trade. To insist to continue to print the device of 'Cock' on the packet speaks volume about the behaviour of the defendants. I have no hesitation to hold that the plaintiffs have succeeded in making out a prima facie case in their favour... " ...Mr. Rehmatullah learned counsel for the plaintiffs has replied 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 evident 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 tar as tire 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 ... ...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 of similarity and dissimilarity in the following manner:- 'Of course, in all these cases there are differences as well as resemblance and the question, so far as the packages are concerned, must always be decided by contrasting the striking resemblance with the striking differences. Now the only difference which strikes me at all is this that Goodwin has substituted the word 'Goodwin', m large letters, for 'Sunlight'. That is the whose difference which catches the eye. Then look at the resemblance; look at the paper, 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. 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 AIR 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 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. 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 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 CLC 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' "EVERYREADY" 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. 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 tiled 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 th6 ground that there was no similarity between the two marks. TV main burden of the argument of the learned counsel for the defendant in this case was that the two numericals "990" and "999" 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 PLD 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 and 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 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 Brad, 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 manufacturers on both sides are printed in Sinhai 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" label are just a little shade lighter. From this comparison I have formed the opinion that both labels are very closely similar and confusion and deception in the mind of unwary purchaser. The learned counsil the defendant has also relied on the case of Pakistan Soap FactoLry. Chittagong Soap Factory PLD 1970 SC

460. But I would respectfully adopt the reasoning of my brother Sajjad Ali Shah, Win the case referred to above and would add that in the present dose also dissimilarity in the two boxes of 'Macroni' 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 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 no w well-settled that a witness cannot be called to say that is likely that purchasers of the goods will be deceived. This can only be a ratter of opinion formed after the dispute has arisen and too often without any judicial consideration of 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'."

12. It is the case of the plaintiff, that what he has to show is in fact, that by the use of the word 'CRYSTAL' on the packet in which the ball pens of the defendants are being sold tantamounts to passing-off the plaintiff's established mark used by him from a period which was prior in time to the commencement of use by the defendant. He states that the registration of mark is not necessary in an action of passing-off and proof of actual damage or fraud is also unnecessary, if there is a likelihood of the offending mark invading the proprietary right. It is the case of the plaintiff that the trade is the same and that, with the prior use of the word 'CRYSTAL' alongwith an established trade mark 'PIANO' an association has, therefore, been created that, the word 'CRYSTAL' goes alongwith the word 'PIANO' and which, everyone knows is that of Sayyed Engineering, the plaintiff. Thus, for the purpose of seeing interim injunction in an action of passing off, it is argued that, what is to be considered by the Couple is the prior use and a likelihood of the offending mark invading the proprietary right of the plaintiff. Reference is made to the case of Messrs Manoj Plastic, India v. Messrs Bhola Plastic Industries AIR 1984 Delhi 441.

13. The next question that was placed with regard to the essential and dominant features of the plaintiff's trade-mark in is the case of the plaintiff that the Court shall look into the essential a leading features for the determination as of the characteristics of each coming trade-mark. It was, therefore, that it was stated that the dominant features of the registered trade mark have to be looked into. The case of the plaintiff is that the word 'CRYSTAL' is in fact a dominant feature itself and the use of the word 'CRYSTAL' is sufficient. Mr. Khawaja Mansoor has stated that no trade mark can be registered under section 10(1) of the Trade Marks Act where the description of the goods is identical with the trade-mark belonging to the different proprietor or it so closely resembles the trade-mark as to be likely to deceive or cause confusion. He states that the use of the word 'CRYSTAL' by the defendant is the use of the trade-mark which is identical with the trade-mark belonging to the plaintiff and resembles with the trade mark that, the use thereof shall cause to deceive or create confusion in the unwary purchasers. Mr. Khawaja Mansoor has referred to the case of Jamia Industries Ltd. v. Caltex Oil (Pak.) Ltd. and another PLD 1984 SC 8 in which it has been held as under:-- "Under section 10(1) of the Trade-Marks Act, no trade-mark can be registered in. respect of any goods or description of goods which is identical with a trade-mark belonging to a different proprietor and is already registered, in respect of the same goods or description of goods or which 'so nearly resembles such trade-mark as to be likely to deceive or cause confusion'. The case of the respondents in support of their objection was that the star device distinguished their goods and has been associated with their house mark 'CALTEX' and that their house mark had commenced since 1937 in pre- partition India and since 1948 in Pakistan. They contended that their marks enjoyed a wide reputation, so that the star device was associated with their goods. On the other hand the appellant controverted the opposition case on the ground that their mark was primarily the word 'JAMIA' and the device of crescent and star was generally used by Muslims, which, therefore, does not necessarily indicate any intention of deception on their part. After considering the evidence adduced by the parties the learned Registrar applying the test of the distinguishing features of the two marks as a factory contributing to decision notwithstanding dissimilarity, proceeded to examine the mark applied for and the registered marks of the respondents..."

14. Mr. Khawaja Mansoor refers to' the Guide` to the Trade Marks Laws and Procedure in Pakistan, a publication of Government of Pakistan which defines the word 'Trade Marks Common to the Trade' and reads as under:-- `'(d) Trade Marks Common to the Trade.--A Trade Mark is common to the Trade when it is used by several persons in that trade and is open to any person in that trade to use it. Such a mark is not ' distinctive and no monopoly rights can be created by registering it in the name of particular persons." In this case, according to him, the word 'CRYSTAL' is not common to trade as it is not used by several persons and the only one who used the said word 'CRYSTAL' is the plaintiff. It is the case that the knowledge as to the use by the defendant of the trade mark has caused the immediate reaction to protect their mark. He has also referred to The Law of Trade and Merchandise Marks of S. Venkateswaran in which the term has been defined as follows:-- "Marks common to the trade. Marks which are common to the trade cannot be distinctive of the goods of any particular manufacturer and will of be registered. A mark may be common to the trade when it is in common use in the trade in the goods concerned or is open to the trade to use. A word to the exclusive use of which as a trade mark a particular trader has been entitled, may subsequently become publici juris and if this happens no monopoly can thereafter be claimed by any person in that word. Every trader has a right to sue for his trade purposes the terminology common in his trade, provided always that he does this in a fair, distinct and unequivocal way. He has referred to the judgment of the Supreme Court in Formica Corporation v. Pakistan Formica Ltd. 1989 SCMR 361 in which it was held that an infringement would not arise if the trade-mark became common to trade or became publici juris. The test has been provided which is as under:- "...From a review of the case aw cited before us certain principles appear to be settled, namely, (i).the plaintiff selling a class of goods must establish that his business consists of the said class of goods to which is trade name applies; (ii) the aforesaid class of goods is associated in the mind of the public or a section of the public with his trade name- and a certain amount of goodwill is attached to the name; and (iii) that the goodwill owned by the plaintiff in Pakistan is of substantial value and that by reason of the defendant selling goods which are falsely described by him in terms similar to the trade name to which the goods attached to the plaintiff, he has suffered or is likely to suffer substantial damage in his business or goodwill. However, there would be no possibility of deception if the use of the trade-mark by other persons has ceased to deceive the public as to the maker of the article. In other words, no question of infringement would arise if the said trade name has become common to the trade i.e. has become publici juris. The proper test to decide, whether a trade-mark which was owned by another has become public juris is to see whether its use by other persons is still calculated to deceive the public. If the mark has come to be so public and in such universal use that nobody can be deceived by the use of it or can be induced from the use of it to believe that he is buying the goods of the original trader, the right to the trade-mark must be gone (see Ford v. Foster, 7 Chancery Appeals 611) ... ...The persons seeking to enforce his right to a trade-mark has to prove:-- (i) trading in his own goods with the trade-mark; (ii) a certain amount of popularity which would persuade someone to take advantage of its good reputation or popularity; (iii) that another person uses a mark; (iv) 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 goods in respect of which it is registered; and (v) in such manner as to render the use of that mark likely to be taken to import a reference to the proprietor of the mark or import a reference to goods with which a proprietor is connected in the course of a trade... " In the aforesaid case it was held-that all laminated sheets were popularity known as Formica and that because it was popularly known as Formica, the name Formica would not deceive the public because it -had become common to trade. In this present case, however, he states that the word 'CRYSTAL' had not become common to trade. Therefore, he states that he can proceed in the present suit for injunction and passing-off. Mr. Khawaja Mansoor has also referred to the case of COCA Co. of Canada Ltd. v. PEPSI of Canada Ltd. 59 RPC 127 where the suit was filed for injunction against infringement by Pepsi Cola on the ground that Coca Cola written in script form that flourishes and applied to beverages and syrups claimed that the defendants mark Pepsi Cola in the same area in respect of similar goods was an infringement of their trade-mark and contrary to the provisions of section 3(l) of Unfair Competition Act, 1932. It was the case where evidence was said to be insufficient or there was no evidence to show confusion between the words Pepsi Cola and Coca Cola where the word Cola had been said to be used by various persons. The word Cola, therefore, was held to be common to trade and the distinct feature was the word used 'Coca' with the word 'Cola' which was distinct from the word 'Pepsi' used with the word 'Cola' and, thus, there was no confusion. According to him, the word 'CRYSTAL' is not common to trade wherefore, the plaintiffs can come in, to restrain the defendants from 'using the said word. Mr. Khawaja Mansoor, therefore, prayed that injunction be granted in the present case.

15. On the other hand, Mr. Abid S. Zuberi on behalf of the defendant has argued that the plaintiff has alleged that their ball point known as 'PIANO CRYSTAL' has distinctive shape, design and get‑up which is being sold throughout Pakistan and Middle East under the alleged trade‑mark 'PIANO CRYSTAL' since 1989 and that they have acquired valuable reputation for the said mark. Mr. Zuberi stated that the plaintiff applied for registration of their alleged trade‑mark 'PIANO CRYSTAL' the Application No.159347 as late as December, 1999 despite admittedly using the term 'PIANO CRYSTAL' for the last 20 years. He has stated that the defendant has applied for registration of their trade‑mark as 'IMAGE' and argued that the term 'CRYSTAL' is a registered trade‑mark of 'BIC' France since 1968 in Pakistan. He has further stated that the plaintiffs admit that they have no objection to the use of the word/mark 'IMAGE' per se by the defendant. Mr. Zuberi has argued that the plaintiff is guilty of laches and stated that the mark 'CRYSTAL' is not the exclusive property of the plaintiff as the term 'CRYSTAL' is not a distinctive word and has not been invented/coined by the plaintiff for their exclusive use. He has argued that, admittedly the plaintiff has a registered trade‑mark and is owner of their yellow ball point known as 'PIANO' and it has been shown that there are several other ball points in the market similar in get‑up of the plaintiff's yellow 'PIANO' ball point 1Zut no action has yet been initiated against the manufacturers of those ball points. Mr. Zuberi has denied that the plaintiff's product is similar in get‑up to that of the defendant and has stated that if both the products are set side by side, clear distinguishing features would show the differences would emerge which would set 'both the products apart and thereby cause no confusion to the public‑at‑large in purchasing/differentiating between the products of the parties. He has stated that the mark 'CRYSTAL' does not appear on their ball point pen but it only appears on the box in which the pens are sold. He has argued that the use of term 'CRYSTAL' by the defendant is only for the purpose of demonstrating to the public‑at‑large that the body of the defendant's pen is transparent, crystal clear in nature and serve the purpose of informing the public about the transparent nature of ball points. He has contended that the filing the instant suit is to take entire control and monopolise the market and deny the defendant entry in the local market. This according to him would be monopolistic which cannot be allowed. He states that the plaintiff is anxious to avoid competition. He has contended that the plaintiff has failed to make a prima facie case, neither the balance of convenience is in their favour nor any irreparable damage would be caused to them if injunction is not granted. Mr. Zuberi has argued that the plaintiff has failed to show the essential esentials, namely, (a) Reputation of the product; (b) by use, the descriptive name has gained reputation; (c) the plaintiffs have achieved goodwill of the product with the name 'Piano Crystal'; (d) whether there is misrepresentation on the part of the defendants to pass off their goods as the goods of the plaintiff, and (e) whether any injury has been caused by the use of 'Crystal' on the packaging of the pens. He states that the failure to prove the essentials, would be fatal. He states that ail the essentials have to be proved and that they should co-exist in order to create a case of passing-off as laid down by Lord Diplock in the case of Erven Wamink BV and others v. J. Townend & Sons (Hull) Ltd. and others reported in (1979) 2 All ER 927. he has further contended that the defendant never intended to copy the plaintiff's design and get-up of their 'PIANO CRYSTAL' ball points and relied upon the following cases:-- (i) Tapal Tea (Pvt) Ltd. v. Lever Brothers (Pakistan) Ltd. 1997 MLD 1277; (ii) Burberrys v. J.C. Cording & Co. Ltd. 26 R.PC 693; (iii) Tabaq Restaurant v. Tabaq Restaurant 1989 SCMR 1090; and (iv) Formica Corporation v. Pakistan Formica Ltd. 1989 SCMR

361. He has prayed for dismissal of injunction application as, according to him, no case for injunction has been made out.

16. Mr. Abid S. Zuberi has relied on the judgment of Tapal Tea (Pvt.) Ltd. 1997 MLD 1277 in which a similar question as to the use of the word 'Danedar' was in question and in which it was held as follows:-- "8 After hearing learned counsel for the parties and perusing the material placed with the record and the authorities cited by both the learned counsel I have come to the conclusion that plaintiff's tea is being sold as ' Tapal Tea Danedar Leaf Blend' and defendant's as 'Lipton Yellow Label Danedar Tea' and actually are the trade-marks of the plaintiffs and the defendants respectively and have been used by them since long in market place and continue to distinguish the products of the parties in the-same way as always in the past. The only common feature is the word 'Danedar' and both the parties are using the word as 'Danedar' in a descriptive sense referring to the granular texture of the product, described as ' Danedar Leaf Blend' in the case of 'Tapal Tea' and as 'Danedar Tea' in the case of ' Lipton Yellow Label'. The product of the plaintiffs and the defendants as packed when compared as a while are different and easily distinguishable. A comparison of the packet of the defendants with the packet of the plaintiffs show that they are vastly different; there i$ no likelihood of defendants' packet of tea being purchased in the belief that it is the plaintiffs' packet of tea and there is no possibility that such confusion or. deception is to take place. The brand of the defendants' product is essentially 'Lipton Yellow Label's comprising registered trade mark of Unilever PLC which are used worldwide and have been used in Pakistan since long; whereas the brand of the plaintiffs' product is essentially 'Tapal Tea'; the products of the defendants and the plaintiffs will be called and recognised by,their respective brands. Danedar is a common word having a well-known meaning and means granular. It is used to describe the granular texture of products such as sugar and tea. The contention of the plaintiffs that the word ' Danedar' is being used by the plaintiffs since 1987 and the word 'Danedar' has been advertised before acceptance as required under section 15(1) of the Trade Marks Act, 1940 in the trade-mark journal of August, 1994 at page No.

185. A perusal of this journal at pages Nos. 186 and 187 shows that 'Zafran Tea Leaf Blend' is also advertised before acceptance at pages Nos. 186 and 187 of trade-mark journal of August, 1994 as ' Danedar' . Not only ' Zafran Tea' is packed and produced as Danedar but the word 'Danedar' has been used by other companies, such as Kohinoor., Shahbaz and the contention of the plaintiffs, that they have coined the word 'Danedar', is hardly to be believed. Perusal of various dictionaries, as mentioned earlier, clearly shows that it is a common word which is in use as (?) in Urdu and (?) in Sindhi. As against the plaintiffs' trade evidence in the shape of various affidavits there is defendants' trade evidence establishing the descriptive use of 'Danedar' in the tea trade for describing the granular texture of tea. The contention of the plaintiffs, that they have spent a considerable amount by advertising the ,word 'Danedar' and thus, spent Rs.42 million on sale, promotion and advertising of the same, has not actually accrued any legal right in favour of the plaintiffs so that the defendants may be restrained from using the word 'Danedar' as trade-mark, which is pending decision before the concerned authority. The plaintiffs have filed this application injunction restraining the defendants from using the word ' Danedar' whereas they have not joined other companies, as referred earlier, as defendants in this suit though they are using the word 'Danedar' and are actually in the field of tea trade.

9. The cases cited by the learned counsel for the plaintiffs are distinguishable and have got no applicability to the facts of the case in hand. Whereas the cases cited by the learned counsel for the defendants are applicable and helpful to the case of the defendants.

10. From the material produced with the case and the case-law I am of the considered view that the plaintiffs have not been able to make out a prima facie case in their favour nor they have been able to show any irreparable loss to be suffered by them; balance is also not in their favour." Mr. Zuberi has also referred to the case of Burberrys v. J.C. Cording & Co Ltd. 26 RPC 693 where it was held:-- "An action was brought to restrain the use by the defendants of the word 'slip-on' for coats or overcoats, the plaintiffs alleging that the word had acquired a secondary meaning denoting their goods No case of deception was proved and a charge against the defendants of intending to deceive was withdrawn, and the plaintiffs at the trial rested their case on the probability of deception. The plaintiffs' user commenced in 1894, and they had extensively advertised the word to connection with their overcoats. Held, that the word had been used prior to 1894 and was then in use as a noun and as an adjective denoting or describing garments which easily slipped on, and off and by certain tailoring firms to denote lose fitting coats of the 'Raglan' or 'Talma' type without special reunion to material; that in 1894 the plaintiffs introduced a light loose rain-resisting coat cut in a similar way to the 'Raglan' or 'Talma' and made of a material rendered rain-proof by chemical treatment and not by the use of rubber and had since continuously advertised and sold that coat as a 'slip-on'; that they used the word from the first to describe the particular kind of coat and not distinguish their coats from coats made by other firms; that their use of the word had been in close connection with their own name that the word 'slip-on' had, in the trade and among .that section of the public requiring coats of that class, become generally associated with their own name; that. unknown to the plaintiffs, the previous user of the word continued after 1894, but owing to the plaintiffs' use of it came to connote not only cut but material; that on the evidence there was no reasonable probably v of deception from the use made by the defendants of the word. The action was dismissed with costs." Mr. Abid S. Zuberi has also referred to the same case i.e. Formica Corporation v. Pakistan Formica Ltd. 1986 MLD 362 and stated that injunction was refused despite the fact that Formica was a registered trade mark of the appellant namely Formica Corporation.

17. Having heard the counsel I aye also examined the various points being used in the mark. The position that has been vehemently argued by Mr. Zuberi is that there are numerous ball points in the market of a similar shape with slight difference here and there and which seem and closely resemble the pens made by the plaintiffs. According to him the pens that are manufactured by the plaintiffs, as also the defendants are transparent and that the word 'CRYSTAL'; therefore, used is to show the transparency of the pen. According to him, therefore, the word 'CRYSTAL' would be generic and would be deemed to be common to trade. The pen of 'BIC' has also been shown to me in Court. The pen 'IMAGE' has also been shown and placed for the purpose of comparison. Mr. Abid S. Zuberi has also placed and relied upon various other ball pens and writing instruments being sold in the market with the word 'CRYSTAL' which are 'Bahadur Crystal', 'Eagle Crystal' and 'Crystal Colour Markers'. His emphasis has been that in fact in the brochure of Sayyed Engineering it is stated that 'PIANO CRYSTAL' is in fact, a crystal-clear ball pen and; therefore, it is in fact a description of the pen and such description cannot be registered under Section 6(1) as, it is descriptive and not an invented word and does not carry any distinctive features. He states that the defendants are honest-concurrent users of the said mark and, therefore, an injunction cannot be granted in view of section 10(2) of the Trade Marks Act, 1940 where in the event of concurrent use the registration could otherwise permit registration of the mark of more than one proprietors.

18. I have on the emphasis placed by Mr. Abid S. Zuberi perused the case of Tapal Tea (Pvt.) Ltd., in which according to him all the cases referred to by Mr. Khawaja Mansoor in the present case, have been looked into and injunction refused. The reason for refusal in the case of Tapal Tea was that the word 'Danedar' was descriptive in nature and referred to the granular texture of the produce described as 'Danedar Leaf Blend' in the case of Tapal Tea and 'Danedar Tea', in the case of Yellow Label. In the said judgment, the word 'Danedar' has been dealt with in some detail and it is held that 'Danedar' is a common word and that the same has not been coined by the plaintiff. In fact, it has been held that the word 'Danedar' has been used by many other companies that had not been joined in the proceedings. The learned Judge refused injunction on the basis of the fact that the word 'Danedar' had become common to trade, and that no individual could claim proprietary rights. Such is the correct interpretation of the law. In fact the position has also been discussed in the case of Formica Corporation v. Pakistan Formica Ltd. (supra) and in many other cases. I have no doubt in my mind that a word that has become common to trade cannot be claimed by any one individual as his trade-mark I am unable to agree with Mr. Zuberi that such would be applicable to the facts of the present case that the word 'CRYSTAL' has become a word common to trade and it in fact denotes the structure of body of the ball pens as being 'crystal-clear'. What has been main 'difference, in the case of Danedar and the present case has not been argued by Mr. Abid Zuberi. The case of Danedar, is that the word 'Danedar' continued to be used in both the products namely that of Tapal and Lipton and it is not the case that one was a prior user. Such was a case of 'Honest Concurrent User'. The learned Judge was, therefore, correct in holding that because it had been the case of concurrent use in respect of both the marks it cannot be isolated and that the person could not be allowed to use the mark.

19. In the present case, however; the position seems to be slightly at variance. The position is that, admittedly the plaintiff had commenced use of the mark from 1989 and that admittedly the defendant started using the word 'CRYSTAL' subsequently. Upon knowledge, the plaintiffs reacted immediately to the use by the defendants. It seems, that the intention may have been to cause the use of the word 'CRYSTAL' to pass of their product/pen as that of the plaintiff. When people use the goodwill of companies, businesses and their products that they have worked their way to the top in order to sell their wares, these reputable establishments are deprived of their rightful benefits. Several people use the trade-marks or marks similar to the ones used by those well-known companies, thereby confusing the customer and inducing him to buy their wares. The acts are against the doctrine of passing off. The ingredients that have to be establish d in a successful action of passing off are:-- (a) There is a goodwill or reputation to the goods or services supplied by the claimant in the mind of the public to the extent that the identifying image used by the claimant is recognised by the public as distinctive of the claimant's goods or services; (b) There is a misrepresentation by the defendant leading or likely to lead the public to believe that the goods that are being offered by the defendant are those of the claimant, whether or not that misrepresentation is intentional; (c) There is some likelihood of damage being suffered by the plaintiff because of misrepresentation.

20. I am clear, and agree with the contention and with the judgments cited by Mr. Khawaja Mansoor, that the exclusive prior use of the mark is sufficient to cause proprietary rights to be created, as has also been held in the case of Tabaq Restaurant v. Tabaq Restaurant 1987 SCMR 1090. The use of the word 'CRYSTAL' by the plaintiff in this case was much prior in time and admittedly so. There is no denial of the fact that the plaintiff continues to use the mark. The only dispute is that the work 'crystal' only describes the pen and is common to trade. I do not subscribe to this view. The continuous use of a mark over a length of time does characterises the word as used by the user, and is in the mind of the public as identifying them that the product is that of the person using it regularly. It is misconceived that because it is used on a transparent pen it would describe the pen and that because of that reason all can use the word. Such would amount to infringing upon the right and goodwill created by the user of the word. Naturally the subsequent user would be trying to cash upon the reputation attached to the product of the manufacturer using the word. It would amount to misrepresentation and there is likelihood of damage being suffered by such use to the previous user.

21. The contention that the said mark is being used by others also, was never reflected in the counter-affidavit. Such aspects cannot be introduced at this late stage. It may not be proper to dilate on the issue, as the plaintiffs could not have had a chance to represent the position as to the genuineness of those packets that have been produced during the course of the arguments. The misconception and that has been pleaded by Mr. Zuberi is in regards to the design of the pen and the transparency thereof. The case of the plaintiff is the use of the word ' CRYSTAL' and not mere transparency. I am inclined to agree to the position that notwithstanding the transparency, the look, the design and/or other marked features of the pen, which may be descriptively similar, the use of the word 'Crystal' adds fuel to the fire. There could be no other intention of the defendants in using the word 'Crystal', but to pass off their goods as the goods of the plaintiff.

22. The said position that has been taken up is, that 'Crystal' is a mark that has been placed by the plaintiff on its pen to show its clarity and transparency. It is no doubt, that sometimes such descriptions are given and that, describing a pen having- certain qualities no doubt, ex facie, is prohibited by the provisions of section 6(l) of the Trade Mark Act, however, where it can be established that the proprietor of the said mark is using such words that are descriptive in nature for a period of time which eventually can be equated to a specified product, such may be at times treated as a mark of such proprietor. In an unreported case of 'The Scotch Whisky Association and another v. Pravara Sahakar Shakar Karkhana Ltd. cited and reproduced in 'Cases and material on Trade Marks and Allied Laws' Volume I, edited by K.L. Aggarwal and Ajay Sahni, 1997 Ed., at page 472, A unique situation had arisen that, in India whilst making whisky under the same of 'Drum Beater' and 'Gold Tycoon', the words used alongwith the aforesaid words were 'Blended with Scotch' and the use of aforesaid words was challenged that, such amounted to passing of 'Scotch Whisky' and was a suit against the tort feasors who committed an economic tort of passing off Scotch Whisky in one form or another by adopting device colorable imitation of name, design mark or any other indicia on its label so as to confuse or deceive the unwary purchaser in respect of the origin in source. According to the plaintiff in the said suit carrying on of the business of distilling and or blending and or selling by depicting that it .was 'Scotch' in origin, would amount to taking away the goodwill of Scotch Whisky. It was said that, the Scotch Whisky denoted a whisky that was distilled and blended in Scotland. Being Distilled and blended in Scotland, as such was known and described as 'Scotch Whisky'. The name 'Scotch Whisky' was descriptive of the product, therefore, all other specified products, but those that were distilled and blended in Scotland could not represent their product with the word 'Scotch'. It was alleged, therefore, that the use of the word 'Scotch' with their other mark 'Drum Beater' and 'Gold Tycoon' would amount to passing off Scotch Whisky misleading the traders and customers of the goodwill of Scotch Whisky and attempting to state that it is of 'Scottish origin'. In view of the facts it was stated that various brand names including 'Royal Salute', 'Chivas Regal', '100 Pipes', 'Red Label', 'Johnnie Walker-black level' etc. showed the device of Scottish figure or Scottish Soldiers or Scottish Headgears or Scottish emblems with the words 'Scotch Whisky". The brand name and all of them were honest and concurrent users of specified description that, their whisky originated from Scotland. It was held that no doubt, such is descriptive of the origin but, would amount to passing off, as the description had in fact, in use created a name which, if passed of would amount to selling the product and deceiving an unwary purchaser that, such was. whisky from the origin described on it namely, Scotland. It was further held that the customer is not expected to compare the word 'used' with due care and caution and serious risk of confusion and deception is sufficient to prove the tort of passing off subject to the other ingredients being proved.

23. In a case of Parker Knoll Ltd. v. Knoll International Ltd. Lord Morris of Borth-Y-Gest in the case reported in 1926 RPC 265 observed: "...I think, to the straightforward principle that trading must not only be honest but must not be even unintentionally unfair." In the same case, Lord Devlin quoted the following passage from the judgment of Buckley, L.J. in Brinsmead v. Brinsmead (1913) 30 RPC 493 reading as under:-- "He cannot rely on the fact that his statement is literally and accurately true, if notwithstanding its truth it carries with it a false representation. " The aforesaid observation would clearly and squarely apply in the present case.

24. In the case of B.K. Engineering Co. v. Ushi Enterprise AIR 1985 Delhi 210, such was also re-stated and the relevant principle governing the law of passing off was held to be what has been held above. Thus, even if the defendants were manufacturing a transparent/clear ball point pen it could not be said that it would be descriptive of the pen, as the plaintiff over the years started use of the word and the plaintiff over the years had acquired, by advertisements and otherwise reputation, goodwill and the said word therefore, would be deemed to be in the mind of the public, as a product of the plaintiff. The defendants would not be entitled to mark their product by describing the same as 'Crystal'. A strong prima facie case has been trade out by the plaintiff. I am of the view that by the use of the word 'crystal' the defendants have committed an actionable wrong of passing off, injuring substantially the reputation and goodwill of the genuine users of the word 'Crystal'. It would amount to misrepresenting their product as the product of the plaintiff and would also, therefore, amount to damaging their goodwill.

25. It will not be a defence of the defendant to say that he has also started using the said word 'crystal' and is marketing the product. He has to show an honest and concurrent user as provided in section 10(2) of the Trade Marks Act. As stated above such would amount to misleading the purchasers into thinking that the defendants firm .had intimate connection with the plaintiff .and by misrepresentation of this use and connection with the plaintiff, was sufficient to constitute the tort of unfair trading now forming a part of passing off. I shall refer to the facts of the above referred case decided by the House of Lords in Erven Warnik B.V. v. J. Townend & Sons (Hull) Ltd. (supra). In that case, the plaintiffs had been selling a drink called 'Advocaat' in the UK since 1911. All Advocaat sold in the UK was made in Holland and consisted of eggs, spirit, sugar, but no wine. The name 'Advocaat' was known as that of a drink with recognisable qualities, appearance, taste, strength and satisfaction. In 1974; the defendants started manufacturing 'Old English Advocaat' made out of eggs and a fortified Cyprus wine which proved to be a commercial success. The defendants did not represent their goods as goods of plaintiffs. It was held by the House of Lords that the action was maintainable not in its classic form of a trader representing his own goods as the goods of somebody else, but in an extended form first recognised and applied by Danek Warts, J. in the Champagne case Bollinger v. Costa Brava Wine Co. Ltd. (1961) 1 All E.R.

561. Lord Diplock observed in the above referred leading judgment of House of Lords in 'Advocate case' that this principle was accepted as correct by cross in the Sherry case Vine Products Ltd. v. McKenzie. Ltd (1969) RPC 1 and by Foster, J. in the‑Scotch Whisky case Walker (John) and Sons Ltd. v Henry Ost & Co. Ltd. (1970) 2 All E.R.

106. In the judgment, Lord Diplock observed that unfair trading was a wrong actionable at the suit of other traders who thereby suffer loss of business or goodwill may take a variety of forms. In the referred judgment. Lord Diplock approved the statement of law laid down in Spalding v. Gamage, wherein it was laid down that a false suggestion by the defendants that their business were connected with one another would damage the reputation and thus goodwill of the plaintiff's business. The House of Lords granted the injunction in favour of the plaintiff. The ratio of this judgment is helpful more to the plaintiffs in this case than to the defendant. The ratio of the judgment is applied in Pakistani decisions as laying down correct law".

26. In the case of Corn Products v. Shangrila Food Products AIR 1960' Supreme Court 140 it was held that the test to be applied in such matters was as to whether a man of average intelligence and of imperfect recollection would be confused. It was held by the apex Court in this case that to such a man, the overall structural and phonetic similarly of the idea in the two marks "Gluvita" and "Glucovita" was reasonably likely to cause a confusion. It was held that apart from the syllable 'Co' in the appellant's mark, the two marks were identical and the said differences was not enough to distinguish the one mark from the other.

27. In the case of Amritdhara Pharmacy v. Stya Deo reported as AIR 1963 Supreme Court 449, a similar test was laid down by the Hon'ble Supreme Court of India, for the purpose of considering as to whether the purchases were likely to be deceived or confused. In this case the question before the Hon'ble Supreme Court was whether the names "Amritdhara" and "Lakshmandhara" were likely to deceive or cause confusion. It was observed that what degree of resemblance was necessary to deceive or cause confusion could not be defined and the question to be asked by the Court to itself were as to whether the customers were likely to be confused on the first impression, the customers being persons of average' intelligence and imperfect recollection.

28. The aforesaid principles have also been held as correct by our Courts amongst the above cited cases also in the case of Lakson Tobacco Limited v. Souvenirs Tobacco Ltd. and Welcome Foundation Limited v. Karachi Chemical Industry (Pvt.) Ltd.

29. The use of the 'word 'CRYSTAL' by the defendants would cause damage. At this stage it will not be appropriate to consider as to what physical damage would be caused, but mere showing of the fact that: there is passing off in the mark of the plaintiff is sufficient; as if this mark is continued or allowed to be used, no doubt irreparable injury shall be caused to the plaintiffs. The plaintiffs have a prima facie case and naturally, I therefore, it will inconvenient the plaintiff if an injunction is not granted. In view of the above, the application is granted. The defendants are restrained from using the word 'CRYSTAL' pending disposal of this suit. The observations above shall not have any effect on the decisions that are to be made by the Registrar in registering the pending marks. Such comments shall also not have effect on the main suit as, the same shall be decided on, evidence that may need to be produced. Q.M.H./M.A.K./S‑95/K Order accordingly.