1993 PLP 590 (MLD)

Mr. Muhammad Jamil, learned counsel for the defendant referred to para. 2 of the plaint and argued that the trademark registered in name of the plaintiff was the word "Flair" without any monogram device. That the certificates of the registration-dated 27‑5‑1984 did not show that any monogram or device was also registered. It was emphatically argued that the wrapper filed in Court as Annexure "C" by the plaintiff and used by defendant, did not resemble the wrapper Annexure P.5 used by the plaintiff. It was next argued that the plaintiff had no prima facie case and that the plaintiff had not produced any document to show that the defendant was marketing the products under the name "Flair". It was further argued that the defendant had publicized its products under the trade name "French Flare" as per the photocopies of the publications Annexures D‑17 to D‑

26. It was added that defendant had moved the applications (copies Annexures D‑28 and D‑30) for registration of the trade name "French Flare". It was further argued that there was no question of unwary purchaser being deceived on taking products of the defendant to be those of the plaintiff and that there was no passing off. In support learned counsel for the defendant cited the cases of (i) Coca‑Cola Company of Canada Ltd. v. Pepsi Cola Company of Canada Limited AIR 1942 PC 40, (ii) Abdul Wahid v. Haji Abdul Rahim and another PLD 1973 SC 104, (iii) M/s. N.V. Phillips'. Gloeilam‑penfabrieken of Eindhoven and another v. Electric Lamp Manufacturers of Pakistan Limited PLD 1962 Kar. 690, (iv) Haji Abdul Gani Haji Ibrahim and others v. Registrar of Trade Marks and another PLD 1961 Kar. 158,. (v) Rexona Proprietary Limited v. Majid Soap Works PLD 1956 Sindh 1, (vi) M/s. Lipton Limited v. Mst. Frontier Camellia PLD 1954 Sindh 124, (vii) Master Thread Ball Works v. H.A. Karim PLD 1969 Dacca 734, (viii) M/s. Burney's Industrial and Commercial Co. Ltd. v, M/s. Rahman Match Works PLD 1983 Kar. 357, (ix) Midland Electric Manufacturing Company Ltd. v. Registrar of Trade Marks and another 1987 CLC 1539, (x) Hamdard National Foundation (Pakistan) v. E.I.Du. Pont De Nemours & Company U.S.A. and another 1987 CLC 1935, Cxi) M/s Dada Soap Factory Ltd. v. M/s. Crescent Pak Industries Ltd. and another 1987 MLD 1256 and (xii) Premier Tobacco Industries Limited v. Registrar of Trade Marks and others 1987 MLD 2752.

7. At the outset it is to be noted that for seeking interim injunction, the plaintiff has only to make out that he has a good prima facie case meaning thereby that a serious question is to be tried in the suit, as observed in the case of Mian Muhammad Latif v. Province of West Pakistan PLD 1970 SC 180 cited on behalf of the defendant. It was also observed that a plaintiff seeking interim injunction has further to make out that in the event of success if the injunction is not issued he would suffer irreparable injury. Reliance was also placed by defendant's counsel on the case of Shahzada Muhammad Umar Baig v. Sultan Muhammad Khan and another PLD 1970 SC 139 where it was held that the Court has to seriously consider whether it would be right to issue an injunction to a public department and thereby disturb its working. This authority would not apply, because no injunction is sought against any public department. On the same point reliance was also placed 'on the case of Muhammad Yaqoob v. Health Officer, Municipal Committee, Hyderabad and another 1973 SCMR 134 where interim injunction was refused because the licence sought to be made operative had expired by efflux of time during pendency of the suit. No such point is involved in the present case.

8. Plaintiff has placed on record photocopies of two certificates dated 27‑5‑1984 showing that he was owner of the Trade Mark "Flair" which he was using for bleaching preparations and other substances for laundry use etc. and for phynile, insecticides, pesticides etc. Plaintiff placed on record a wrapper (Annexure P.5) which was being used in respect of his product of talcum powder being sold under the trade name "Flair". Plaintiff also produced two wrappers (Annexure C) under which the defendant was producing and selling his products vanishing cream and cold cream under the trade name "Flare". Plaintiffs action against the defendant is not only for alleged infringement of trade mark, but also for alleged passing off. In order to determine whether there is infringement of a registered trademark, it is to be seen whether the defendant is using a mark, which is a colourable imitation of the plaintiff's registered trademark. If it is established that the defendant is using the trade mark which is colourable limitation of plaintiff's registered trade mark, that the statutory protection to the plaintiff is absolute in the sense that once a trade mark is shown to offend the user of it, the same cannot escape by showing that by something outside the actual mark itself the defendant has distinguished his goods from those of the registered proprietor. In this respect it was held in the case of Ruston and Hornby Limited v. Zamindar Engineering Company AIR 1970 SC 1649 cited on behalf of the plaintiff, that in an action for infringement where the defendant's trade mark is identical with the plaintiff's trade mark, the Court will not inquire whether the infringement is such as is likely to deceive or cause the confusion: In the case of Cecill De Cordova and others PLD 1951 PC 108 it was held that a mark is infringed by another trader if even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features and that identification of an essential feature depends partly on the Court's judgment and partly on the evidence that is placed before the Court. It was further observed that a trademark is undoubtedly a visual device, but ascertainment of an essential feature is not to be by ocular test alone. In the cited case one party was producing its product under its registered trade name "Vapo Rub" while the other party was selling their ointment under the designation of "Karsote Vapour Rub" and it was held that mere addition of word "Karsote" was insufficient in itself to dissolve the confusion that is bound to arise. In the case of Jamia Industries Ltd. PLD 1984 SC 8 the Deputy Registrar, Trade Marks refused to register a trade mark containing the word "Jamia" with the device of a five pointed star inside a crescent in class 4 for lubricating oils, on the ground that Caltex Oil (Pakistan) Limited was proprietor of two trade marks one with word Caltex and a star device and the other mark containing the device of star and letter "T" and the words "Texaco". Such order was maintained not only by the then High Court of Sindh and Balochistan, but also by the Supreme Court of Pakistan. It was observed by the Supreme Court of Pakistan that the Deputy Registrar and the High Court while rejecting the registration proceeded on well recognised principles governing the question whether the proposed mark resembled the respondent's marks already on the register, so as to be likely to deceive or cause confusion. In the case of Burney's Industrial and Commercial Company Limited 1982 CLC 2468 the appellant was manufacturing and selling wax matches under the registered trade mark "Shama" with particular colour scheme also registered, while the respondent was manufacturing and selling wax matches under the mark "Minar" with colour scheme similar to the one used by the appellant, and in the circumstances interim injunction was granted restraining use of the mark of Minar with the device and colour scheme as shown in the labels of holder of registered trade mark.

9. Now I proceed to discuss the authorities cited on behalf of the defendant on the point of infringement of trademark. In the case of Coca Cola Company of Canada Limited AIR 1942 PC 40 it was held that where there was allegation of infringement of trade mark the only question to be decided was, whether the mark which the defendant used, infringes the plaintiffs registered mark, without considering the fact if the defendant had acquired the goodwill of any business. In the cited case it was held that the trade mark used by the defendant viz. Pepsi Cola would not lead a person with an average recollection to confuse it with plaintiffs registered trade mark "Coca Cola". In the case of Abdul Wahid's PLD 1973 SC 104 it was held that where words have a common suffix with earlier portion different and if they do not conflict, they are distinctive. In cited case the Trade Mark Registry at Karachi had registered the Trade Mark "Daigon" in respect of the sewing machines when the word "Saigon" was already on the register of trade marks and it was held that the Trade Mark Registry had rightly registered the mark "Daigon". In the case of M/s.N. V. Phillips' Gloeilam‑penfabrieken of Endhoven and another PLD 1962 Kar. 690 the defendant stamped on the goods, manufactured trademark of the plaintiff and the goods were sold by the plaintiff and it was held that defendant was no user of the trademark. Cited case does not apply to the present case. In the case of Haji Abdul Gani Haji Ibrahim and others PLD 1901 Kar. 158 the view taken was that a Registrar of Trade Marks cannot put conditions curtailing rights acquired by owner of a trade mark by long use of its trading style. The question of infringement of trademark did not arise in the cited cast. In the case of Rexona Proprietary Limited PLD 1956 Sindh 1 a Division Bench of the then Sindh Chief Court held that in a case of infringement of trade mark, obviously there would be resemblances and differences and the question must be decided by contrasting the striking resemblances with the striking differences, and where the conclusion is that one is intended to pass off for the other, there is a case for an interim injunction. In the case of M/s. Lipton Ltd. PLD 1954 Sindh 124 it was held that when there was allegation of infringement of trade mark, the resemblance between respective labels and monograms must be such as might deceive an average cautious purchaser. In the case of M/s. Burney's Industrial and Commercial Company Ltd. PLD 1983 Kar. 357 it was held that the Court dealing with an infringement action considers the similarities and dissimilarities between the registered trade mark and the offending mark but the decision of the Court does not depend upon the number of similarities and dissimilarities. It was also held that there might be a case where dissimilarities may outnumber the similarities but on account of the general get‑up, colour scheme, design and other features of the two marks, the Court may rightly reach the conclusion that the offending mark is likely to deceive the unwary purchaser. It was further held that it was not defence for action for infringement of the trade mark, if the defendant moves an application for registration of the mark being used by him and if his mark comes within the mischief of section 21 of the Trade Marks Act, because a person who was to imitate the registered mark of another person, would have a very convenient way of escape, by filing an application for registration of the trade mark. In the case of Midland Electric Manufacturing Company Limited 1987 CLC 1539 the trade marks "Rem" "Mem" were held to be not having confusing similarity. In the case of Hamdard National Foundation (Pakistan) 1987 CLC 1935 it was held that Trade Mark "Neoba" was not similar to the Trade Mark "Nubain" because phonetically they were dissimilar in spite of having letter "N" as their common prefix and that products bearing mark "Neoba" were not likely to be deceived by or confused with products bearing mark "Nubain". In the case of M/s. Dada Soap Factory Limited 1987 MLD 1256 an application moved for registration of Trade Mark "Al‑Burq" in respect of soaps, claiming user since 1949, was opposed by registered proprietor of mark "Burg" in respect of soaps, whose mark was registered in 1968. It was held that proprietor of mark "Al‑Burq" had established prior and honest use: of his trade mark and he was entitled to protection of section 10(2) of the Trade Marks Act read with section 25 of said Act and that the Registrar was empowered to allow registration of identical trade marks if he found honest concurrent user of the same, and he had power to impose condition while ordering registration. In the case of Premier Tobacco Industries Limited 1987 MLD 2752 a learned Single Judge of this Court took view that there was no visual or phonetic similarity between the Trade Mark "Princeton" and the Trade Mark "Hingston" although the goods covered by both the trade marks were cigarettes, but the buyers who give preference to a particular brand, were not likely to be deceived by another brand, merely because the same has somewhat similar name. In case of Master Thread Ball Works PLD 1969 Dacca 734 the view taken was that the Trade Mark "Master" was dissimilar both visually and phonetically with Trade Mark "Master Tailor" and that there was no likelihood of confusion or deception and consequently orders of the Deputy Registrar, Trade Marks registering trade marks namely "Master Tailor" and "Master Tailor Thread Brand" were maintained.

10. Section 21(1) of the Trade Marks Act reads as below: ‑‑ "Subject to the provisions of sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing provision, that shall be deemed to be infringed by any person who, not being the proprietor of the trade mark of a registered user thereof using by way of the permitted use, uses a mark 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 any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either‑‑ (a) as being used as a trade mark; or (b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade." Section 23 of the said Act says that in all legal proceedings relating to a trademark registered under the said Act, the fact that a person is registered, as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trademark. In his treatise on Law of Trade Marks (12th Edition) Kerly has mentioned importance of a registered trade mark in the following words:‑‑ "The right which is thus given by a valid registration is the right to exclude others from the use of the mark. In general, registration gives no right to use a mark which would not already exist without registration." At another place the same author has remarked as below:‑‑ "In the case of the specific acts which are deemed to be infringements, the right extends to prevent the use of a mark so nearly resembling the registered mark as to be likely to deceive or cause confusion. In actions for infringement the comparison is to be made between the mark as registered, taking into account any disclaimer, and the defendant's mark as it appears in actual use. Considerations which may arise in consequence of the particular way in which the plaintiff's mark may have been used, e.g. additions or variations, though relevant in a claim for passing off, will not generally be relevant when the only question is infringement: it is the marks themselves that must be compared." At about the same place it is further observed as below: "Similarly, additions by the defendant, though they might serve to prevent actual deception, will not save the defendant if the registered mark or a mark too nearly resembling it is used."

11. In his treatise on Trade Marks (3rd Edition) Narayanan has made the following observations:‑‑ "In infringement proceedings probability of confusion has to be considered only when the defendant's mark is used in relation to the actual goods in respect of which the plaintiff's mark is registered. No question of actual user of the mark by the plaintiff arises."

12. This is not a case of refusal of registration of a trademark or of cancellation of registration of a trademark. This is a case between two private parties, one of which is armed with a registered trademark namely "Flair" while the other is using an unregistered trademark namely "Flare", which was subsequently named "French Flare". Although there is marked difference between the words "Flair" and "Flare" in so far as their dictionary meaning is concerned but pronunciation of both the words is same. In the wrappers used by the defendant the word "Flare" is written in the same style as the word "Flair" printed on the wrappers used by the plaintiff. More particularly first two letters viz. "F' and "L" are written in a similar way. Like the plaintiff, the defendant has put three stars near the letter "F". There is phonetic and visual similarity between the words "Flair" and "Flare". Since the trade mark used by the defendant is identical with the trade mark used by the plaintiff it is not necessary to examine the point, as to whether the infringement of plaintiff's registered trade mark is such as is likely to deceive or confuse the unwary purchaser or purchaser with average intelligence, in view of the observations made in the case of Ruston and Hornby Ltd. AIR 1970 SC 1649. Facts on the record prima fice show that the plaintiff's registered trade mark has been infringed and as such the questions whether the defendant had acquired the goodwill of his business under the trade name "Flare" or "French Flare" or whether the infringement is such as is likely to deceive or cause confusion, are irrelevant as per the view taken in the case of Coca Cola Company of Canada Ltd. v. Pepsi Cola Company of Canada Ltd., AIR 1942 PC

40. Addition of word "French" to the word "Flare" would not materially affect the piracy. This would be just like addition of word "India" to the Trade Mark "Ru5tam" in the case of Ruston & Hornby Ltd. AIR 1970 SC 1649 where such addition was held to be of no consequence. In view of this discussion, I am of the view that the plaintiff has made out a prima facie case.

13. The balance of convenience lies on the plaintiff, who would suffer irreparable loss if the defendant is allowed to manufacture and sell his products under the trade name Flare or French Flare . I, therefore, accept this application and order issue of interim injunction as prayed till decision of this suit. Copy of this para be communicated in writing to the parties. AA/N-434/K Application accepted.