2016 PLP 437 (CLD)

MUHAMMAD FARRUKH IRFAN KHAN, J.

In this appeal, the appellant has challenged the order dated 09.02.2015 whereby the learned Additional District Judge, Sheikhupura has dismissed his application for grant of temporary injunction under Order XXXIX, Rules 1 and 2 of C.P.C.

2. Learned counsel for the appellant submits that the impugned order is bad in law as the learned Additional District Judge has not given due credence to the registration of the appellant's trademark.

3. While learned counsel for the respondent submits that the order of the learned Additional District Judge is in accordance with law as the appellant does not have any exclusive right on the use of word "MAKKHAN" which the appellant himself disclaimed while obtaining Registration No.247678 in Class 30, he further submits that the appellant and the respondent are real brothers and prior to undertaking separate businesses they have been working together under the same name and style and using the same trademark "MAKKHAN". He adds that the appellant, being a brother, was looking after the sales counter and other outdoor business affairs and as such, he has illegally registered the trademark in his sole name whereas the address given on the trademark certificate "Salah-ud-Din Road Sheikhupura" belongs to the respondent, who was undertaking the backend part i.e. manufacturing of the goods for the business.

4. I have heard the arguments and perused the record.

5. In a suit for permanent injunction and damages for infringement of a trademark, which is accompanied by an application under Order XXXIX, Rules 1 and 2 of C.P.C. the duty cast upon the learned Trial Court is to consider as to which of the two contesting parties has a prima facie case along with balance of convenience and as to who will suffer an irreparable loss if injunction is granted or denied. Perusal of the record shows that the Trademark Registration No.247678, dated 13.03.2008, in Class 30 in respect of sweets in the name of the appellant has been registered with the following disclaimer:- "Registration of this trade mark shall give no right to the exclusive use of "MAKKHAN SWEET AND BAKERS" and other descriptive matter appearing on the label." It was, therefore, essential for the learned Court below to examine as to what was the effect of a disclaimer which has been entered upon the aforesaid registration of the appellant. In the case of Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant (1987 SCMR 1090) it is, inter alia, laid down by the august Supreme Court of Pakistan that registration of a trademark would give rise to a prima facie case, balance of convenience and likelihood of irreparable loss for the grant of an injunction against infringement of the said registered trademark. This, in my humble opinion, would be applicable where a registration for a trademark has been issued without any disclaimer, restriction or limitation etc. However, where any disclaimer, restriction or limitation to the exclusive use of any word/feature/description is provided in the registration then such disclaimer, restriction or limitation would have to be considered while determining as to whether a prima facie case has been made out by the person who is seeking an injunctive order on the basis of its registration.

6. Section 21 of the Trade Marks Ordinance, 2001 deals with the treatment of registrations which are subject to disclaimer. The said section for ease of reference is reproduced as hereunder:- "

21. Registration subject to disclaimer.--If a trade mark contains:- (a) any part not separately registered as a trade mark in the name of the proprietor; (b) any part for the separate registration of which no application has been made; or (c) any matter common to the trade, or otherwise of a non-distinctive character, the Tribunal, in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the Register, that the proprietors shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the Tribunal holds him not to be entitled, or make such other disclaimer as the Tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration: Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made." It is, therefore, quite apparent that a disclaimer would be imposed by the Registrar on any part of trademark, as a condition for allowing registration, where the Registrar finds that the said part is, inter alia, common to trade or otherwise of a non-distinctive character and the Tribunal (Registrar) holds the appellant not to be entitled to the exclusive right to use thereof. A disclaimer, thus, limits the extent of the exclusive rights, which a registration may give to a trademark owner. Therefore, in view of the disclaimer noted in para 5 supra, it is manifest that the appellant has himself disclaimed any exclusive right to the words "MAKKHAN SWEET AND BAKERS". As such, in the absence of having an exclusive right on the use of the word "MAKKHAN", he cannot be held to be entitled to be considered to have made out a prima facie case on the basis of Registration No.247678 in class 30.

7. As to the remaining ingredients of balance of convenience and irreparable loss, the respondent has put up a challenge and has also claimed adverse prior rights of user in the said trademark on account of doing business together with the appellant in the past, under the same trademark and the learned trial Court has noted the documents of prior use, filed by the respondent, in the impugned order. This aspect of jointly using the trademark cannot be determined without recording of evidence. Thus, the appellant has also failed to show that balance of convenience is in his favour for grant of an injunction.

8. In view of the peculiar facts of the controversy in hand, it will have to be decided finally after recording of evidence, therefore, adjudication on the application under Order XXXIX, Rules 1 and 2 of C.P.C. and observations made herein, will not have any effect on the final outcome of the suit pending between the parties which will obviously be decided on merit.

9. The appellant has failed to show that he has a prima facie case and the balance of convenience is also in his favour and that he will suffer an irreparable loss by the continuation of business by the respondent by selling his goods under the word "MAKKHAN" considering what has been stated above. In view of the aforesaid findings, the order dated 09.02.2015, passed by the learned Additional District Judge, is within its legal boundary and this Court finds no occasion to interfere therein. Appeal is dismissed. MH/M-213/L Appeal dismissed.