2007 PLP 1181 (CLD)

SYED HAMID ALI SHAH, J.

The appellant through the instant appeal has assailed the order of the Additional District Judge/Trial Court dated 27-5-2005 whereby, he accepted the application of respondent No.1 for grant of temporary injunction.

2. The facts giving rise to the present appeal are that respondent No.1 filed a suit for permanent injunction against the appellant and respondent No.2, under section 73 of the Trade Marks Act, 1940 prayed for restraining defendants from infringing the registered trade mark and property mark "Asia" of respondent No.1/plaintiff. The suit was accompanied by an application for temporary injunction. The appellant contested the suit and filed written statement as well as reply to application for temporary injunction. Learned trial Court after hearing the parties proceeded to accept the application for temporary injunction, resultantly appellant No.1 was restrained from using the trade mark of "Asia" by adding word "Super" in the inner stage. Appellant was also restrained from manufacturing all items including the fans in the name and style of "Super Asia". Respondent No.2 was restrained from selling the items, manufactured by appellant No.1. Hence, this appeal assailing the order of the trial Court. 2-A. Learned counsel for the appellant at the very outset has submitted that the respondents herein opposed the registration of trade mark of the appellants "Super Asia" in the earlier litigation, on the identical grounds, which are now subject-matter of suit. The moot question 'whether or not the trade mark "Super Asia" resemble with that of respondents' trade mark "Asia" remained under consideration in previous litigation. It was held after comparing both "trade marks that both trade marks are different. The findings/orders of this Court dated 26-10-1986 passed in F.A.O. No.199 of 1986 (M/s Anwar Industries v. M/s Mohd Din and Sons), established that the plaintiff/respondent has no prima facie case. As per provisions of Article 201 of the Constitution of Islamic Republic of Pakistan, 1973 the decision of this Court was binding on subordinate Courts but this legal aspect was totally ignored by the learned trial Court. Learned counsel then submitted that the registered trade mark of the respondent is subject to disclaimer, which fact is evident from the perusal of registration. Learned counsel went on to argue that the word "Asia" being geographical name cannot be registered. Registration of trade mark of the respondent violates the provisions of sections 6 and 13 of Trade Marks Act, 1940. Learned counsel has referred to the case of Anwar Industries Limited v. Muhammad Ishaque Gondal and others (1988 CLC 489) to contend that the trade mark of the respondent, could not be allowed to monopolize a common geographical name "Asia". Learned counsel has submitted that the appellant's enterprise being much bigger in size, prior in business and manufacturer of a large number of products as compared to that one of the respondent, cannot be restrained from using its trade mark. He lastly summed up his assertions by submitting that while passing the impugned order learned trial Court has neglected these factors, which were essential to weigh the balance of convenience and irreparable loss.

3. Learned counsel for the respondent, on the other hand, has fully supported the impugned order. Learned counsel has submitted that the respondent is registered proprietor of Trade Mark "Asia" since 23-6-1965. The trade mark of appellant qua the fans is black capsulated spot on white and green background with the word "Asia" on it. The registered trade mark of the appellant under the name of "Super Asia" does not pertain to fan, it relates to manufacture of goods, other than fans. Learned counsel has submitted that order dated 26-10-1986 passed in F.A.O. No.119 of 1986 finds no mention in the written statement and as such cannot be considered in the case in hand. Case of Ehtesham ud Din Qureshi v. Pakistan Steel Mills Corporation Ltd. and others (2004 MLD 361) was referred to 'support this contention. Learned counsel while discussing the scope, extent and infringement of trade mark has referred to the cases of Messrs Mehran Ghee Mills (Pvt.) Limited and others v. Messrs Chiltan Ghee Mills (Pvt.) Limited and others (2001 SCMR 967), Messrs Tabaq Resturant v. Messrs Tabaq Resturant (1987 SCMR 1090) and Unilever PLC v. Al-Alameen Industries (2003 CLD 623). Learned counsel has referred to the cases of M. Sikandar Sultan v. Masih Ahmad Sheikh (2003 CLD 26), Telebrands Corporation through Attorney v. Telebrands Pakistan (Pvt.) Ltd. through Chief Executive and another (2006 CLD 580) and Khawaja Tahir Jamal v. Messrs A.R. Fehman Glass (2005 CLD 1768). With reference to case-law, referred, it was contended that the registration of trade mark is meant for the benefit of trader and to protect the public to be mislead or deceived, and for free enjoyment right of manufacturing and marketing products. Learned counsel lastly contended that though the trade mark of the respondent is registered subject to disclaimer yet the registered proprietor can claim monopoly in the manner in which such mark, device, word or combination was put to use. Learned counsel supported his contention by citing case of Pakistan Energy House (Pvt.) Ltd. v. Rio Chemical Company and another (2003 CLD 1531).

4. Heard learned counsel for the parties and the record perused.

5. The appeal, in hand, is directed against the order whereby learned trial Court accepted the application of the plaintiff/respondent and granted the relief of temporary injunction. Comparison of trade mark of the appellant with trade mark of the respondent, at this stage, would unfairly prejudice the case of either party before the trial Court. It is yet inevitable to discuss whether or not, the trade mark registered in favour of the respondent, is being infringed or the trade mark used by the appellant is deceptive, earlier decision of this Court, passed in F.A.O. No.119 of 1986 (M/s Anwar Industries v. Muhammad Din and sons) is necessary. Relevant part of judgment is reproduced hereunder:-- '...Respondent 1's trade mark bearing the words 'Super Asia' has device of oval embellishment in yellow, black and red colours whereas the appellant's trade mark of 'Asia' has device of dental wheel and has different colour scheme. The goods covered by the two sets of trade marks are altogether different and belong to different classes. Respondent 1 has been using the trade mark 'Super Asia' since 1976 and doing quite a good amount of business. The two trade marks are not confusing and are distinguishable. In the circumstances the Registrar had valid reason to turn down the appellant's opposition...."

6. The above judgment/order had not been assailed, before the apex Court, it has attained finality. The decision being inter se the same parties, subject-matter was substantially the same and it was decided by the Court of competent jurisdiction, after hearing the parties. Such decision/judgment in a subsequent suit is binding. It was relevant and most apt for present controversy but was surprisingly ignored by the trial Court. The appellant though has not mentioned about it in written statement, yet has not taken any contrary plea. Above referred judgment of this Court was not taken a plea in defence. Mere non-mention of earlier litigation, in written statement creates no bar. A judgment of High Court is authority, in subsequent suit, which has to be considered and is not liable to be ignored. Article 201 of the Constitution of Islamic Republic of Pakistan, 1973 can be referred in this respect. The impugned order of trial Court whereby earlier order dated 26-10-1986 has not been taken into consideration, is not legally sustainable.

7. In view of definite finding of this Court that respective trade marks of the parties herein, are altogether different, not confusing and distinguishable, leaves no room to conclude that the pre-requisite of injunction order i.e. prima facie case, was lacking.

8. Adverting to the registration of the trade name of respondent, subject to disclaimer of exclusive use of word "Asia". Provision of section 13 of the Act, are relevant and reproduced hereunder for reference:-- "

13. 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, or for the separate registration of which no application has been made, or (b) 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 proprietor 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."

9. A bare reading of section 13, clearly reveals that disclaimers are imposed for the purpose of defining the right, under the registration and not otherwise i.e. outside the registration. The proviso clearly provides that rights in a trade mark or a part of a trademark, arise, out of registration of which a disclaimer is made. Registrar at the time of granting of the registration, registered the trademark of the respondent subject to disclaimer, considering that it was not distinctive in favour of the proprietor. It is clear from the reading of section 13 .that the Registrar is empowered to place limitations by way of disclaimers on the rights which are granted to a party applying for registration of a trademark. Disclaimers are necessary to define the rights that a proprietor acquires by virtue of the registration. The disclaimer does not affect the proprietary rights acquired in the disclaimed feature by virtue of use and 'therefore the proprietor can prevent unauthorized use of disclaimed feature by proving prior use and acquisition of reputation and goodwill. One who opposes the exclusive rights of a proprietor in the disclaimed features of trademark, either arising out of a registration or through use must, establish a higher degree of honesty of adoption of that mark by him, absence of bad faith and that the said mark is not a mark itself but only a description of goods or services which is common to trade and should be for free of use by all the traders.

10. Section 6(1)(d) prohibits registration of a trademark comprising of a geographical name. Upon review of the Trade Marks Act as a whole, it becomes apparent that the Trade Marks Act in section 6, lays down the "distinctiveness requisite for registration". Therefore any trademark, which does not fulfil the requirements laid down in section 6 is not considered to be inherently distinctive and therefore not registerable. It was perhaps due to the fact that Registrar considered "ASIA" to be a geographical name, being the name of a continent, that it was not considered to be distinctive when it was registered and therefore a disclaimer on the exclusive use of the word 'ASIA' was imposed.

11. An important point, which cannot be ignored in these proceedings is that the respondent remained aware of the use of the trade mark 'Super Asia' by the appellant, since at least the year 1993 and they had already unsuccessfully opposed the registration of 'Super Asia' in favour of the appellant. Respondent's appeal before a learned Single Judge of this Court failed and they did not assail that decision before the apex Court. On the other hand, the legal proceedings, out of which this appeal has arisen, were instituted by the respondents against the appellant in the year 2004. There is an unexplained long delay of 11 years in instituting proceedings for infringement and/or passing off against the appellant. Such unexplained delay clearly tilts the balance of convenience and likelihood of irreparable loss in favour of the appellant disentitling the respondent for the grant of discretionary relief of interlocutory injunction and these important aspects have been over-looked by the learned Court below.

12. For the foregoing, this appeal is allowed and order of the learned trial Court dated 27-5-2005 is set aside, resultantly, the application for grant of temporary injunction, filed by. the respondent, is dismissed. The trial Court shall proceed with the trial at its own merit.

13. Before parting with the judgment it is clarified that any observation made herein is tentative and not final, yet inevitable.

14. Office is directed to send back the record of the trial Court. M.H./S-98/L Appeal allowed.