2004 PLP 1131 (CLD)

The plaintiff filed suit for permanent injunction restraining the defendant perpetually from using "Acer" either alone or in conjunction with other words in relation to internet telecommunication, satellite and computer goods, business and services.

2. Brief facts of the case are that the plaintiff is one of the world's renowned companies, carrying on, either itself and/or through its affiliates, licensees, subsidiaries or associated companies, a worldwide and reputable business from Taiwan and elsewhere and is a leading and well‑known manufacturer and/or producer and merchant of high quality products in the field of computers and allied goods, personal computer, hardware and firmware, CD roam, etc. The plaintiff‑Company was established in the year 1976 with an initial investment of US$ 25,000 with 11 employees and has now grown to become one of the top brands of the computer industry with its several dozen subsidiaries producing high‑tech products including IBM compatible personal computers as well as laser printers, software and mini computers.

3. In order to distinguish its products from those of its competitors, plaintiff, uses various trade‑marks, out of which most popular and internationally reputed Trade Mark is "Acer". The Trade Mark "Acer" 'was first adopted and used in the year 1987 by the plaintiffs predecessor‑in‑title Messrs Multitech Industrial Corporation, which subsequently, became "Acer" incorporated in 1988 and since then the Trade Mark "Acer" has been continuously used by the plaintiff in relation to its superior quality and high technology products in the field of computer. The word "Acer" is also used and forms an essential part of the corporate name and trade name of the plaintiff, "Acer" Inc. The plaintiffs corporate name is duly registered under relevant laws of Taiwan as from 1988. The plaintiffs products in computer industries only known as a product from "Acer" and the plaintiff not only manufactures the computer and other allied items, but also renders services using the corporate name, trade name and trade mark Acer supported by extensive promotion and advertising through various printed and electronic media.

4. The plaintiff also maintains a website since the year 1994, giving details of its company, its products, business and services, which can be accessed and or downloaded from the internet/ website address/domain name www.acer.com. The E mail address used by the plaintiff and its employees, throughout the world as (name of the person) "ACER com". The A plaintiff is using its corporate name, trade name and trade mark "Acer" as well as website/domain name www.acer.com and e‑mail address has been used continuously over the years and the plaintiffs advertisements in the multimedia like newspapers/ magazines, brochures, electronic media, etc. bearing the said corporate name, trade name and trade mark Acer. It is stated in the plaint that the plaintiffs website/internet address is very famous and on an average a total of more than 50,000 internet surfers daily visit the website of plaintiff from everywhere in the world. It is stated that the corporate name, trade name and Trade Mark "Acer" and the website/internet and e‑mail addresses using "Acer" have thus acquired an excellent reputation and good‑will internationally and in Pakistan on account of extensive use, good quality and plaintiffs products and reliability of business and services as well as extensive promotion in the printed and electronic media. It is stated that the corporate name, trade name and trade mark as well as website/internet address, all using "Acer" enjoys tremendous reputation in favour of the plaintiff with the result that any person, firm or company marketing its products and or rendering any services or conducting business under the corporate name or Trade Name "Acer" or otherwise adopting "Acer" as trade mark or trade name or as a part of its website/internet domain name and or e‑mail in respect of any business, in particular for computers and internet related business, goods and services could be said to be "Passing Off its business, goods and services as that of the plaintiff and or under its authority, thus giving rise to inevitable confusion and deception.

5. The grievance of the plaintiff in the plaint is that the plaintiff has recently come to know that the defendant has adopted the word "Acer" and commenced its business in the field of computers and has also started selling or intends to sell its goods and products, namely, computer related products, all using the name "Acer". The defendant's imitate trade mark and trade name "Acer" is the same as plaintiffs corporate name, trade name and trade mark "Acer" Inc. and Acer respectively. The defendant has also registered a domain name as www.acer.com.pk by launching its website on the internet which when uploaded, would be accessible all over the world by approaching htti)://www.acer.com.pk. The plaintiff stated that the adoption and use of imitate name Acer either as a trade mark on website or as internet domain name is deliberate, unauthorized, mala fide and act of fraud upon the plaintiff and the general public.

6. Summons was issued to the defendant and since the defendant could not be served through Bailiff, the same was served through publication in newspapers and on 24‑2‑2003 it was ordered that the matter be proceeded ex parte against the defendant.

7. From the record it appears by a website under the domain name www.acer.com.pk. The defendant offered "Acer" computers and also offered to provide technical services. Plaintiffs grievance is that the adoption and use of imitate name "Acer" either as a trade mark or trade name or website/internet domain and as E‑mail addressed by the defendant is deliberate, unauthorized, mala fide and an act of fraud upon the plaintiff and the public and as no permission/licence has been sought from the plaintiff for such use.

8. In recent past a tremendous change has been made in commercial dealings and now instead of purchasing or placing orders at shop and or in the office or organization the consumers and or companies approach the concerned parties by availing the facility through internet. Online shopping has become a common feature of market and is developing day by day. The consumer moves through the internet to the merchant website from where he decides that he wants to purchase something so he is moved to online transaction server where all the information he gives in encrypted. Once he has placed his order the information moves through a private gateway to a process network, where the issuing and acquiring banks were to complete or deny the transaction. This generally takes place in no more than 7 to 9 seconds. The previous mode of communication by exchange of letters in effect replacing with expeditious and reliable mode of communication through inter‑net and same has revolutionized the traditional corporate economy is evolving into a new business environment in which money, goods, services arid information are exchanged electronically. By availing the facility of internet a smallest business when can compete with the global multimillion company through his website without investing huge amounts. Normally if full particulars of a party are not known, then by placing anyone part of the name including corporate names, search can be made through computers and one can see on the monitors of his computer,, number of names with the words which have been put for search.

9. The defendant had created "website" obviously with intent to infringe the plaintiffs right by using plaintiff corporate name as domain name of his "website" by representing himself as part of plaintiff‑Company. As the plaintiff is engaged in the business in Pakistan with their corporate and trade name "Acer". I am not addressing the question whether use of corporate name through website by the defendant in Pakistan can be termed as use of it universally.

10. In the instant case the defendant's website address domain with the word "Acer" which is admittedly corporate name of the plaintiff as well as registered trade mark of the plaintiff. The plaintiff is also using his corporate name and has a website with the said imme as global Acer.com. through which plaintiff offered sale of the computers of different brands. The possibility that one, who is not fully conversant and or cannot recall complete website address of the plaintiff while searching with the corporate name "Acer" may approach the website created by the defendant cannot be over‑looked and likewise the possibility that such person may place order to defendant who is dealing in the same goods as that of the plaintiff with the belief that he is purchasing the "Acer" brand goods from the source wherefrom it has originated. In my opinion since the plaintiff is holding registered Trade Mark "Acer" and ‑acquired right in it by its long use, the website http://www.acer.com.pk. may create possible confusions in the mind of ordinary purchaser and he may through said website purchase the goods from the defendant believing the same that it has been originated from the plaintiff.

11. For the foregoing reasons the plaintiffs suit is decreed against the defendant to the extent of prayer clauses (i) and (ii) with no order as to costs as the plaintiff did not press other releifs. H.B.T./A‑55/K Suit degreed accordingly.