2001 PLP 39 (MLD)

"This criteria become more important where proprietor's trade mark arid trade name are same or any invented word is sought to be imitated. In such circumstances the applicant for registration of similar or identical mark has to establish honestly and bona fides of higher decree. " . It was held in National Detergents Ltd. v. Nirma Chemicals Works reported in 1991 MLD 2357, at pages 2363 and 2364 that:-- "That appellants have not alleged that the first respondents had abandoned any intention to use their foreign trade mark in Pakistan for the goods and such inference cannot also be drawn in this case as the respondents have themselves filed application for registration of their mark and have expressed their intention to use it in Pakistan. The use of the word ,'Nirma' is clearly not bona fide. No appreciable reasons has been shown by the appellants or their counsel except with the intention to cause confusion. The conduct of the appellants in appropriating Trade Mark of foreign owners is not proper. " The plaintiff's suit, apart from infringement of trade mark MARS by the defendant is also based on passing off by the defendant of its goods under the imitated trade mark MARS as that of the plaintiff as it is the plaintiff who exclusively enjoys tremendous reputation and goodwill throughout the world including Pakistan in its trade mark MARS. In Tabaq Restaurant v. Tabaq Restaurant reported in 1987 SCMR 1090 it was stated approving the statements from Salmond on jurisprudence that:-- "He who by his skill and labour establishes a business acquires thereby an interest in the goodwill of it, that is to say, in the established disposition of customers to resort to him. To this goodwill he has an exclusive right which is violated by any one who seeks to. make use of it for his own advantages, as by falsely representing to the public that he is himself carrying on the business in question.. Special forms of this right of commercial goodwill are right to the name under which he carries on business or sells his goods, to this extent at least that no one is at liberty to use that name for the purpose of deceiving the public and so injuring the owner of it. He has a similar right to the exclusive use of the marks which he impresses upon his goods and by which they are known and identified in the market as his." In the case of Tektronix Incorporated v. M. Abdul Mannan reported in PLD' 1973 Karachi 14 while restraining the defendants, the learned Judge, amongst others, relied on the following passage at page 990 of Clark and Lindswell on Torts, 11th edition (page 17, para. 5). "It is an actionable wrong for a trader so to conduct his business, as to lead the belief that his goods or business are the goods or business of another. This wrong is known as. 'passing off'. It is p immaterial, whether the false representation, as to the goods for business involved in passing off, is made expressly by word, or impliedly by the use or imitation of a mark, trade name or get-up, with which the goods of another are associated in the minds of the p public. " In the said case at page 17 para. 5, reliance was also placed on the following passage at page 690 of Salmons .Law of Torts 13ih edition. "The true basis of the action is that the passing off injures the rights of property in the plaintiff, that right of property being his right to the goodwill of his business. In general the violation of the right to property is actionable, even though it is innocent and no damage has been proved:"- In A & F Pears Ltd. v. Ghulam Haider PLD 1959 (W. P.) Kar.154 (at pages 156 and, 157) it was stated. "A mark vouches for the goods which bear it if another person borrows it, then he borrows the reputation of the others too. Unfair Competition may exist not only in the sale of goods of the same character but in the unfair appropriation and use of the trade mark of another." "In Muhammad Ismail v. M/s. Soofi Soap Factory PLJ 1973 Lah. 208 (Copy enclosed as 10) at page 215 para. 26, the law relating to passing off has been stated in a few propositions; (1) -it is unlawful for a trader to pass-off his goods as the goods of another (2) Even if this is done innocently it will be restrained. A fortiori, if done designedly, for that is fraud, ,(4) Although the first purchaser is not deceived, nevertheless if the article is not delivered to him as to be calculated to deceive a purchaser from him, that is illegal." The purpose of this law or concept of passing off is well-explained in AIR 1980 Delhi 254; at 256, para. 12 (Eiora Ind. v. Banaras Days). The purpose of tort of passing off is to protect commercial goodwill, to ensure that people's business reputations are not exploited. Since business "goodwill" is an asset, and therefore, species of property the law protects it against encroachment as such. The tort is based on economic policy, the need to encourage enterprise and to ensure commercial stability. It secures a reasonable area of monopoly to traders. It is thus, complimentary to trade marks law which is founded upon statute rather than common law.. In the famous treatise law of Trade 'Marks and passing-off by Narayanan (Third Edition), in paragraph 1239-A, while discussing the characteristics of Passing-off, it is mentioned:-- " 1239-A. Essential characteristics of a passing off action. " "The essential characteristics which must be present in order to create a valid cause of action for passing off is stated by Lord Diplock are; (1) MRS representation (2) Made by a person in the Course of Trade. `(3) to prospective customer of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trade (in the sense that this is a reasonably seeable consequence and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or a will probably do so. ". The Principle of passing off has been stated by Lord Langdale M.R. as early as 1842 as being:-- "A man is not to sell his own goods under the pretence that they are the goods of another man" (Perry v. Truefitt, 6 Beav, 66= (1842) 49 ER 749). The defendant is selling drinks and the plaintiff chocolates. The defendant's defence is that both are different goods and the general principles of passing off shall not apply for them. Defendant's strongest defence is that its goods, drinks/beverages are different goods from the goods manufactured and sold by the plaintiff (Chocolates). However, plaintiff's drinks/beverages marked with its world famous trade mark MARS are available and offered for sale in various countries of the world including Pakistan. Plaintiff has also made a case for passing off in which case identity or similarity of the goods is not necessary. Defendant's goods need not be the same, they may be allied, cognate or even different. In a passing off action there is no requirement that the defendant should be carrying on a business which competes with that of the plaintiff or which would compete with any natural extension of the plaintiff's business. It is submitted by the plaintiff that the defendant's goods namely, drinks/beverages and the plaintiff's goods (without prejudice to plaintiff's use of MARS in relation to drinks/beverages) namely, chocolates are the goods, of the same or similar description, they are sold through same trade channels, through the same outlets and purchased by the same class of purchasers, therefore, from the common men point of the view, both the chocolates and drinks/beverages are Food Products. (3) in the famous treatise called, Law of Trade Marks and Passing off P. Narayanan (Fourth Edition), in paragraph No.15.86, with reference to the criteria to determine whether the goods are of same description, it has been mentioned:-- " 15.86 Factors to be considered. The various matters to be taken into consideration for deciding whether the goods are of the same description are: (a) the nature and composition of the goods; (b) their respective uses and functions; and (c) the trade channels through which they are bought and sold. (3.1)Applying the above criteria to the goods of the plaintiff (chocolates and goods of the Defendant Drinks/Beverages), it is clear that both are foods predictors, available at same stores and have a connection in the course of trade or otherwise, their trade channels are same. (3.2) In a recent judgment in the case involving famous trade mark LIPTON, titled Unilever PLC v. R.B. Oil Industries, reported in 1999 MLD 1447, where the goods of plaintiff were "tea and defendant's goods" were Lipton Banaspati it was held:-- "it is true that the plaintiff or its subsidiaries are not producing and marketing Banaspati oil with the Trade Mark Lipton, a glance at the Mark Lipton used by the defendant for its predictors Lipton Banaspat: clearly tends to show that, there is a considerable similarity of get-up, colour scheme, shape, style and device with that of the registered trade mark of the plaintiff who are undisputedly manufacturing and marketing a number of foods items with this trade marks since long. Argument advanced on the face of it may sound to be attractive by reason of non-production of Banaspati oil by the plaintiff Company under its registered trade mark and strictly speaking there may be no infringement of their legal right as to the use of their trade mark for this specific product. The fact, however, remains that by imitating their trade mark extensively the defendant prima facie if not contravening the trade mark in respect of the goods produced by the plaintiff is at least apparently wrongly and unlawfully using their products is in fact produced by the plaintiff Company. Public at large being fully conversant with and by the extensive use of plaintiff's products are quite likely to be duped and gather an impression as if Banaspati Lipton produced and marketed by the defendant is the products of the plaintiff multinational company who have acquired lawful vested right to produce and manufacture various food items with their trade name. The label, color scheme, device style and mark used by the defendant on their product of Lipton Banaspati tends to give prima facie impression that; notwithstanding it he mentions of the defendant-Company's name on the tin packs of Banaspati oil, public at large is most likely to be deceived and form a genuine opinion that their product is the product of the plaintiff-Company which by any stretch of reasoning and logic cannot be ignored to the utter detriment and disadvantage of the plaintiff. After all the defendant has a wide range and open field to choose another name for its product and in case it insists for its production under the trade name of the plaintiff, there is hardly any strong and convincing reason to justify the use of registered trade mark extensively used and enjoyed by the plaintiff‑Company for over decades."

5. The leading case in this respect' is PLD 1990 SC 313 (7‑Up case 7‑Up was not an invented word) wherein at page 345 dealing with beverages (Cl.32) and Pan Masala (C1.30) it has been held that:‑‑ "the fact that the company '7‑Up' is a multinational of international repute for beverage and for that reason not likely to engage itself in trading in such an indigenous products may academically be sound for a marketing analyst and really of no or very little concern to the class of consumers served by these products. Their sale points and outlet points are quite often the same. The consumers served are largely of the same category. Both the products though classified differently for the purpose of trade mark fall, from consumers point of view, in the same category of light refreshment of Re-preparations. Their features do make out a case of there being likelihood of confusion or deception with regard to their source. The applicants for this registration mark have a vide and open field to choose from. They decided upon the trade name of another which also happens to be the name of the company which has heavily invested in the trade name and goodwill appurtenant to it. With that real likelihood of deception and confusing it was clearly a case where registration should have been refused." (4) In the case reported as PLD 1990 Supreme Court 107‑4 at page 1076 (Philips case Philips was not an invented word) the Supreme Court approved the following finding of the High Court " (6‑1) It is not uncommon nowadays to find sewing machines being sold at the same shop where household appliances manufactured by respondent No.2 bearing Trademark Philips are offered for sale... "If any purchaser of sewing machine were to be offered for sale a machine manufacture by the appellant bearing the mark Philips, he would naturally take it to be a product of respondent No.2 and with the image of quality which he has in his mind regarding respondent No.2's products he might readily buy it only to find soon afterwards that he had been duped and cheated. There is every likelihood of causing of deception and confusion with the use of the mark Philips by the appellant and in such case different nature of goods loses relevance. And then at page 1077 it was observed as follows:‑‑

"He contended that our law recognizes and also protects trade mark in relation to goods and not independently of goods. Therefore, if the respondent No.2 is not manufacturing sewing machines or goods like sewing machines, the petitioner could legitimately claim and obtain the registration in question. The proposition is not that simple. Even then the question of deception and confusion could not be ignored as that remains the pivotal point in our law on the issue involved in this case." 7.In PLD 1991 Supreme Court 27 at page 33 (Toshiba case) paragraph No. 8 the Honourable Supreme Court held as follows:‑‑ "The view taken by the Registrar of Trade Marks that not only the trade mark has to be identical/similar but also the goods covered by the trade mark have also to be identical/similar, is not in accord with law, after the similarity of the trade mark was established and phonetically it was found to be identical. "

8. In the case of Unilever Ltd. v. Sultan Soap Factory reported as PLD 1991 Supreme Court 939 at page 951 it has been held as follows:‑‑ "It is now well‑settled that it is not necessary that the goods of both the parties may be the same. However, in case where goods are different the ultimate object of finding out confusion and deception is to be judged on consideration whether the name of the owner of the registered mark is so much associated with the goods that if same or similar mark is registered, the purchaser will take the goods under such mark in the normal course, the product of the proprietor of the registered mark. Therefore, in such case besides identical nature or similarity of trade mark the governing factor is the association of proprietor's name with the goods, its reputation and goodwill. The case of 7‑Up PLD 1990 SC 313 and Alpha Sewing Machine's case PLD 1990 SC 1074 illustrate this conclusion. The criteria become more important where proprietor of trade mark and trade name are the same or any invented word is sought to be imitated. In such circumstances the applicant for registration of similar or identical mark has to establish honesty and bona fide of higher degree. The counsel have relied on the following case‑law:‑‑ (1) PLD 1968 Kar. 369. (2) CLC 1986 Kar.1636. (3) PLD 1990 SC 313. (4) PLD 1990 SC 1074. (6) 1992 MLD 2307: (7) AIR 1969 Bom. 24. (8) AIR 1986 Delhi 329. (9) AIR 1994 Delhi 239. (10) AIR 1985 Allahabad 242 (11) AIR 1944 Lahore 386. (12) AIR 1983 Punjab 418. (13) 1992 MLD 2307. (14) 1973 R P C 560 (15)1983 FSR 155 (16) 1992 RPC 529. (17) 1997 RPC 155. (18) 15 RPC

105. Therefore, in view of the above keeping in mind the fact that the petitioner's mark enjoys any international reputation and in case, if the injunction application is not granted then it shall encourage all other types of organizations to take advantage of the popularity of such internationally known marks and claim that they are either previous users or their mark is registered vis‑a‑vis the international mark. Since at the present juncture one is only to appreciate whether prima facie a case is made out or not relying on the above noted case‑laws and the observations made therein the injunction application is granted prayed. Q.M.H./M.A.K./M‑86/K Application allowed.