2015 PLP 2015 (CLD)

MUHAMMAD FARRUKH IRFAN KHAN, J.

This appeal is directed against the impugned order dated 10-11-2014, passed by the learned Additional District Judge, Jhang on an application of respondents filed under Order XXXIX, Rules 1 and 2 of the C.P.C. whereby the appellant has been restrained from using trademark "Madhani Marka Sabun" and passing off their goods as goods of the respondents.

2. Learned counsel for the appellant has argued before this Court that the impugned order suffers from illegality as the appellant had also filed a trademark application bearing No.353776 in class 3 before the Registrar of Trade Marks, Karachi which was objected to, and show cause notices were issued under sections 17(2)(b), 14(3)(a) of the Trade Marks Ordinance, 2001 (hereinafter referred to as the Ordinance of 2001) and reply filed by the appellant on 23-10-2014. Learned counsel instead of focusing on the merits and demerits of the application under Order XXXIX, rules 1 and 2, C.P.C. has tried to raise a new plea in this appeal, that as the application of the appellant was pending before the Registrar of Trade Marks, Trade Marks Registry, Karachi, therefore, the learned Additional District Judge, Jhang had no jurisdiction to hear and decide the matter. He has also referred to section 73 of the Ordinance of 2001 to contend that when proceedings are pending adjudication before the Registrar of Trade Marks then other ancillary matters should also be proceeded before the said forum.

3. Arguments heard. Record perused.

4. It is an admitted fact that the respondents are the registered proprietors of Trade Mark "Madhani Marka Sabun" (hereinafter referred to as the Trade Mark) which is duly registered with the Trade Marks Registry, Government of Pakistan, Karachi under Trade Mark No.78336 in class 3, in respect of washing soap, which is being used on a substantial scale since 1962 either directly or through their predecessor in interest. The respondents filed a suit, inter alia, for permanent injunction against the appellant. The appellant/defendant in his written statement submitted that the respondents/plaintiffs had never challenged the Trade Mark and Design of the appellant before the concerned authorities. There was no specific denial in the pleadings which were filed before the learned Additional District Judge. Apparently no material has been placed on the record to show the usage of impugned Trade Mark "Madhani Marka Sabun" by the appellant/defendant. It is a settled principle of law that at the stage of hearing application under Order XXXIX, rules 1 and 2, C.P.C. the trial Court prima facie considers the evidence and material which is placed before it and any findings recorded for grant or refusal of injunctive order are only of a tentative nature and have no effect on the final outcome of the main suit. The learned Additional District Judge, Jhang on the basis of the Trade Mark Registration of the respondents has correctly found that a prima facie case is made out in favour of the plaintiffs and balance of convenience also tilts in their favour and they are likely to suffer irreparable loss if injunctive order is not passed.

5. Learned counsel for the appellant has failed to convince this Court that the learned trial Court has committed any illegality in granting injunctive order in favour of the respondents. The argument of the learned counsel for the appellant that when any matter relating to a Trade Mark is pending before the Registrar of Trade Marks, no proceedings before any other forum under section 73 of the Ordinance of 2001 can be initiated is ludicrous. For the sake of brevity section 73 of the Ordinance, 2001 is reproduced as follows:-- "

73. Revocation of registration.

(1) The registration of a trade mark may be revoked on any of the following grounds, namely:- (a) that within the period of five years following the date of completion of registration procedure it has not been put to bona fide use in Pakistan, by the proprietor or by an authorised user thereof, in relation to the goods or services for which it is registered, and there are no proper reasons for its non-use; (b) that the bona fide use has been suspended for an uninterrupted period of five years, and there are no proper reasons for its non -use; (c) that in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered; and (d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. (2) For the purpose of subsection (1), use of trade mark shall include use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. (3) The registration of a trade mark shall not be revoked on the grounds specified in clause (a) or (b) of subsection (1), if such use, as it referred to in those clauses, is commenced or resumed after the expiry of the five years period and before the application for revocation is made: Provided that any such commencement or resumption of use after the expiry of five years period but only three months before the application for revocation is made, shall only be regarded if the preparation for commencement or resumption began before the proprietor became aware that the application is made. (4) An application for revocation may be made by an interested party to the Registrar, except that

(a) if proceedings concerning the trade mark in question are pending in the High Court or, a District Court, the application shall be made to the High Court or, as the case may be, the District Court; and (b) in case the application is made to the Registrar, he may at any stage of the proceedings refer the application to the High Court or a District Court. (5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only. (6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from-- (a) the date of the application for revocation; or (b) if the Registrar, the High Court or a District Court is satisfied that the grounds for revocation existed at an earlier date, that date. (7) Where the registration of a trade mark is revoked or declared invalid on the ground that the registration was secured in bad faith, the applicant shall be barred from applying for registration of the identical or similar trade mark for two years from the date of revocation or invalidation, whatever the case may be.

6. From a plain reading of the aforesaid provision it is manifestly clear that argument advanced by learned counsel for the appellant is without backing of law. Section 73 of the Ordinance 2001 deals with revocation of registration and inter alia provides that if any proceedings concerning the trademark in question is pending in the High Court or a District Court application for revocation shall be made to the said High Court or a District Court. Further it enjoins the Registrar of Trade Marks that in case an application for revocation is made to Registrar he may at any stage of such proceedings refer the application to the High Court or a District Court.

7. Under the Ordinance of 2001, the jurisdiction to try a suit for infringement vests with the District Court, which includes the Court of an Additional District Judge (Sections 2(xiv) and 117 of the Ordinance of 2001). Thus the jurisdiction was correctly exercised. The learned Additional District Judge while referring to the case of Messrs Burney's Industrial and Commercial Co. Ltd. v. Messrs Rehman Match Works (PLD 1983 Karachi 357), has rightly held that merely filing an application for registration of a trademark cannot be treated as a defence to claim for infringement, which has to be decided on its own merits.

8. In view of what has been discussed above, the instant appeal has no merit and the same is dismissed in limine. MH/K-13/L Appeal dismissed.