2004 PLP 315 (CLD)

(vi) Section 15(e) of the Customs Act, 1969 does not apply in the present circumstances as the name, address and country of origin of the goods have been distinctly written on the goods imported by Sami. (vii) Nasim has come to the Court with unclean hands. He has dishonestly adopted the trade mark which is the property of Achem and is not entitled to any relief by this Court and referred to the case 'reported in 1986 MLD 886.

7. Mr. Akhtar Hussain, learned counsel for the Collector, supported the arguments advanced by Mr. Zulfiqar Khan. He added that respondent No.2 had written to the Trade Marks Registry who by their letter dated 22‑11‑2001 had advised that the case may be decided in accordance with the provisions of section 15(e) of the Customs Act, 1969. He elaborated that the words "wonder tape" and "MADE IN TAIWAN" are conspicuously written on each Roll imported by Sami thus making it distinguishable from the indigenous goods of Nasim. He added that the Collector after examining the imported goods and considering the representation made by Nasim came to the conclusion that there was no violation of the Trade Marks Act, 1940 and, accordingly, they were liable to be cleared. However, after the issue of temporary injunction, the impugned goods had been withheld and removed to a bonded warehouse pending final decision of the matter by the High Court.

8. We have considered the arguments advanced by Mrs. Naveen Merchant, learned counsel for Nasim, Mr. Zulfiqar Ali Khan, learned counsel for Sami and Mr. Akhtar Hussain, learned counsel for the Collector.

9. Nasim in his suit for infringement, passing off, injunction, damages and rendition of accounts of profits has alleged that he commenced the use of the Trade Mark "Wonder" in the year 1987 in order to distinguish his goods from the goods of other persons and applied to the Trade Marks Registry for its registration in Class 16 in respect of "Polypropylene Adhesive tapes, and other adhesive tapes used for packing, sealing cartons and packages, stationery tape". The mark consists of the word "wonder" superimposed on a circular loop with the words "Opp. Stationery Tape" printed below the extended end of the loop. The mark was registered under Registration No.116513 as of 1‑8‑1992 and was renewed for a further period of 15 years with effect from 1‑8‑1999 vide Certificate dated 2‑12‑1999. In support of the contention, that Nasim has been using the mark since 1987, Mrs. Merchant explained that in the beginning Nasim used to get his goods manufactured under the Trade Mar "Wonder" from Achem in Taiwan and imported them for sale in Pakistan and that now he imports only the raw material from Achem and manufactures the tapes himself with his registered Trade Mark "Wonder" printed on the circular design. To prove the user of the mark since 1987 he has produced copies of import invoices from Achem for the years 1987, 1988, 1989 and 1996. The Registration Certificate shows that Nasim filed the application for registration of the mark on 1‑8‑1992. The application was apparently examined by the Trade Marks Registry to ensure that it meets the requirements of registration and that its registration is not prohibited under sections 8 and 10 of the Trade Marks Act, 1940. After the application had been advertised in the Trade Marks Journal to enable the general public to file objections, if any, to its registration and no opposition to its registration having been received the Trade Marks Registry registered the mark under Registered No.116513 as of 1‑8‑1992 in Class 16 and issued the Certificate of Registration on 25‑3‑1999. The registration of the mark conferred upon Nasim certain property rights to use the mark as elaborated in section 21 of the Trade Marks Act which reads as follows:‑‑ "

21. Right conferred by registration.‑‑‑(1) Subject to the provisions of sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation to be those goods and, without prejudice to the generality of the foregoing provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling, it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either‑‑ (a) as being used as a trade mark; or (b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade. (2) " Thus Sami acquired the exclusive right to use the registered trade mark in Class 16 in relation to the goods specified above thereby prohibiting and restraining every and all persons from using Sami's registered mark and the above provision further declares that the said right shall be deemed to be infringed by any other person who without the authority of Sami uses any mark identical with it or so resembling it which is likely to deceive or cause confusion in the course of trade in relation to the goods in respect of which his Mark "Wonder" is registered. This right is however subject to the terms and conditions specified in sections 22, 25 and 26 of the Trade Marks Act as discussed hereafter. The legal effects of the registration and its renewal are stated in sections 23 and 24 of the Trade Marks Act which read as follows:‑‑ "23 Registration to be `prima facie' evidence of validity.‑‑ In all legal proceedings relating to a trade mark registered under this Act the fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof." (Emphasis added).

24. Registration to be conclusive as to validity after seven years.‑‑‑In all legal proceedings relating to a registered trade mark, the original registration of the trade mark shall after the expiration of seven years from the date of such original registration be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade mark offends against the provisions of section 8." (Emphasis added). From a bare reading of the above two sections, it is clear that in all legal proceedings relating to a registered trade mark, the registration certificate of the mark is a prima facie evidence that the registration is valid and after the expiration of seven years from the date of registration, the registration shall be taken to be valid and conclusive in all respects unless the registration was obtained by fraud or the trade mark offends against the provisions of section

8. Therefore, after registration of Nasim's Mark by virtue of the Certificate dated 25‑3‑1999 and its renewal on 2‑12‑1999, the registration of Nasim's mark became valid and conclusive in all respects unless it is proved to have been obtained by fraud or it offends against the provisions of section

8. Mr. Khan, learned counsel for Sami has not argued that the mark offends against the provisions of section 8 but he has only contended that registration of the mark in favour of Nasim was not bona fide as he had obtained it by misrepresentation.

10. It cannot be disputed that on registration and thereafter renewal of the Mark "Wonder" in his name, Nasim acquired the exclusive right to the use of the trade mark in Class 16 in relation to "Polypropylene adhesive tapes and other adhesive tapes used for packing, sealing cartons and packages and stationery tapes" and subject to the provisions of sections 22, 25 and 26 of the Trade Marks Act, he has the right to restrain all persons from using any mark similar, identical with or resembling his mark which was likely to deceive or cause confusion in the course of trade that the said goods have been produced by Nasim and he has the right to obtain an injunction against the person who infringes his registered mark in the manner described above merely on production of the Registration Certificate under section 75 of the Trade Marks Act. The right acquired by Nasim to the exclusive use of the mark as stated in section 21 is, however, as already mentioned above subject to the provisions of sections 25 and

26. The provisions of section 26 are not applicable in the circumstances of the case and can therefore be ignored. Section 25 reads as follows:‑‑ "

25. Saving for vested rights.‑‑‑Nothing in this Act, shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor‑in‑title of his continuously used that trade mark from a date prior. (a) to the use of the first‑mentioned trade mark in relation to those goods by the proprietor or a predecessor‑in‑title of his, or (b) to the registration of the first‑mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor‑in‑title of his, whichever, is the earlier or to object (on such use being proved) to registration of that identical or nearly resembling trade mark in respect of those goods under subsection (2) of section

10. In view of the above provisions, the rights acquired by Nasim, inter alia, under sections 21, 23 and 25 would not entitle Nasim to interfere or restrain the use of the Trade Mark "Wonder" by any other person who has been using a trade mark identical with or nearly resembling it in relation to goods in respect of which the other person or his predecessor‑in‑title has continuously used the trade mark from a date prior to the use of the trade mark by Nasim. The case put up by Sami is that the Trade Mark "Wonder" does not originally belong to Nasim as it was first used by Achem who got it registered in its name in Taiwan in 1976 and in USA in 1977 and that Nasim has been importing tapes bearing the Trade Mark "Wonder" from Achem which the latter produces under its own registration and that Nasim obtained the registration of the Trade Mark "Wonder" in his name in Pakistan fraudulently. Mrs. Merchant denied the contention of Mr. Khan and asserted that Nasim has been dealing with Achem on principal to Principal basis; however, she did not produce any document in support of the claim that the relationship with Achem was on principal to principal basis. Be that as it may, it is an admitted position that in Pakistan Nasim is the proprietor of the registered Mark "Wonder" with a circular design in Class 16 in respect of adhesive and other tapes and in view of the registration of the mark in his name and its renewal after seven years, he is entitled to the protection provided to him under the Trade Marks Act, 1940, as long as his mark remains on the Register with the exception that any other person, who may Have been using the mark prior to the registration of the mark in favour of Nasim, has the right to continue to do so. Sami has produced ten invoices to show that the registration of the Mark "Wonder" in favour of Nasim is mala fide and that Achem has been exporting the same goods under the Trade Mark "Wonder" to various countries of the world. On perusal of the invoices, it transpires that nine invoices are for the years 2000 to 2002 showing export of adhesive tapes by Achem to Lebanon, Kuwait, Saudi Arabia, Singapore and India while one is in favour of Rashid Enterprises, Shah Alam Market, Lahore dated, 18‑1‑2002. The production of these invoices support the case of Nasim that the goods bearing the Mark "Wonder", which is registered in his name have not been imported in Pakistan by anyone from the time of his alleged first use in 1987 or its registration in 1992 until the filing of this suit. Further, the invoice dated 18th January, 2002 which is in favour of Rashid Enterprises of Lahore does not prove prior user by Sami which would entitle him to import goods bearing the trade mark which is registered in the name of Nasim. If Sami was aggrieved by the registration of the mark in favour of Nasim, he could have filed an application for rectification of the Register as provided in section 46 of the Trade Marks Act, which reads as follows:‑‑ "

46. Power to cancel or vary registration and to rectify the register.‑‑‑(1) On application in the prescribed manner by any person aggrieved, to a High Court or to the Registrar the Tribunal may make such order as it may think fit for cancelling or varying the registration or a trade mark on the ground of any contravention of or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register; or by any error or defect in any entry in the register; may apply in the prescribed manner to a High Court or to the Registrar, and the Tribunal may make such order for making, expunging or varying the entry as it may think fit.

(5)

" (Emphasis added). It is an admitted position that neither Sami nor any other person has filed any application under section 46 of the Trade Marks Act for correction of the Register by cancelling or varying the registration of Nasim's Trade Mark. Consequently, Nasim would continue to enjoy the right to use the registered trade mark exclusively until 2014 when the renewal would expire subject to further renewal for another 15 years thereafter unless the mark is cancelled or varied under the aforesaid section.

10. We asked Mrs. Merchant to show us the goods manufactured or produced by Nasim and Mr. Zulfiqar Ali Khan to show us the goods imported by Sami. Mrs. Naveen Merchant produced before us two spools apparently made of cardboard with the words "wonder tape" printed in blue on the inside of the spool and one spool of similar kind in a transparent plastic bag with the word "wonder(R)" on a circular loop printed on it. Mr. Khan also produced a spool apparently made of cardboard with the words "wonder tape" printed in blue on the inside of the spool and another spool of similar kind in a transparent plastic bag with the word "wonder(R)" on a circular loop printed on it. The samples of neither party contain the name of the manufacturer or the place of manufacture. All the five spools appear to be manufactured by the same person and on the same machine except that the printing on the plastic bag produced by Zulfiqar Ali Khan is of better and of finer quality than the printing on the plastic bag produced by Mrs. Navin Merchant.

11. Now section 15(e) of the Customs Act; 1969 reads as follows:‑‑ "Prohibition.‑‑‑No goods specified in the following clauses shall be brought, whether by air or land or sea, into Pakistan‑‑ (a) ... (e) goods made or produced outside Pakistan and having applied thereto any name or trade mark, being or purporting to be the name or trade mark of any manufacturer, dealer, or trader in Pakistan unless‑‑ (i) the name or trade mark is, as to every application thereof, accompanied by a definite indication of the goods having been made or produced in a place outside Pakistan, and (ii) the country in which the place is situated is in that indication shown in letters as large and conspicuous as any letter in the name or trade mark, and in the same language and character as the name or trade mark . (f) ....." From 'a reading of the above provision, it appears that any goods made or produced outside Pakistan and having the' trade mark of any manufacturer, dealer or trader in Pakistan cannot be brought in Pakistan unless the trade mark is accompanied by a definite indication that the goods have been made or produced in a place outside Pakistan and the name of the country in which the place of manufacture or production is situated is shown in as large and as conspicuous letters as the letters of the trade mark and in the same language as the trade mark. As stated above, the goods produced by Sami do not contain any indication whatsoever that they have been made or produced outside Pakistan. Because of apparent similarity between the goods produced by Nasim and the goods imported by Sami, no purchaser in the market will be able to distinguish the goods of Sami from those of Nasim. In these circumstances, the goods, imported by Sami appear to fall within the mischief of section 15(e) of the Customs Act, 1969 and the Customs Department would; prima facie, be justified in not allowing its clearance. The three judgments relied upon by the learned Single Judge in support of Sami's defence and thereby dismissing Nasim's application for temporary injunction are distinguishable as the facts and circumstances of these cases are different from the instant case. In Beecham Group and another v. Ahmed Ismail and another PLD 1987 Kar.

356. Beecham, who was the owner of the registered Trade Mark "Macleans" in Class 3 from 24‑8‑1943 in respect of toothpaste and like products had filed an application in the High Court under sections 46 and 72 of the Trade Marks Act, 1940 against Ahmed Ismail (hereinafter referred to as "Ismail") who had obtained registration of the Trade Mark "Macleans' in respect of tooth brushes in Class

3. Beecham alleged that the latter had with mala fide intention to defraud and deceive the public and trade and to make wrongful profits out of the enormous reputation, popularity goodwill of Beecham and their products had deceptively got the Mark "Macleans", which was identical with that of Beecham's mark, registered in his name. They contended that the remaining of the entry of Ismail's trade mark in the register was prejudicial to Beecham's rights and interest and therefore it ought to be removed from the register. In defence, Ismail submitted that the registration as well as the reputation of the trade mark of Beecham was only with respect to toothpaste etc. and not in respect to tooth brushes which had never been produced or sold by Beecham. The learned Judge after discussing the various provisions of Trade Marks Act and the reported judgments came to the conclusion that tooth brushes fall within the same classification of goods as toothpaste and that there was every likelihood of confusion in the minds of the people that the tooth brushes sold by Ismail emanate from the same source as the toothpaste and ordered that the Trade Mark "Macleans" at least in respect of tooth brushes should not have been allowed by the Registrar of Trade Marks unless it was satisfied that Beecham had no intention of making or introducing tooth brushes in the country. In the present case Sami has not filed any application under section 46 of the Trade Marks Act for rectification of the register or removal of Nasim's trade mark from the register and is not entitled to any relief as long as Nasim's mark remains in the register as discussed above.

13. The case of Ghulam Muhammad Dossal & Company v. Vulcan Company Ltd. and another 1986 MLD 886, is distinguishable from the present case. In the said case Dossal who claimed ownership of the Mark "Arminius" under Registration No.45724 dated 6‑8‑1966 filed a. suit to restrain Vulcan from importing and selling revolvers bearing the Trade Mark "Arminius" which were imported from a foreign country. Dossal pleaded that because of the registration of the Trade Mark "Arminius" in their name Vulcan had no right to import and sell arms and ammunitions bearing the Trade Mark "Arminius" and the Collector of Customs could not legally hand over the goods to Vulcan. It was, however, a common ground between the parties that a German firm who was engaged in manufacturing of arms and ammunitions had obtained registration of the Trade Mark "Arminius" for its products in West Germany in the year 1951. The learned Additional District Judge declined to grant temporary injunction to Dossal on the basis of documentary evidence produced before him to show that arms bearing the Trade Mark "Arminius" had in the past been imported in Pakistan by several arms and ammunitions dealers including Vulcan and that some dealers had imported such arms prior to 1966 when the alleged Trade Mark "Arminius" was registered in favour of Dossal in Pakistan. The appeal was dismissed by the Lahore High Court, inter alia, on the ground that under section 25 of the Trade Marks Act, Vulcan was entitled to import and sell the goods bearing the Trade Mark "Arminius" imported from, West Germany because such a right was available to it under the said section. In the present case, Sami has alleged that stationery tape is being imported in Pakistan for a long time but has not produced any single document to show that stationery tape bearing the trade mark consisting of the word "wonder" printed on a circular loop had been imported by him or anyone else in Pakistan prior to its registration in favour of Nasim. This judgment therefore, does not support Sami's defence.

14. In the case of Irshad Sewing Machine Company v. Registrar of Trade Marks and others 1992 MLD 2307, Irshad applied for registration of the Trade Mark "Toshiba" in Class 7 for sewing machines and parts thereof which was opposed by Toshiba Corporation of Japan on the ground that it was the proprietor of the Trade Mark "Toshiba" of worldwide fame which had been used in Pakistan for several years and in any case prior to 1962 in relation to a large variety of goods of industrial, commercial, domestic and other uses including some goods falling in Class

7. Toshiba averred that it was making tools for affixing buttons, fastening buttons, buttons holes, scissors and cloth shearing tools screw drivers and other instruments used in the maintenance of sewing machines, lamps which might be attached to sewing machines and induction motors which could be utilized for operating sewing machines and thus forming part of sewing machines. The Registrar of Trade Marks allowed the Opposition and dismissed Irshad's application for registration of the Trade Mark "Toshiba" in respect of sewing machines. The order of the Registrar was confirmed by the Honourable Lahore High Court and the appeal filed by the Irshad was dismissed observing, inter alia, that the Trade Mark Toshiba was very well‑known in the market and enjoyed a worldwide reputation and as indicated in section 8(a) there was likelihood of deception or confusion as the general public could be misled into believing that the sewing machines sold by Irshad were the product of Toshiba Corporation. In the present case, neither the Trade Mark "Wonder" for stationery tapes is an internationally well‑known mark like Toshiba, Sony, Coca Cola, McDonald or Philips etc. nor Sami has produced any evidence to show that' stationery tape bearing the Trade Mark "Wonder" imported by him enjoys worldwide reputation and is recognized by the general public to be the product of Achem Industries of Taiwan except two documents to show its registration in Republic of China in 1976 and in U.S.A. in 1977. The ten invoices of Achem produced by Sami show export of stationery tapes to various countries from January, 2000 to 2002 but do not show import of such goods in Pakistan by anyone prior to the date of registration of the mark by Nasim. Further, the export of goods by Achem to other countries of the world does not confer any right in favour of Sami to import goods which infringe the registered trade mark rights of Nasim. The copy of the application filed by Achem for registration of their trade mark in Pakistan which was produced by Nasim at the time of hearing of the appeal and not disputed by Sami states that the mark applied for registration "Achem wonder" is proposed to be used in Pakistan. This judgment also does not ‑advance the defence put up by Sami.

15. In view of the 'above discussion, we are satisfied that Nasim had made out a prima facie case for grant of temporary injunction and the balance of convenience was also in his favour as his Trade Mark "Wonder" had been registered as of 1‑8‑1992 and renewed for a further period of 15 years from 1‑8‑1999. Consequently:‑‑‑ (i) The order dated 19-8‑2002 passed by the learned Single Judge dismissing Nasim's application under Order 39, rules 1 and 2, C.P.C. for grant of temporary injunction is K hereby set aside. (ii) Respondent No.2 is restrained from clearing or allowing Sami to clear his consignment consisting of packing tapes, stationery tapes under the registered Trade Mark "Wonder" or any other trade mark which is identical with or confusingly similar to Nasim's registered trade mark; and (iii) Sami is restrained from selling, manufacturing, importing, offering for sale, advertising or distributing directly or indirectly packing tapes, stationery tapes under the Trade Mark "Wonder" or any other mark which is identical with or similar to Nasim's registered trade mark in Class

16. We may, however, clarify that any observation made/or conclusion drawn in this judgment are for the purpose of deciding the application for temporary injunction only and shall not in any way be used or referred to while deciding the suit after recording of evidence of the parties. KB.A. /N‑1/K Order accordingly.