2007 PLP 1610 (CLD)

AMIR HANI MUSLIM, J.

Through this injunction application, the plaintiff seeks restraining order against the defendants from infringing and/or passing their right in respect of the trade mark, house mark, service mark, Trade name "DEWAN" by using the trade mark Daily DEWAN for their newspaper, service and or any other product. The plaintiff has filed the present suit against the defendants with the following prayer:- (1) A decree for permanent injunction restraining the defendants, their servants, agents, distributors, dealers, employees and, all persons claiming through or under defendants jointly and/or severally from infringing the plaintiffs registered trademark/trade came/ service mark/ group-name and copyrighted word DEWAN "? " in any manner whatsoever by using the said trademark/title DEWAN "for their goods and services. (2) A decree for permanent injunction restraining the defendants, their servants, agents, distributors, dealers; employees and all persons claiming through or under defendants jointly and/or severally from passing off their goods and services as and for the goods and services of the plaintiffs by using' trademark/ trade-name/service mark/title DEWAN " in any manner whatsoever. (3) For a decree directing the defendants to furnish accounts of sales and profits made .by the defendants through use of trademark/title DEWAN " "and/or Daily DEWAN or any other similar or close variation thereof in arty manner whatsoever and to make payment to the plaintiff or all such sum as may be found due upon taking of such accounts. (4) To direct the defendants to make payment of Rs.500 million only to the plaintiff as a token of compensation for loss and injury caused to the plaintiff. (5) A decree directing the, defendants to deliver up to the plaintiff all the advertising. materials, printing material, printed and. promotional material, goods, blocks, plates and. all other materials bearing the infringing trade mark and service mark DEWAN and/or Daily DEWAN/ "??? ". (6) The cost of the suit may kindly be awarded. (7) Any further relief, this Court deems just and equitable may also be granted. The plaintiff claims to be a company incorporated under the Companies Ordinance 1984. It has been pleaded that the l plaintiff is member of prestigious "DEWAN MUSHTAQ GROUP" one of the leading; reputed and most prominent groups in Pakistan and has an annual turnover exceeding Pak Rupees 20 billions. The plaintiff has further, pleaded that their main fields of business include textiles, sugar, polyester and acrylic staple fibre, assembly-sum-progressive manufacture of automobiles, Equity participation in a private bank, foods and fast moving consumer goods and other allied business. The plaintiff claims that since 1916 the Dewan Mushtaq Group was set up and in 1947 the Dewan Family migrated in Pakistan: Somewhere in 1999, the plaintiff claims to have got registered their trade lame/trade mark "Dewan" under Trade Marks Act 1940. It is further claimed by the plaintiff that plaintiff has also been registered under different classifications in Class-1 to Class-45 inclusive of Class-16, which pertains to item news. letters and 'newspapers'. It has been contended by the learned counsel for the plaintiff that in the face of these documents which includes registration under Trade Marks Ordinance 2001, the defendants have no lawful right to undertake any publication in. 1 he trademark of "DEWAN" which is registered trademark of the plaintiff. According to the learned counsel for the plaintiff that section 40(4) of the Trade Marks Ordinance 2001 protects the rights of the plaintiffs, and the defendants who are running the newspaper in the name of Daily "DEWAN" are debarred to undertake publication in such trademark, as such an act of the defendants infringes the rights of the plaintiff guaranteed under the Trade Marks Ordinance, 2001. It was further contended that distinct nature of business has hardly any role in the use of the registered trademark of the 1 plaintiff. The learned counsel for the plaintiff has relied upon section 17 of the Trade Marks Ordinance 2001 which is the corresponding section of 8(a) of the Trade Marks Act 1940. In support of her contention, the learned counsel has relied upon the case of Alpha Sewing Machine v: Registrar of Trade Marks reported in PLD 1990 SC Page 1074. 'The learned counsel has submitted that the Honourable Supreme Court in the aforesaid case has held that if there is element of deception or confusion then any such element in respect of nature of business the registered trademark cannot be used by the other party. As against this the learned counsel for the defendant No.1 has submitted that the defendants have not undertaken any manufacturing business, but are publishing newspaper which is distinct business and law does not restrict them from using such name. He further submits that the defendants have been granted declaration by the Federal Government to publish daily "DEWAN" and this declaration has been endorsed by the DCO, City District Government, Karachi. He therefore, submits irrespective of the registered trademark (DEWAN) of the plaintiff, they can undertake the business of publication in the lame of daily 'Dewan'. I have heard the learned counsel and. have perused the record. Class 16 of the International Classification of goods and services clearly provides that if trademark is registered the same cannot be used by any other person in the face of the provision of section 40(4) read with section 17 of the Trade Marks Ordinance 2001. Mere granting of declaration under the Press Council of Pakistan Ordinance 2002 does not authorise the defendants to infringe, the right of the plaintiff guaranteed under the provision of the registered. Trade Marks Ordinance, 2001. The scope of granting of declaration is independent of the provision of Trade Marks Ordinance 2001. Grant of declaration sloes not give rise to a party a right to use the registered trade mark of another party under the garb of distinct nature of business. The learned counsel for the defendant has failed to cite any case-law in support of his contention to show that publication of the newspaper under the provision of Press Council of. Pakistan Ordinance, 2002 on the basis of a declaration does not excludes the right of .infringement of the plaintiff under the Trade Marks Ordinance 2001. The contention of the learned counsel for the plaintiff appeals to reason. Once a trade mark/trade is registered under the provision of Trade Mark Ordinance 2001 then it restricts the other party from using such trademark. Moreso when it is g distinct and use of it would lead to confusion or deception. The agreement, of the learned counsel for the plaintiff is weighty and the decision of the Honourable Supreme Court on the issue also supports the case in hand. Under these circumstances I am of the considered view that the plaintiff prima facie had made out a case for grant of .injunction and allowing to use the trade mark "DEWAN" by the defendants would cause inconvenience and would lead to deception and confusion in terms of the provision of section 17 of the Trade Marks Ordinance 2001. The balance of convenience also rests with the plaintiff for the purpose of granting of injunction, I therefore, allow this injunction application, restraining the defendants from using the trade name/trademark word DEWAN " " in their publication. M.B.A./D-11/K?????????????????????????????????????????????????????????????????????????????????? Application allowed.