2005 PLP 10 (CLD)

(2) As against the right of prior user in terms of section 25. (3) As against bona fide use by a person of his own name, his place of business or name and or place of business of his predecessor in trade. (4) Use of mark by other persons in the same trade, of any bona fide description of the character or quality of his goods. A permissive or authorized user cannot claim such protection or immunity. From the scheme of the Trade Mark Act, it appears that some statutory defences are available to a defendant who is accused of infringement or passing of action, some of the statutory defences that could be summarized are as follows:-- (a) Where the defendant is able to show that the impugned mark has direct reference to the character or quality of the goods and according to its ordinary significance a geographical name or surname or the name of sect, cast or tribe in Pakistan. (Section 6(1)(d). (b) Where defendant is able to show that the mark is not distinctive. (Section 6(1)(e). (c) Where defendant claims honest concurrent user or other special circumstances. (Section 10) (d) Where a defendant seeks benefit or any condition of limitation entered on the register and the defendant is able to show that his case is covered by such limitation and condition imposed by the Registrar on the registered mark of the plaintiff. (Section 22). (e) Where the defendant claims to be using the mark either by them or by their predecessor prior to the registration obtained by the plaintiff. (Section 25). (f) Where the defendant uses any bona fide description of the character or quality of his goods as a mark: Provided, he is not a permissive or authorized user under the registered holder or proprietor of the mark. (Section 25 read with sections 21 (b) and 57(b)). (g) Any feature, part of the mark or the mark as a whole that is common to trade or otherwise is of non descriptive in nature as to character or quality of goods. (Section 26). It appears that the defendant has found refuge and sought protection under the statutory defence available under section 22 of the Act, as summarized at serial numbers (d) and (g), in preceding paragraph. As noted above, registration of plaintiff s trade mark was advertised subject to conditions and limitations imposed by the Registrar subject to disclaimer in terms of section 13(b) of the Act thereof, which relates to any matter common to trade or otherwise of a non-distinctive character. It is not disputed that registration of the plaintiff mark was subject to disclaimer in respect of various parts including features identified as `E-4', device of motor-cycle and container. It appears that the feature `E-4' in the mark of the plaintiff beside, being disclaimed, is not distinctive rather it is descriptive as to the character or quality of the goods and such description is in common use by the lubricant manufacturer and traders. Defendant No.1 had placed on record sufficient material to show that large number of lubricant and oil dealers use in their mark `E-4' which is reflective of character or quality of lubricant. 'E' refers to motor-cycle engine and '4' refers to tour stroke, `E-4' read together in the trade and business of motor cycle lubricants, commonly identifies lubricant meant for "four stroke engine". It is not a trade mark, but a descriptive feature or character of lubricating oil that is associated to particular category and class of motor-cycle engine. Large number of photographs that have been placed on record shows that more 8 companies have adopted similar description in respect of their lubricating oil. Invariable in most of labels of various brands also carries image of different type of motor-cycle. Each of the lubricant traders appears to have used all the disclaimed, non-distinctive and descriptive parts used by the plaintiff in a different manner, composition, arrangement, get-up, colour scheme and in various shape of containers. This Court had the occasion to examine disclaimer in the case of Pakistan Drug House (Pvt.) Ltd. v. Rio Chemical Company 2003 CLD 1531 it was held:-- "From the disclaimer as reproduced above it is evident that disclaimer is with "Except substantially as shown in the form of application". When one or more part of a mark are subject to disclaimer, then what may be subject-matter of registration is distinctive manner, get up and colour scheme in which each of the constituting disclaimed parts or portion of mark are placed and arranged to give it same distinction from the other mark using same disclaimed part or portion for competing goods. Indeed, the plaintiff cannot claim exclusive right to the use of the name of the product i.e. "Aletris Cordial" or devise of bottle used in the mark as such mark was registered subject to disclaimer. There is no cavil to the proposition that a registered holder of mark who had disclaimed, any of the feature of the mark, either in word, device or set-up or where such feature is claimed to be common to trade whatever the case may be. The holder of the mark may claim monopoly in' the manner in which such mark, device, word or any combination thereof is put to use to distinguish his goods from the others. In this case the manner, plaintiff has used the combination of the word "Aletris Cordial" in semi-circular fashion in a particular form of calligraphy over the picture of a feminine hand holding a particular shape of bottle in a particular fashion all disclaimed parts, portion and feature of the mark i.e. words and device of bottle and hand have been placed in a particular fashion, get-up and colour scheme. Use of all feature in particular manner, gives the trade mark of the plaintiff a distinguishing impact. Indeed, defendant could have used the words "Aletris Cordial" and or device of bottle but not in the manner and fashion plaintiff had placed them in their mark. When both the marks subject-matter of suit were examined it appears that the defendant has not only copied the mark verbatim the defendant appears to have simply pirated the mark of plaintiff in verbatim arrangement of the disclaimed parts in same manner and fashion. In the above case injunction was granted as the defendant had copied the mark of plaintiff in verbatim by using same get-up, colour scheme, arrangement of the disclaimed parts in same manner and fashion. In the case of Sayed Engineering 2001 CLC 1368, it was observed that "where it can be established that the proprietor of the mark was using such words that were descriptive in nature for the period of time which eventually could be equated to a specified product, such may be at time treated as a mark of such proprietor". Injunction was granted. In the case of J. N. Nichols (Vimto) PLC PLD 2000 Karachi 192 Mr. Justice Nazim Hussain Siddiqui, since elevated to the Honourable Supreme Court, (now Chief Justice of the apex Court) in his usual lucid manner outlined the factors that may be considered while determining the similarity between two rival marks. In the case of Mehran Ghee Mills (Pvt.) Limited 2001 SCMR 967, procedure for determining the similarity or distinctiveness was laid down. It was further held that "it is not necessary that the mark ex facie has to deceive or confuse but its total impact upon a common purchaser is important". In the case of Registrar of Trade Marks v. Ashoe Chandra Rakhit Ltd. AIR 1955 SC 358, while considering discretion vested in the Registrar Trade Marks and interference by the High Court in relation to disclaimer and registration of label as a whole, in para. 14 it was held "It is true that where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory rights to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole." It appears that, the label of the plaintiff Annexure "D" to the plaint is a combination of alphabet "E" numerical 4 and 30/40, device of motor-cycle, in yellow colour scheme in a particular get-up and container, said label is not shown to be registered. Other label Annexure 'B' to the plaint appears to be registered as a whole, with disclaimer of various constituting components. Another label that is registered No.83067 is Annexure A/1 to the counter-affidavit, label shows use of alphabet "P" in a peculiar and prominent fashion, but without motor-cycle, it is registered as a whole, with disclaimer of various constituting components. Monopoly or exclusively of a composite mark or label holder, like that of the plaintiff lies in the manner of arrangement of various component constituting the composite mark or label as a whole and not in its individual component. A proprietor of a composite trade mark or label, comprised of many parts, may it be in words, devise, colour scheme, get-up or any combination thereof, can only claim monopoly in the composite mark as a whole to distinguish his goods from the others. A composite mark or label is not consist of each part but consist of combination thereof as a whole. Where a component of a label are shown either to be disclaimed, common to trade, non-distinctive or non-descriptive then, right to claim monopoly vanishes and disappears, unless it is shown that the label as a whole has been copied verbatim, as was the case in (Rio Chemical supra). Whether a particular mark or any part thereof is common to trade or otherwise, is indeed a matter of fact and calls for evidence. The defendant could successfully resist injunctive claim, where the defendant prima facie demonstrates that the impugned mark is in use of traders generally and is publici juris. In the instant case the defendant has produced number of photographs to show that other traders have invariable used different combination of various components of plaintiffs label, each component are shown to consist of disclaimed, non-distinctive and descriptive parts including, "E 4" and device of motor-cycle. Another feature that has engaged my attention is the advertisement that was carried out by the plaintiff in newspapers. Two newspapers were placed on record by the defendant namely daily 'Jang', Rawalpindi dated 24-1-1995 and daily Nawa-e-Waqt of Multan dated 24-1-1995. In said advertisement plaintiffs have advertised their lubricating oil and have cautioned the public not to be deceived by similar name, plaintiff had emphasized that public should buy engine oil bearing "P" logo. Even along with the plaint plaintiffs have themselves annexed Annexures F/3, F/4, and F/5 and it was advertised "for best engine performance use "Petlubes Oil". Annexures F-13 and F-14 to the plaint are also the advertisement of the plaintiff lubricating oil, it carries caution that "before purchasing quality of Petlubes ensure to see hologram, seal and computerize printing". It therefore, appears that the plaintiffs were fully aware that the description `E-4' is being used and employed generally by their other business rivals and traders in the same trade, otherwise there was no need to caution the public in the manner noted above. I had the benefit of seeing the original label and the containers of lubricating oil manufactured by the plaintiff and defendant both and have examined the same in the light of guiding principles laid down in J. N. Nichols (Vimto) PLC (supra) and Mehran Ghee Mills (Pvt.) Ltd. (supra). It was noted that not only the shape and design of the container was different but also the colour scheme of the rival containers was different. Though both the labels/ composite marks were comprised of common disclaimed, non-distinctive and descriptive features that were organized, arranged, placed and presented in different fashion, composition and colour scheme. Therefore, in my humble opinion plaintiff was neither able to demonstrate any exclusively, nor distinctiveness nor non descriptiveness in their label, rather features namely E-4', or plus and or device of motor-cycle, appears from material brought on record, to be commonly employed and used by the lubricant traders. As noted above, plaintiff's label is not consisting of each part independently but consist of combination and arrangement of various component in a particular manner and fashion thereof as a whole, which combination or arrangement of similar components is not shown to have been adopted by the defendant. Plaintiff was neither able to show any distinctiveness in any of the various components of their label including `E-4' or device of motor-cycle nor, any peculiarity that could distinguish their goods with other traders. Plaintiff also failed to bring on record any material to refute the defence material produced by the defendant through counter-affidavit. For the foregoing reasons, the plaintiff was not able to persuade this Court to 7 obtain confirmation of the injunctive relief. It is for this reason the application of the plaintiff was dismissed vide short order dated 1-4-2004 and above are the reasons for the same. C.M.A. No.2056 of 2004, since as being C.M.A. No. 1382 of 2004 under Order XXXIX, Rules 1 and 2 has been dismissed learned counsel for the defendant does not press this application which is accordingly disposed of as not pressed. H.B.T./P-9/K Suit/application dismissed.