2005 PLP 822 (CLD)

Asghar N. Farooqui for Defendant. Date of hearing: 22nd April, 2004. Listed application C.M.A. No.997 of 2004 under Order XXXIX, rules 1 and 2 seeks restraining orders against the defendant from infringing and/or passing off their products using Trade Marks 'Granito' or any other similar close variation thereof. Case of the plaintiff in the nutshell appears to be that the plaintiff are proprietor and registered holder of Mark "Grannitto" in clause-19. It appears that such mark was applied on 1-3-2000, registration was granted on 7-2-2004, case of the plaintiff is that the defendant had adopted similar mark abbreviating the spelling to read as "Granito". The mark is applied by the defendant on similar product. In terms of section 21 of the Trade Mark, Act, holder of registered trade mark has exclusive right to use mark to the exclusion of any other person. Sections 24, 25 and 26 of the Trade Mark Act. Defendant has filed counter affidavit. It is contended by learned counsel for the defendant that defendant is in the same trade since over decade and dealing in sanitary product. According to the learned counsel, defendant is importing said tiles from Indonesia. According to the learned counsel defendants are importing tiles under the name and style of "Granito" much prior to the adoption of mark by the plaintiff. Learned counsel was required to point out any documents that may reflect importation or use of said mark by the defendant prior to the date of adoption of the mark by the plaintiff that is 1-3-2000, date of application for registration of mark by the plaintiff. Learned counsel for the defendant has drawn my attention to two Bill of Entry, on the reverse of which the brand of goods imported is mentioned as "Granito", such entry appears to be dated 2-3-2001, obviously this is subsequent to the date, which the plaintiff has shown, he adopted the mark. Learned counsel for the defendant has also drawn my attention to an invoice purportedly dated 5-11-1999, this invoice appears to be a photocopy of the invoice of fax copy and on title it appears to have been received in March, 2004, prima facie photocopy of fax copy received in March, 2004 cannot be taken into consideration for more than one reason firstly it is not a copy of the original invoice. Secondly, even such invoice do not reflect that it is in respect of "Granito" tiles but the description given in crystal Gray Stone and crystal Mustard. In case plaintiff claims injunctive relief in cases of infringement of mark, prima facie plaintiff has to show that they are the registered holders of the mark in dispute. The defendant could successfully resist the injunctive order provided, they are able not only to place but successfully demonstrate from documents that they have statutory defence recognized under the Trade Mark Act to meet such challenge like, prior user, honest and concurrent user, that mark is publi juris. In absence of any such defence injunction cannot be refused. In the instant case defendant though pleaded that they are using the Mark "Granito" much before the plaintiff but no such material was produced at least up to date of hearing of this application. It was vainly argued that, plaintiff themselves have copied the mark of foreign origin, fact remains that such mark holder is not before the Court nor the defendants are agent nor representative of such mark holder. If such claim comes before the Court, it will be decided on its own merit. Defendant has to stand on his own legs to defeat the claim of registered holder of a mark. Accordingly application is granted as prayed. It may however, be made clear that defendant will be at liberty to bring on record documents to show that they were using this mark prior to the use of plaintiff or may establish and trove any of the statutory defence that may be available to them under the law. Application in terms of the above stand disposed of. H.B.T./R-35/K Application granted.