2018 PLP 1072 (CLD)

MUHAMMAD FARRUKH IRFAN KHAN, J.

Through this Regular First Appeal filed under section 96 of the C.P.C. the Appellant Messrs Hilal Confectionary (Pvt.) Ltd. has assailed the judgment and decree dated 06.12.2005 of the learned Additional District Judge, Lahore whereby its suit for permanent injunction filed against the respondents Messrs Haroon Sweet Factory and one Shakeel General Store has been dismissed.

2. The brief facts out of which this appeal has arisen are that the appellant filed a suit for permanent injunction restraining the Defendants/respondents from infringement of its Trade Mark Hilal Khopra Candy. It was asserted that the appellant has been manufacturing and marketing sweets and candies bearing the said trade mark along with its label/wrapper in a particular colour scheme and design since 1988. It was also asserted that due to good quality, the sweets and candies of the appellant under this specific trade mark and label/wrapper have acquired great reputation and goodwill throughout the country. It was claimed that the said trademark along with its colour scheme and design was pending registration in class 30 under application No.1471128 and the copyrights in the said packaging of Hilal Khopra Candy Sweets is duly protected under the Trade Mark and Copy Rights Laws. Along with the suit the appellant attached certificate, regarding pendency of trademark registration application in class

30. The appellant alleged that by adopting a trademark Haroon Khopra Candy Sweets with identical packaging/label/wrapper, the respondents are not only infringing the appellant's trademark rights but also passing off their goods as the goods of the appellant and are thus continuously deceiving the appellant's customers besides causing financial loss to it.

3. The respondents defended the suit by filing their written statement and raised a preliminary objection that the suit was filed by an incompetent person. On merit it was pleaded that the appellant has merely filed a copy of the application for registration of the trademark which does not confer any exclusive right or cause of action in favour of the appellant; that it was at the most a suit for passing off which was to be filed before the Court of competent jurisdiction i.e. Civil Court and that the Court of District Judge had no jurisdiction to entertain the instant suit and adjudicate upon it. They refuted the plea of the appellant that Haroon Khopra Candy or its wrapper/label are similar or identical to Hilal Khopra Candy and its wrapper/label and submitted that as no exclusive right is vested in the appellant it cannot seek restraint against use of a label/wrapper having different colour scheme and design by the respondents under their trademark Haroon Khopra Candy. It was asserted that the appellant had no cause of action.

4. Out of the divergent pleadings of the parties the learned Additional District Judge, Lahore framed the following issues:-

1. Whether the plaintiff is entitled to decree for permanent injunction, against the defendants as prayed for? OPP

2. Whether the plaintiff has got no cause of action to file the suit? OPD

3. Whether the suit for plaintiffs is liable to be dismissed in view of preliminary objection No.2? OPD

4. Whether the defendant is entitled to recover special costs under section 35-A, C.P.C. from the plaintiff? OPD

5. Relief.

5. After evaluating the evidence produced by the parties and hearing the arguments of their learned counsel the learned Additional District Judge dismissed the suit vide order dated 26.10.2001. The appellant assailed the aforesaid order in R.F.A. No.783/2001 before this Court. During the pendency of the said R.F.A. the appellant moved an application under Order XLI, Rule 27, C.P.C. to adduce additional evidence. The said application was allowed by this Court vide order dated 27.03.2002 and the matter was remanded to the learned Trial Court for decision of the suit afresh after allowing the parties to adduce additional evidence. In post remand proceedings the learned Trial Court decided issues Nos.1 and 2 against the appellant on the basis of which the suit was dismissed vide order dated 06.12.2005 which has been assailed in the instant appeal.

6. Arguments heard. Record perused.

7. From bare perusal of the wrappers/labels of both the parties it is to be noted that appellant's product packing Ex.P-16 comprises of dark blue label in which the dark blue shade becomes lighter going right side. The word Hilal is written in yellow on the left upper corner. On the right upper corner protruding towards the center of the label are Khopra (Coconut) tree leaves in green. The word 'KHOPRA' is written in White in a stylized manner slightly above the center beneath which word 'Candy' is written in red and a star device on left; a half cut Coconut is depicted in the bottom of right side. Thus the label/wrapper has an overall dark blue, white, green and red colour scheme, design and get up. While wrapper (Ex.P-22) of the respondent also comprises of a dark blue colour in which the blue shade becomes lighter moving right side; coconut tree leaves in green colour are also protruding towards the center from the right upper corner; the word "KHOPRA" is written in white colour just above the middle beneath which the word `Candy' is written in red and a red circle device containing the word 'H' in a stylish manner on the left side; a half cut coconut is also depicted in the bottom of right side; on the top left side, however, the word 'Haroon' in yellow colour is written. Thus the label/wrapper of the respondent also has a dark blue, light blue, white, green and red colour scheme design and get up with only a few points of difference here and there as compared to that of the appellant's label/wrapper described above. The labels/wrappers of both the parties are scanned here as under for perusal:- (Appellant's Exh. 16) (Respondent's Exh.22) Issue No.1: The main claim of the appellant/plaintiff is against the product of 'Haroon Khopra Candy' as well as its packing, colour scheme, design and get-up of the respondent/defendant and the Trial Court was required to decide whether the trademark of the respondent 'Haroon Khopra Candy' and its packing, colour scheme, design and get-up is deceptively and confusingly similar and nearly resembles the distinctive trademark of the appellant's product and is likely to cause confusion and deception to the unwary purchasers. PW-1 on behalf of the appellant deposed that defendants are marketing/selling 'Haroon Khopra Candy' sweets in a wrapper which is almost similar to that of the plaintiff's and as such they are deceiving the ordinary customers. On the other hand the respondent's witness DW-1 has deposed that the plaintiff has filed a false case against the defendant. He further stated that plaintiff's product is being sold by the name and style of 'Hilal Khopra Candy' whereas the name of defendant's product is 'Haroon Khopra Candy'; that the trademark of defendant's company is in the name of 'Haroon' while the name of plaintiff's trademark is 'Hilal'; that the defendant company is not copying the plaintiff's trademark. He further deposed that the colour scheme of the plaintiff's product was originally golden but now it has been changed into blue. In cross-examination, he, however, admitted that wrapper of the plaintiff's company is Ex.P-16 whereas the wrapper of defendant's company is Ex.P-22. The learned Trial Court while dismissing the suit of the plaintiff/ appellant observed and held as under:- "It is evident from the registration certificate dated 29th November, 2004 of the plaintiff Ex.P-26 that it has been expressly got written on the bottom of this certificate that it has no exclusive right in respect of "Khopra Candy", so when the registration of the plaintiff's firm provides that registration is not in respect of "Khopra Candy", so how the plaintiff can claim that the defendant's company is passing off its goods in wrapper, similar to the wrapper of the plaintiff's company, because it is admitted between the parties from Ex.P-16, that it stands in the name of Hilal Candy, whereas defendant's wrapper stands in the name of "Haroon Khopra" Candy, then how it can be concluded that these trademarks are identical. Moreover, it has come in the evidence of the defendant that Khopra is being sold by 30/35 companies in blue colour, as such it is concluded that even if plaintiff is prior user, even then it would not give right to the plaintiff to claim exclusive right in respect of' words Khopra Candy, hence it is concluded that the plaintiff was unable to prove issue." The above findings of the learned Trial Court proceed on wrong premises. The Registration Certificate dated 20th November, 2014 of the plaintiff Ex.P-26 has not been taken into consideration in its true perspective. Only the disclaimer appearing on the Registration Certificate that appellant/plaintiff has no exclusive right in respect of Khopra Candy has been relied. As stated above, the appellant/plaintiffs main emphasis was on similarity of the wrappers/labels Ex.P-16 and Ex.P-22. The learned Trial Court has concluded that in the presence of disclaimer of Khopra Candy mentioned in the registration certificate, the appellant plaintiff cannot claim that respondent defendant is passing off its goods in wrappers similar to the wrappers of the plaintiffs company. Thus the Trial Court has erred in mixing the disclaimer on the word Khopra Candy with the rights that the appellant/plaintiff has claimed by virtue of the Registration of the features of the whole label i.e. colour scheme, design, get-up etc. In addition to this, the learned Trial Court has committed a further error by overlooking the established principle of law that for maintaining a passing off action registration of a trademark is not a requirement and even though there may be a disclaimer on any particular feature on a wrapper/label, a passing of action can still be maintained and succeed, if the claimant succeeds in showing that the disclaimed feature in a registration has acquired distinctiveness by virtue of use and promotion and enjoys reputation and good will in favour of the claimant, provided such a feature is capable of acquiring such distinctiveness. It stands established on record that the appellant/plaintiff has been manufacturing and marketing 'Hilal Khopra Candy Sweets' wrapped and labeled in a particular colour scheme and design since 1993 and as such has acquired good will and reputation. There is no evidence in rebuttal by the respondents/defendants to prove that they are the prior user of their product "Haroon Khopra Candy Sweets" with distinctiveness and as such enjoy sound reputation and good will. It appears that the learned Trial Court while making comparison of the wrappers/labels of the parties has not sought guidance from the judicial precedents and the rules of comparison/test of comparison laid down in a number of cases decided by the Hon'ble Supreme Court and High Courts of the country. I may observe that it is a very common defence for an infringer to argue that either its word mark is different from the word mark of the label, infringement, imitation of which is alleged by the claimant or in other cases when the word mark/trademark is imitated/infringed a defence is taken that the colour scheme or the wrapper of the product is different based on which it is argued that there is no likelihood of confusion and deception. It has to be noted that under the Trademark Ordinance, 2001 a Mark has been defined by section 2(xxiv) as follows:- "Mark includes, in particular a device, brand, heading, label, ticket, name including personal name, signature, word, letter, numeral, figurative element, colour, sound or any combination thereof." Thus the law envisages each one of the above features namely, inter alia, a name, a word, figurative element, colour, etc., to be a mark by itself and goes on to further specify that any combination of these features would be a mark also. In the market place, generally for consumer products, it is usual for companies to market their products in attractive colourful labels/wrappers/packaging, which often carries a word, a figurative element, a particular colour scheme, design and get up. Each one of these features, as the definition of the 'Mark" envisages, is a mark in itself. When one feature of a label consisting of a combination of marks is adopted or copied, infringement or copying of that feature (a mark) takes place which is liable to be remedied and it will not be a valid defence by a defendant that he has not adopted/imitated other features of the label mark, which may be different. Thus when a label comprising of a colour scheme, design and get up is copied/imitated by adopting a similar colour scheme, design and get up but with a different word, infringement to the extent of colour scheme design, and get up would take place and can be injuncted to that extent. Similarly if a word is copied but not the colour scheme, design and get up, the infringement takes place only to the extent of word mark and it will not be open to a defendant to allege that due to different word mark, or different colour scheme, design, get up, in the respective labels/packaging, there will be no likelihood of confusion or deception. This aspect has been explained/expounded in a number of reported cases, in a different context, by holding that when one or more of the essential features of a mark or a label is infringed, infringement takes place, for example, in the cases of "Cecil De Cordova and others v. Vick Chemical Company" (PLD 1951 Privy Council 108), Jamia Industries Ltd v. Caltex Oil (Pak) Ltd. and another (PLD 1984 SC 8), "Mehran Ghee Mills (Pvt.) Ltd. and others v. Messrs Chiltan Ghee Mills (Pvt.) Ltd. and others" (2001 SCMR 967) I would, therefore, hold that the plea that respondent's/defendant's mark is "HAROON KHOPRA CANDY" whereas Appellant's/Plaintiff's mark is "HILAL KHOPRA CANDY" and that the former's label/wrapper, colour scheme, design and get up, (Ex.P-22) which otherwise is confusing and nearly resembling to that of latter's label/wrapper colour Scheme, design and get-up (Ex.P-16) be considered to be different is not a legally sustainable defence and must be rejected. With regard to the Trial Court's observation that it has come in the evidence of respondent/defendant that Khopra Candy is being sold by 30/35 companies in blue colour as such even if it is concluded that appellant/plaintiff is the prior user, even then it would not give him right to claim exclusive right in respect of words Khopra Candy. But its does not mean that no right can be claimed over colour scheme, design and get up of Khopra Candy product by the appellant/plaintiff. In this respect the appellant has attached a list of almost 22 cases which the appellant filed against various companies and have been decreed by the Courts of competent jurisdiction in his favour. This aspect shows that the product of the appellant is a very popular and successful product which catches the attention of different competitors who want to make a quick buck by using its reputation and good will in the market place in a deceitful manner. In any event appearance of a number of infringements/imitations of trademarks of wrapper' colour scheme, design or get up in the market place does not give justification for an infringer/imitator to claim that the trademark of the original proprietor has lost its proprietary status and that due to such reason the infringer/imitator of such a trademark or label or wrapper is entitled to continue with its imitation and infringement. I now turn to determine whether the colour scheme, design and get up of Respondent's label Ex-P-22 is deceptively and confusingly similar to or nearly resembles the colour scheme, design and getup of the label Ex-P-16 of the Appellant/plaintiff and is likely to cause confusion and deception to the unwary purchasers. In the case of Burney's Industrial and Commercial Co. Ltd. v. Rehman Match Works (PLD 1983 Kar. 357) it was observed that the Court dealing with an infringement action no doubt considers the similarities and dissimilarities between the registered mark and the offending mark but the decision of the Court does not depend upon the number of similarities and dissimilarities. Consideration of similarities and dissimilarities is only a factor or aid in reaching the final conclusion by the Court. There might very well be a case where dissimilarities may outnumber the similarities but on account of the general get up, colour scheme, design and other features of the two marks, the Court very rightly reached to the conclusion that the offending mark was likely to deceive the unwary purchaser. The comparison by the Court between the two marks is not to be a meticulous comparison, the reason being to reach the mind of an incautious or unwary purchaser and for purposes of resemblance, the two marks should not be compared side by side and the question in cases of alleged conflict between two marks always is whether a person will be deceived when he sees one trade mark in the absence of another mark. In the case of Jamia Industries Ltd. v. Caltex Oil (Pak.) Ltd. and another (PLD 1984 SC 8) at page 10 para 5 going on to page 11 the honourable Supreme Court observed as follows: "The examination of reported cases indicates that a decision on the question whether a mark so nearly resembles another as to be likely to deceive or cause confusion is not an exercise of discretion by a Tribunal but a finding of fact. Kerly in his book Law of Trade Marks and Trade Names (1966 Edn.) at page 838 makes the following observations on the principles to be followed in comparing the two marks:- "Two marks, when placed side by side, may exhibit many and various differences yet the main idea left on the mind by both may be same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of ball; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollect of the whole. Moreover, variations in details might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own." When the question arises whether a mark applied for bears such resemblance to another mark as to be likely to deceive, it should be determined by considering what is the leading characteristics of each. The one might contain many, even most, of the same elements as the other, and yet the leading, or it may be the only, impression left on mind might be very different. On the other hand, a critical comparison of two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus it is clear that a mark is infringed if the essential features, or essential particulars of it, are taken." In the case of J.N. Nichols (Vimto) Plc A Company Incorporated In The United Kingdom v. Mehran Bottlers (Private) Limited, Karachi (PLD 2000 Kar. 192) a learned single Judge of the Sindh High Court relied on the case of Messrs Hiralal Parbhudas v. Messrs Ganesh Trading Company (AIR 1984 Bombay 218) wherein the High Court of Bombay, after taking into consideration several decisions of the Indian Supreme Court, summed up well established principles to be observed in deciding the question of similarity of two marks in the following manner:- a) What is the main idea or the salient features? b) Marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole. c) Overall similarity is the touchstone. d) Marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection. e) Overall structures, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied. f) The purchaser must not be put in a state of wonderment. g) Marks must be compared as a whole, microscopic examination being impermissible. h) The broad and salient features must be considered for which marks must not be placed side by side to find out differences in design. i) Overall similarity is sufficient. In the case of Burney's Industrial and Commercial Co. Ltd. v. Rehman Match Works (PLD 1983 Karachi 357) it was held that where two marks are not identical the crucial point requiring consideration would be that defendant's mark so nearly resembles that plaintiffs registered trade mark as to be likely to deceive or cause confusion in the course of trade and that it has to be seen whether an unwary or incautious or careless or unguarded purchaser is likely to be misled or deceived into purchasing goods of a person infringing the trade mark as goods of proprietor of trade mark keeping in mind vast difference in literacy ratio and condition of life in Pakistan as compared to developed countries. Test is that of an unwary purchaser and it is he whose evidence only would be relevant-Evidence of intelligent customer or even an expert is not relevant. Comparison by court between two marks not to be meticulous - Court to reach mind of an unwary purchaser - Question in cases of alleged conflict between two marks always being whether a person will be deceived when he sees one trade mark in absence of another mark. At page 371 it is observed that:- "

9. It is for the Court to decide whether there is an infringement of the registered trade mark in terms of section 21(1) of the Trade Marks Act, 1940. Evidence given by purchasers to the effect that they were or were not deceived by the infringing mark is generally not of much assistance to the Court. Evidence of an expert witness or an intelligent customer or even a customer of average intelligence who takes ordinary care while buying goods in the market, would not be relevant as the test is that of an unwary purchaser and it is only the evidence of an unwary purchaser which would be relevant. Then some witnesses for the plaintiff in a trade mark whereas other witnesses giving, evidence for the defendant may depose to the contrary. It may, therefore, be observed that invariably the Court, after taking into consideration the two marks-the registered and the infringing-decides whether the unwary purchaser is or is not likely to be deceived." In the case of Bashir Ahmed v. Firm Hafiz Habibur Rehman, reported in 1980 CLC 1268 the Court at page 569 held that:- "In such like cases the test of the infringement of registered mark, as laid down by a Division Bench in Ram Kumar Jalan v. R.J. Wood & Co., Ltd. (AIR 1941 Lah. 263) is whether the unwary purchaser is likely to be deceived." This criterion was followed by another Division Bench of the Court in Insaf Soap Factory v. Lever Brothers Port Sunlight Ltd. (PLD 1959 Lahore 381) and it was observed: "In cases of the infringement of trademark the test is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trademark as the goods of the owner of the trademark still holds good. Not much weight can, therefore, be attached to the few points of dissimilarity between the plaintiffs and defendant's wrappers to which our attention has been drawn by the learned counsel for the appellant because the points of similarity in them are so great that an unwary purchaser is likely to be deceived in purchasing the defendant's goods as that of the plaintiff." While determining the question of infringement of the respondent's trademark, it is to be seen whether the public at large and not that an intelligent section of the public would be confused and misled. Sir George Jessel M.R. in Guardian Fire and Life Assurance Co. v. Guardian and General Insurance Co., Ltd. 1(1880) 50 L.J. Ch.] maintained: "The public are careless and it is no use supposing that if they paid a very moderate attention to names they would see they were not the same, but only similar, but they have in fact been deceived." Therefore, in light of what has been discussed above and the principles enunciated in the cited cases I hold that the colour scheme, design and getup of label/wrapper of respondent/defendant Ex-P-22 is deceptively and confusingly similar or nearly resemble the colour scheme, design and getup of the label/wrapper of Appellant/Plaintiff Ex-P-16 and is likely to cause confusion and deception to an unwary purchaser. Issue No. 2 is therefore, answered in favour of Appellant/Plaintiff and against the respondent/defendant. Issue No.2: In view of my findings on issue No.1, it is held that appellant plaintiff has got a locus standi and a valid cause of action to file the suit. The findings of the learned Trial Court on this issue are over turned and it is decided in favour of the appellant/plaintiff against the respondent defendant. Issues Nos.4 and 5: These issues have already been decided in favour of the appellants. The findings of the learned Trial Court on these two issues are affirmed. Relief: In view of my above findings the impugned judgment dated 06.12.2005 is set aside and suit of the appellant/plaintiff is decreed as prayed for with no order as to cost. MH/H-2/L Appeal allowed.