1992 PLP 1176 (MLD)

This suit has been filed by the plaintiffs challenging the user by the defendants of mark Esso and Esso Oval on the sewing machines manufactured and marketed by them. The case of the plaintiff) is that the plaintiff No.1 is the major shareholder in various companies engaged in the production, manufacturing and marketing of a variety of petroleum, chemical and other products having a wide range of industrial, commercial' domestic and other uses. It is their case that the plaintiff No.2 is a Wholly owned subsidiary of the plaintiff No.1 who has for many years carried on business in Pakistan in formulation and distribution of petroleum, chemical and other products having a wide range of industrial, commercial, domestic and other uses, while the plaintiff No.3 is a public company incorporated in Pakistan and a subsidiary of the plaintiff No.1 which owns 75% of its share capital. The plaintiff No.3 was incorporated in 1965 and is engaged in manufacturing and distribution of fertilizers and intends to undertake the distribution of other agricultural, chemicals including pesticides, herbicides and the like. The defendant No.1 is said to be engaged in marketing of sewing machines at Lahore and elsewhcr2 in Pakistan including Karachi which are manufactured or assembled at Lahore by the defendant No." It is alleged by the plaintiffs that the defendants are carrying on their business of manufacturing or marketing of sewing machines in the name and style which includes the word `Esso which is likely to be believed to be connected with the plaintiffs and will inevitably result in confusion and deception of consumers, traders and other members of the public. It is further claimed that the enquiries of the plaintiffs revealed that the defendant No.1 had applied for the registration of the Esso Oval trade mark in respect of their sewing machine being application No. 46675 and was filed in Class 7 on 20‑1‑1.967. The present plaintiffs have filed their opposition to the said trade mark in January 1969 being opposition No.B‑1/69 which was pending at the time the suit was filed. The plaintiffs also claim to have learnt that the defendants have moved another application for registration of Esso Oval trade mark in respect of fruit in Class 31 under application No.50120. The plaintiffs claim that the use of trade mark Esso Oval by the defendants for sewing machines manufacturing and selling by them and also on fruits sold or intended to be sold by the defendants would falsely represent to the general purchasing public and traders that the goods and/or the business of the said defendants are those of or are connected or in some way associated with the plaintiff No.1. They also claim that such adoption or use is mala fide and is calculated and likely to deceive or cause confusion and to injure the long established reputation and goodwill which has accrued in Pakistan to the Plaintiff No.1 and the operating affiliates of the plaintiff No.1 such as the plaintiffs Nos.2 and

3. It is also the case of the plaintiffs that deception, confusion and passing off are all the more likely to occur because the plaintiffs Nos.2 and 3 have marketed in Pakistan under trade mark Esso and Esso Oval. The plaintiffs, therefore, filed the said suit for the following reliefs:‑‑ "(a) For a permanent injunction restraining the defendants Nos.1 and 2 and each of them themselves or by or through their servants, agents or dealers from manufacturing, selling, offering for sale, advertising or otherwise passing off sewing machines, fruits or any other goods as it.' and for the gods of the plaintiffs or any of them or otherwise representing a connection between their goods or business and plaintiffs or any of them by the use of the trade marks Esso or Esso Oval or the names `Esso Sewing Machines', The Esso Sewing Machine Co." and `The Esso Sewing Machine Manufacturing Co.' or any name including the word Esso or any other trade mark or name so closely resembling the said trade marks Esso or Esso Oval or the word Esso as to be likely to deceive or cause confusion. (b) For an order that the defendants No.1 and 2 do account for the profits wrongfully made by them and each of them by the use of the trade marks Esso or Esso Oval or the name Esso and that the said defendants do pay to the plaintiffs the ‑‑amount ascertained upon such accounting. (c) For costs of the suit. (d) For such further or other relief or reliefs as may seem just, to this Honourable Court in the circumstances." The defendants filed their joint written‑statement wherein it was claimed that the said sewing machines are being manufactured and marketed by `Shah Trading Corporation' which is a sole proprietary concern of the' defendant No.1 who has carried on the said business of Esso sewing machines. It is specifically denied by the defendants that there is any existence of defendant No.2 as mentioned in the plaint. The case of the defendants further is that they have applied for the trade mark Esso and Esso Oval with regard to it sewing machines in Class 7 which product is totally different than the product of the plaintiffs and, therefore, there is no likelihood of any deception, confusion or passing off. It is further their case that they had been marketing their sewing machines under the Esso mark in Pakistan since quite sometime and that the same is quite legal. They also admit that they have applied for registration of the mark Esso Oval for marketing fruits. On the above pleadings of the parties the following consent issues were framed:‑‑ (1) Whether the defendants have used the name `The Es so Sewing Machine CO.' and `The Esso Sewing Machines Manufacturing Company'? If so, has such trading style been used by mistake as alleged in paragraph 4 of the written statement? (2) Whether the name Esso and the trade marks Esso and Esso Oval and other trade marks including the features Esso and/or Esso Oval have been registered and used as stated in paragraphs 5, 6, 7 and 8 of the plaint? If so, (a) whether a substantial reputation and goodwill have accrued to the plaintiff No.1 and its operating affiliates including the plaintiffs Nos.2 and 3? and (b) whether the name Esso and products bearing any of the Esso trade marks including Esso and Esso Oval are associated exclusively with a group of Companies comprising of the plaintiff No.1 and its operating affiliates including the plaintiffs Nos.2 and 3? (3) Whether the defendant No.1 has sold and/or offered to sell in Karachi or to persons in Karachi sewing machines bearing the Esso Oval trade mark? (4) Whether the use and intended use by the defendants of the trade mark Esso Oval on sewing machines and fruits and of the name Esso as part of the description `Sole Agents Esso Sewing Machines' and of the names and styles `The Esso Sewing Machine CO.' and `The Esso Sewing Machine Manufacturing Company' is intended, calculated or likely to enable the defendants (a) to cause deception or confusion? (b) to pass off the goods of the defendants as and for the goods of the plaintiffs and the operating affiliates of plaintiff N6.1? (c) to trade upon the reputation and goodwill of the plaintiffs and the operating affiliates of the plaintiff No.1? (d) to falsely represent to the general purchasing public and traders that the gods or business of the defendants are those of or are connected or in some way associated with the plaintiffs, the operating affiliates of the plaintiff No.1 or one or more of them? (5) Whether the acts of the defendants complained of are likely to injure the reputation and goodwill of the plaintiffs and operating affiliates of the plaintiff No.1 and damage their business? (6) Whether this Honourable Court does not have jurisdiction to try this suit? (7) To what reliefs, if any, are the plaintiffs entitled? The plaintiffs examined P.Ws. S.A. Sultan, Jal Devecha, Syed Habibuddin and Niaz Muhammad Khan. These witnesses also produced number of documents. The defendants examined defendant No.1 Syed Nisar Ahmad Jaffery only. Who also produced certain documents. I have heard learned counsel for the parties and perused the evidence. During the course of arguments the learned counsel admitted that opposition was filed before the Registrar, Trade Marks, in respect of defendants' application with regard to sewing machines and not with regard to fruits. Both the learned counsel for the parties have confined their arguments only with, regard to user of mark Esso and Esso Oval with regard to sewing machines. The consent issues submitted by the advocates of parties also pertain to only sewing machines. 1t may further be observed that during pendency of the suit the proceedings before the Deputy Registrar were concluded and he passed orders on 10‑6‑1979 whereby he rejected the opposition entered into by the present plaintiffs and allowed the impugned trade mark to the defendant No.1 with regard to sewing machines. On a joint application by the Advocates for the parties the case was reheard by the Deputy Registrar who passed final order on 15‑10‑1979 maintaining his earlier order. Being aggrieved by this order the present plaintiffs riled appeal before this Court being MA. No.45 of 1980. By an order passed by this Court it was directed that the said appeal and this suit be heard by the same Judge at the same time. The said appeal has been dismissed by me today on the ground that the same was barred by limitation with the result that the order passed by the Deputy Registrar allowing the trade mark Esso and Esso Oval to the present. defendant No.1 with regard to sewing machines stands. However, my findings issue‑wise are as under:‑‑ Issue No‑

1. It is an ,admitted position that the defendants have used the name of Esso Trading Company. The defendant No.1 in his written statement has stated that the said sewing machines are manufactured by Messrs Shah. Trading Corporation of which he is the sole proprietor. He has further stated in his evidence (Exh.9) that the name Esso Sewing Machines Company and Esso Manufacturing Company had been used in respect of their manufactured machines by mistake by the printers and that they were no more using the said name. In support of his contention he has produced documentary evidence containing letters from Radio Pakistan (Exh.9/3, 9/6 and 9/7) which both show that the same are addressed to M/s. Shah Trading Corporation and that advertisement was with regard to `Sewing Machines'. He has also produced an order form of Kraft‑Ads dated 8‑11‑1966 as Exh.9/4 which is also in the name of Messrs Shah Trading Corporation. In view of the above statement of the defendant No.1 and the fact that since they realised the mistake they stopped using the above name, I am inclined to hold that the said name was being used through mistake as claimed in paragraph 4 of the written statement. The issue is accordingly answered in affirmative. Issue No.2. This issue also stands admitted. It is not disputed that tae plaintiffs are the proprietors of the trade mark Esso and Esso Oval as their trade mark and that they have acquired a substantial reputation and goodwill and so also their operating affiliates. However, it may be observed that the trade mark of the[ plaintiffs pertains to different items such as chemical, petroleum, industrial oil,! Greases and the like thereof which have no similarity to the sewing machines which are being manufactured and marketed by the defendant No.1. The said trade mark could not have been allowed to the defendant No.1 if his products had fallen in the same category as that of the plaintiffs. In view of the above discussion, I would answer this issue in affirmative but at the same time observe that the plaintiffs' trade mark being in different category of products ac that of the defendant No.1 the trade mark of the defendant No.1 would not affect the plaintiffs' reputation etc. This point is further discussed in issues Nos.4 and 5 below:‑‑ Issue No.3. In view of my findings on issue No.1, this issue is also answered in affirmative as it is an admitted position that the defendant No.1 has sold his product of sewing machines bearing Esso Oval trade mark which has been allowed by the Deputy Registrar vide his order dated 15‑10‑1979. Issues Nos.4 and

5. These two issues are very material issues in the suit. Mr. P.1V. Velliani, learned counsel for the plaintiffs has vehemently argued that the word Esso or Esso Oval are better known as closely associated with the plaintiffs in the mind of public and there is every likelihood of confusion. He has further submitted that though the goods of the plaintiffs and defendant No.1 are in different category but in view of the fact that the trade marks of the plaintiffs are renowned the world over, the traders and purchasers are very likely to connect the products of the defendant No.1 with the name of the plaintiffs and chance of passing off is very much there. He has in his written arguments placed reliance on the cases of:‑‑ (1) Lego v. Lego M. Lemelstrich (1983 FSR 1.55). (2) Harrods Limited v. R. Harrod Ltd. (1924) 41 RPC 74. (3) The Dunlop Pneumatic Tyre Co. Ltd. v. The Dunlop Lubricant Cu. (1899) 16 RPC 12. (4) Warwick Tyre Co. Ltd. v. New Motor and General Rubber Co. Ltd 1910127 RPC

161. In all the above said four cases the point for consideration was that there was similarity of the goods and therefore, it was held by their Lordships that the action for passing off would succeed. In the first case as cited above the product pertained to children's toys in the form of .construction kits with the part moulded in coloured plastic material while on the other hand the same trade mark was being sought with regard to equipments including cotton sprays and sprinkles constructed wholly or substantially of coloured plastic material and thus there could be likelihood of deception. In the second ease cited above the two parties were dealing in financial matters a, the plaintiffs were conducting business including banking department while the defendant company was registered with the object of carrying on business of registered money lender. In the 3rd and 'IVth cases cited above the matter involved the manufacturing and marketing of tyres used in different types of vehicles such as bicycle, motor car, and the lubricants for cycle. It also showed similarity of the products. The above cases would thus fall within prohibition as provided in class (a) of section 8 of the Trade Marks Act which reads as under:‑‑ "

8. No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would‑‑ (a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in Court of justice; or (b) be likely to hurt the religious susceptibilities of any class of (the citizens of Pakistan); or (c) be contrary to any law for the time being in force or to morality. The prohibition contained in class (a) of the above section 8 shows that no trade mask shall be registered which is likely to deceive or to cause confusion. The other barring provisions in the act is section 10 which reads as under:‑‑ "10. (1) Save as provided to subsection (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade. mark belonging to a different proprietor and either already on the register in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion. (2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitation if any. as the Registrar may think fit to impose. (3) Where separate applications ‑ are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods. or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court." A plain reading of the two provisions would show that the trade mark could be refused only in case where there is similarity of goods which fall in the same class which is likely to cause deception or confusion in the mind of public or traders. Rule 11 framed under‑the Trade Marks Act provides for classification of the goods. The goods of defendant No.1 fall in class 7 of Schedule IV a provided in Rule 11 while the goods of the plaintiffs fall under classes 1, 4 an

3. Even on the very face the goods of the parties are totally different from each other and there appears to be no likelihood of any similarity between their products. During course of the arguments Mr. F.W. Velliani, learned counsel for the plaintiffs had also referred to a number of other cases. He has place reliance on the case of Messrs Montgomery Flour and General Mills Ltd. v. Registrar, Trade Marks, Karachi and another P L D 1973 Kar.

567. He has also placed reliance on the case of Seven‑up Company v. Deputy Registrar of Trade Marks and another 1987 M L D

91. The reliance was also placed on the case of Allahabad High Court reported in 1 P L R 19 and the fourth case relied upon by the learned counsel was the case of Kodak Cycle Company Ltd. reported in 15 RPC

105. From the above cases the case of the Allahabad High Court pertains to an interim order and not a final order while in the other 3 cases the point for consideration was same as discussed above i.e. similarity of goods which is not available in the present case as the plaintiffs have not been' able to substantiate with their evidence that there was any similarity between the goods of the parties or that there is likelihood of passing off sewing machines as being a product of a company dealing with petroleum, fertilizer or connected products thereof. As against this Mr. Ikram Ahmad Ansari, learned counsel for the defendants has placed reliance on the case of Seven‑up Company U.S.A. v. Abdul Aziz Noor Muhammad P L D 1976 Kar. 895 wherein the order of the dismissal of opposition by Registrar was upheld. In this case the applicant had sought the trade mark `7‑Up' for `Cotton' `Soap' `Wool' and' a Masala' while the objector had the same trade mark registered for `Soft Drink' and it was held that there was no likelihood of confusion or deception between the competing goods. The learned counsel for the Oil defendants has also placed reliance on the case of Sony Kabushiki Kaisha v. Registrar of Trade Marks Karachi and another P L D 1978 Kar.

161. In this case the Registrar had rejected the appellants' opposition and allowed the registration of the trade mark Sony in the name of the respondent No.2. The respondent No.2 carried on business as manufacturer and merchant of Sports articles at Mubarakpura, Sialkot, Punjab while the appellants who filed their opposition were dealing in the electronic goods manufactured and marketed by them. The Registrar after hearing parties had passed the impugned order' which was challenged in the appeal before this Court and for the above. Reasons the appeal was dismissed. This judgment reported in P L D 1978 Kar. 161 was confirmed by the Honourable Supreme Court as reported in P L D 1990 SC

313. In view of the above discussion and facts that the goods manufactured and marketed by the plaintiffs and defendant No.1 are quite different in nature and fall in different class, 1 am of the view that barring provisions of sections 8(a) and 10 of the Trade Marks Act would not be applicable. It may further be observed that in view of my judgment in MA. No.45 of 1980 whereby 1 have already dismissed the Bald appeal filed by the present plaintiffs with the result that the subsequent order passed by the Deputy Registrar on 15‑10‑1970 allowing the said trade mark to the present defendant No.1 and dismissing the opposition of the present plaintiffs, the present suit would fail. These issues arc, therefore, answered against the plaintiffs. Issue No.6. This issue was not pressed by the learned counsel for the defendants and accordingly it is held that this Court has jurisdiction in the matter. Issue No.7. The upshot of the above discussion is that the suit is dismissed. However, there will be no order as to costs. A.A./S‑780/K Suit dismissed.