Infringement of trademark

2019 CLD 562 KARACHI-HIGH-COURT-SINDH Judicial Precedent

Ss. 42 & 21Civil Procedure Code (V of 1908), O. XXXIX, Rr. 1 & 2Infringement of trademarkRegistered trademark subject to disclaimerDeceptive packaging/labelApplication for temporary injunction in respect of registered trademarkScope

Plaintiff holding registered trademark of packaging of its brand of biscuits sought to restrain the defendants from interfering in the plaintiff's business

Contentions of the defendant, inter alia, was that it was a global manufacture of biscuits and the plaintiff's product especially, packaging/wrapper, was deceptively similar to theirs and hence they had served notice on the plaintiff to cease use of the same, and they ought not to be restrained in any manner

Validity

Registration certificate of plaintiff, in the present case, was subject to disclaimer which read that the registration shall give no right to exclusive use of all other descriptive words appearing on a label

Registered Trademark, if subject to a disclaimer, would mean that exclusive rights in disclaimed parts were not available to registered proprietor

In case of two competing wrappers / packaging , the principle of "moron in a hurry" was applicable, where the Court had to consider whether a "moron in a hurry" would pick-up goods of plaintiff instead of those of defendant and in the present case, overwhelming similarities existed, and the said test passed along with the trinity test

High Court observed that plaintiff was allowed to use the colour and getup of its product only strictly in accordance with its registered trademark and could not adopt the distinctive colour of the defendants in terms of packaging/wrapper or the biscuits/product itself; and in case plaintiff's colour scheme of packaging and the product chose to sail closer to products/wrappers of the defendant, then passing off action would be sustainable against plaintiff and any continuous use of the trademark by plaintiff ought to be restrained

Where plaintiff aimed to use deceptively similar packaging as the defendants products, and having travelled far away from the registration obtained then application for temporary injunction under O. XXXIX, Rr. 1 & 2, C.P.C. could not be granted, and was dismissed, in circumstances.

2018 CLD 1072 LAHORE-HIGH-COURT-LAHORE Judicial Precedent

S. 21Copyrights Ordinance (XXXIV of 1962), S. 56Specific Relief Act (I of 1877), S. 54Infringement of trademarkSuit for injunction

Plaintiff claimed to be owner of registered trademark of 'Hilal Khopra Candy Sweets' which was also registered under Copyrights Ordinance, 1962

Plaintiff alleged that 'Haroon Khopra Candy Sweets' was identical in packaging, label/wrapper and defendants infringing plaintiff's trademarks rights and also passing off their goods as goods of plaintiff

Trial Court dismissed the suit

Validity

Appearance of number of infringements/imitations of trademarks of wrapper, colour scheme, design or getup in marketplace would not give justification for an infringer/imitator to claim that trademark of original proprietary had lost its propriety status and that due to such reason, imitator/infringer of such trademark or label or wrapper was entitled to continue with its imitation and infringement

When question had arisen whether a mark applied for, had such resemblance to another mark likely to deceive, it should be determined by considering what was leading characteristic of each

One could contain many, even most of same elements, as other and yet leading, or it may be only impression left on mind, might be very different

Critical comparison of two marks might disclose numerous points of difference yet idea which would remain with any person seeing them apart at different times could be same

Mark was infringed if essential features or essentials particulars of same were taken

Colour scheme, design and getup of label/wrapper of defendant was deceptively and confusingly similar or nearly resembled colour scheme, design and getup of label/wrapper of plaintiff and was likely to cause confusion and deception to an unwary purchaser

High Court set aside judgment and decree passed by Trial Court and decreed suit in favour of plaintiff

Appeal was allowed in circumstances.

2016 CLD 1036 LAHORE-HIGH-COURT-LAHORE Judicial Precedent

S. 46(2)Infringement of trademarkReliefs

In an action for infringement, under S. 46(2) of Trade Marks Ordinance, 2001, all such reliefs by way of damages, injunctions and accounts can be availed by proprietor of a trademark not as alterative to one another.

2013 CLD 201 LAHORE-HIGH-COURT-LAHORE Judicial Precedent

S. 46(2)Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 & 2Infringement of trademarkSuit for damages, injunction and accountsReliefScope

Under S.46(2) of Trade Marks Ordinance, 2001 all such reliefs by way of damages, injunction, accounts were available to the proprietor of a trademark simultaneously and not as an alternate to each other

Where in addition to interim injunction a plaintiff had claimed damages and compensation in a suit relating to trademark rights, interim relief could not be denied to proprietor of trademark on such ground.

2013 PLD 110 LAHORE-HIGH-COURT-LAHORE Judicial Precedent

S. 46(2)Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 & 2Infringement of trademarkSuit for damages, injunction and accountsReliefScope

Under S.46(2) of Trade Marks Ordinance, 2001 all such reliefs by way of damages, injunction, accounts were available to the proprietor of a trademark simultaneously and not as an alternate to each other

Where in addition to interim injunction a plaintiff had claimed damages and compensation in a suit relating to trademark rights, interim relief could not be denied to proprietor of trademark on such ground.