Application for permanent injunction

2019 CLD 1060 KARACHI-HIGH-COURT-SINDH Judicial Precedent

S. 86Trade Marks Rules, 2004, Rr. 11, 71, 88 & Fourth Schedule, Classes 18, 35Civil Procedure Code (V of 1908), O. XXXIX, Rr. 1 & 2Application for permanent injunctionTrademarks, infringement ofParallel import

Plaintiffs were international brands who jointly owned and operated use of registered trademarks and were aggrieved of defendant infringing their trademark as well as passing-off same by selling such goods as licensed vendor under name and style of trademark of plaintiffs

Validity

Plaintiffs while making sales to company in another country had already reaped economic benefit from its trademarks through first putting goods on market and then even permitting its further export to defendant in Pakistan and could not be allowed any further benefit or protection to exercise any monopoly rights in relations to those very goods on which once an economic benefit had been earned

Plaintiffs had already made out prima facie case of infringement under S. 86 of Trade Marks Ordinance, 2001 as defendant even after submitting an undertaking before court was still using identical signage for which there was no consent of owner/proprietor of trademark/trade name in relation to goods and services falling within Classes 18 and 35 of Fourth Schedule of Trade Marks Rules, 2004 read with Rr. 11, 71 & 88 of Trade Marks Rules, 2004

High Court restrained defendant and its officers, servants and agents from infringing trademark in question and other marks of plaintiffs

High Court further directed defendant to immediately remove signage being used by them in their outlets

Application was allowed accordingly.

2015 CLD 512 KARACHI-HIGH-COURT-SINDH Judicial Precedent

Ss. 21, 43 & 74Civil Procedure Code (V of 1908), O. XXXIX, Rr.1 & 2Infringement and passing off of registered trade markApplication for permanent injunction

Contention of plaintiff was that he was marketing under the Trade Mark of ROOH AFZA label but defendant had started manufacturing, packing and marketing a syrup under the Trade Mark ROOH-E-SAMAR label and both the marks were identical, confusing and deceptively similar with each other visually as well as phonetically

Interim injunction, application for

Validity

Injunction was a form of equitable relief and was to be issued in aid of equity and justice but only where a person had established all the three ingredients in his/her favour

Both 'Sharbat Rooh Afza' and 'Rooh-e-Samar' had no phonetic similarities

Registration of 'mark' would give to its proprietor an exclusive right to use the trade mark and registration was a prima facie evidence of its validity

Infringement of such right could not be allowed to hold the field but before restraining one from continuing with lawful trade or business it must be established prima facie that his right being hit by exception could not be allowed to continue

Similarity between two products/brands these should so resemble that an ordinary consumer might not differ between what he intended to purchase or what was presented to him

Bare look of both the products did not result into any confusion because not only the colour scheme but also the calligraphy and its manner were quite different from each other

Mere having photo-graph/picture of different fruits was not sufficient to believe the plea of plaintiff that label of defendant's product 'Rooh-e-Samar' would cause 'confusion' or 'deception' to its customers of 'Sharbat Rooh Afza'

Colour scheme, calligraphy and picture of fruits of products was entirely different with considerable distinction to an ordinary eye

Label of product of defendant would not result in causing a 'deception' or 'confusion' to the customer of plaintiff

No case of 'confusion' or 'deception' having been made out, plaintiff had no prima facie case in his favour to deprive the defendant from doing/continuing lawful business or trade

Application for temporary injunction was dismissed in circumstances.