Trade Mark

A person is not liable as an accessory for a strict liability tort, such as trade mark infringement, unless they have knowledge of the essential facts that make the act wrongful

Liability of accessories is not strict and requires a mental element; mere involvement in the company's activities is insufficient

An account of profits is an equitable remedy aimed at preventing unjust enrichment

It is not punitive and should not be ordered against a person who did not personally benefit from the infringement.

Appellant (engaged in business of ball bearing and taper roller) challenged the decision of the Registrar of the Trade Marks whereby appellant's Trade Mark (NBN) was refused on the basis that Trade Mark (NTN) of the respondent was well-known

Validity

If a mark passes the "Moron in a Hurry", "Class Trinity" or "LAPP" tests, it escapes out of the legal protection umbrellaed by Trade Mark or common law, which was the case-at-hand, as NBN was not entitled to protection in the presence of NTN Trade Mark

No illegality or apparent error had been noticed in the impugned order passed by the Registrar of the Trade Marks

Appeal was dismissed , in circumstances.

Question as to whether an Internet Service Provider, as an innocent intermediary, could be ordered to pay the costs of implementing the injunction/'website blocking order'

Claimants, who were proprietors of a number of domestic and international trade marks registered in relation to certain luxury goods, contended that their trade marks were being infringed by the activities of certain websites which sold counterfeit goods

Online users buying from such websites were using internet services provided by the defendants/Internet Service Providers ("ISPs")

Defendants/ ISPs only provided the network by which its users could access content, but they neither provided nor stored content, thus the defendants/ISPs did not themselves infringe the relevant trademarks

Claimants sought injunctions requiring the defendants/ISPs to adopt technical measures to block, or to attempt to block, their subscribers from accessing the offending websites selling counterfeit goods

Trial judge granted the injunctions sought and also ordered the defendants/ISPs, as the unsuccessful parties albeit innocent of any wrongdoing, to bear the costs of implementing the 'website blocking order'/injunction

Court of Appeal upheld the decision to require the defendants/ISPs to bear the costs of implementing the injunctions

Held, that the Courts' jurisdiction to order parties to assist those whose rights had been invaded by a wrongdoer was not limited to orders for disclosure but was capable of extending to a website blocking order at the request of a trade mark owner

General rule, absent exceptional circumstances, was that the innocent facilitator who was the subject of the order would be entitled to the costs of compliance

Unless there were good reasons for a different order, an innocent intermediary would be entitled to be indemnified by the right holder against the costs of complying with a website blocking order in the same way as was the established position in relation to other orders granted to require an innocent party to assist the claimant in the assertion of its rights against a wrongdoer

No basis existed for requiring an Internet Service Provider serving as a mere conduit to shoulder the burden of remedying an injustice if it had no legal responsibility for the infringement and was not a volunteer but was acting under the compulsion of an order of the court

In principle the rights-holders should indemnify the ISPs for the compliance costs, subject to the limits on relief (set by European Union law)

No reason existed to believe that such an indemnity, which must be limited to reasonable costs, would exceed the limits on relief

Costs were not excessive, disproportionate or such as to impair the claimants' ability to enforce their rights

Critically, the intermediary/ISPs in the present case were legally innocent

Different considerations may apply to those engaging in caching or hosting, which involved greater participation in the infringement and which were more likely to infringe intellectual property laws

Argument that Internet Service Providers benefitted financially from the volume and appeal of the content available on the internet, including content which infringed intellectual property rights, thus, it was fair to make them contribute to the cost of enforcement, was misconceived

Such argument assumed a degree of responsibility on the part of the intermediary/ISP which did not correspond to any legal standard and it (incorrectly) implied that there was a moral or commercial responsibility in the absence of a legal one

Law was not generally concerned with moral or commercial responsibilities except as an arguable basis for legal ones

Even if a moral or commercial responsibility were relevant, it would be hard to discern one in a case like the present one

Website-blocking injunctions were sought by rights-holders in their own commercial interest, and there was no reason why the rights-holder should be entitled to look for a contribution to the cost of defending his rights from anyone other than the infringers

Supreme Court directed that the claimants/right holders shall indemnify the defendants/Internet Service Providers in respect of reasonable costs of processing and implementing the injunction/website blocking order

Appeal was allowed in circumstances.

For maintaining a passing off action, registration of a trademark was not a requirement and even if there existed a disclaimer on a product, a passing off action could still be maintained and succeed if claimant succeeded in showing that disclaimed features in the registration had acquired distinctiveness by virtue of use and promotion and enjoyed reputation and goodwill in favour of claimant

Law envisaged each one of the features stated in S. 2(xxiv) of Trade Marks Ordinance, 2001, inter alia, a name, word, figurative element, colour etc., to be mark by itself and any combination of such features would be a mark also

When one feature of a label consisting of a combination of marks was adopted or copied, infringement of such feature (a mark) took place; which was liable to be remedied and it would not be a valid defence by a defendant, that he had not adopted/imitated other features of a mark, which may be different

Infringement could still take place if only word(s) were copied but not the colour scheme, design and get-up, but such infringement was to the extent of such word(s)

Appearance in the market place of a number of infringements/imitations of a trademark did not give justification for a infringer/imitator to claim that original proprietor of trademark had lost such proprietary status

Comparison by a Court between two trademarks was not to be a meticulous comparison for the reason that in order to reach mind of an incautious or unwary purchaser, the test should be if a person would be deceived when he/she saw one trademark in absence of another mark.

Section 37 of Trade Marks Act, 1940, was a penal provision aimed to work as deterrent for those, seeking registration of any trademark under the said Act with some ulterior motive, which they did not intend to use or there had been in fact no bona fide use of their trade mark in relation to those goods for a specified period

For seeking the relief of removal/revocation of a registered trade mark under S.37(1)(b) of the Trade Marks Act, 1940, specific minimum timeframe of five years had been provided during which there had been no bona fide use of such trademark by its proprietor, which was to be computed from a date one month before the date of application submitted by any aggrieved person in such regard.

Burden of proof as to whether there was no bona fide use of the registered trademarks for a continuous period of five years upto a date one month before the date of the application without any lawful excuse or special circumstances as envisaged under S. 37(3) of the Trade Marks Act, 1940, was squarely upon the aggrieved party/applicant which had submitted the application for removing the trademark from the Register of Trademarks

Such burden was to be proved beyond reasonable doubt so as to invoke the penal consequences under S. 37 of Trade Marks Act, 1940.

Certain trade marks carried one or more prominent features that clearly distinguished goods of one proprietor from their competitors dealing in similar goods

Such distinguishing feature in parlance of intellectual property was termed as 'dominant feature'.

Section 37 of Trade Marks Act, 1940, was a penal provision aimed to work as deterrent for those, seeking registration of any trademark under the said Act with some ulterior motive, which they did not intend to use or there had been in fact no bona fide use of their trade mark in relation to those goods for a specified period

For seeking the relief of removal/revocation of a registered trade mark under S.37(1)(b) of the Trade Marks Act, 1940, specific minimum timeframe of five years had been provided during which there had been no bona fide use of such trademark by its proprietor, which was to be computed from a date one month before the date of application submitted by any aggrieved person in such regard.

Burden of proof as to whether there was no bona fide use of the registered trademarks for a continuous period of five years upto a date one month before the date of the application without any lawful excuse or special circumstances as envisaged under S. 37(3) of the Trade Marks Act, 1940, was squarely upon the aggrieved party/applicant which had submitted the application for removing the trademark from the Register of Trademarks

Such burden was to be proved beyond reasonable doubt so as to invoke the penal consequences under S. 37 of Trade Marks Act, 1940.

Trade mark of appellants were totally different from the respondents registered trade mark both visually and phonetically

Colour scheme of respondents was not registered

No cause of action had arisen to the respondents

Appellants could not be prevented from using their own registered trade mark

Case was not that of the infringement of the registered trade mark, but it was the case of passing of

By packing their products in a pack which was strikingly similar to that of the respondents, appellants were deceiving ordinary purchaser into believing the goods of the appellants to be that of the respondent

Case of the respondents was that of 'passing off' and not of "infringement" of their registered trade mark by the appellants

High Court appeals were dismissed against the order of Single Judge granting interim relief.

Colour scheme, label design and pattern of the two packs was almost identical and an ordinary person could not differentiate between the two at a cursory glance

No doubt that colour per se could not be called a trade mark, in the present case though the marks of the appellants, were phonetically and visually quite different and distinctive from the respondents' registered trade mark, however, when all the packets kept side by side for example in a show case of the shopkeeper, an ordinary purchaser would not be able to distinguish between the three on account of identical size of the packs in the backdrop of yellow colour with typical rectangular border running across the packing, they will tend to cause confusion in the mind of unwary purchaser

If the packets were mixed with each other an unwary buyer might be deceived

High Court appeal, were dismissed.

If the prefixes were similar but since the colouring of boxes were different, therefore, an ordinary person could not be deceived

Particular colour scheme played vital part in identification of a product and it was particularly so when such product was used mainly by illiterate persons.

In absence of registration, act of infringement is nowhere.

Agreement of Pepsi Cola Company with a Bottler Company to bottle, sell and distribute their product known as and sold under the trademarks "Pepsi Cola" and "Pepsi", solely within the limits of a provincial territory

Pepsi Cola Company had referred to various tests conducted qua the product sold in the market whereafter it transpired that the Bottlers had been using the concentrate of "RC Cola" and were selling it under the name, style and trade mark of "Pepsi Cola", which was alleged to be a serious violation of the trade mark in selling a product available for half the price of Pepsi Cola

Background of sale of concentrate of Pepsi Cola having been purchased by the Bottlers had remained reasonable and constant during early years of the agreement but for six months next before the institution of suit no concentrate of `Pepsi Cola' had at all been purchased by the Bottlers, while the product was constantly being sold in the market and it was not known as to how could the product be marketed, as genuine, when no concentrate of "Pepsi Cola" at all was purchased

Effect

Obvious conclusion, prima facie, would be that some spurious product was marketed and the same was accepted as well in some of the despatches on record

If a temporary injunction, in circumstances, was granted, what assurance would there be that no spurious or unhygienic material shall be sold during the existence of the injunction

In that case the Court shall have no source to check all such failings and shortcomings and would rather be thrusting an agreement over a party (Pepsi Cola) which had already revoked the contract

Grant of temporary injunction would virtually amount. to the grant of relief prayed for but without a decree in favour of the Bottlers

Grant of relief, if amounted to resurrection of contract in its full form and effect, which stood cancelled by the party concerned, had to be discouraged

When the Court was not in position to grant relief against oppressive consequences of the injunction, same should be refused.

Word "notoriety" is nothing but to state of it being infamous or notorious.

Dishonest adoption of foreign trade marks by Pakistani companies or traders deprecated.

Trade marks have traditionally been used to distinguish only goods.

Leave to appeal was granted to examine, inter alia, whether the petitioner had not previously used the trade mark in dispute and or that they had no bona fide intention to use in future; whether the High Court did not commit an error discoverable on the face of record in making certain assumptions and other related questions raised in the petitions.

Appropriate forums Passing off" actions are designed to protect the property in the goods on account of its reputation and not in the trade mark and that "passing off" actions are essentially actions in tort and are filed in contradiction to suits filed for infringements of trade marks, where invasion takes place in ones rights in the property

for instance when some one imitates the goods of another. Hence if the suit filed was a suit simpliciter for "passing off" and no infringement of the trade mark was involved therein, the suit undoubtedly lay before the Court of first instance, namely, the Court of a Civil Judge. But where a suit involves the infringement of a trade mark, such a suit must be filed before the District Judge.

S. 76-Trade Marks Rules, 1963, R. 84-Trade mark-Identical trade marks or their similarity, held, would not necessarily lead to conclusion that they were likely to cause confusion and deception to purchaser Nature of goods, reputation acquired by registered trade mark, extent that purchaser would consider that goods with trade marks proposed to be registered were products of proprietor of registered trade mark, nature of customers, trade channels and likely confusion among a substantial number of purchasers has to be kept in view.

Parties praying that Supreme Court may record agreement and pass appropriate order giving effect to same-Supreme Court while converting petition into appeal issued directions to Registrar of Trade Marks accordingly-Appeal allowed in terms of directions and order passed by High Court and Registrar of Trade Marks, set aside.

S.21(1)-Trade mark-Infringement-Considerations weighing with Court in deciding whether unwary purchaser likely to be deceived or not-Decision of Court, held, does not depend on number of similarities and dissimilarities which may only be taken into consideration as factor or aid to reach final decision but on account of general get-up, colour scheme, design and other features of two marks that Court may reach conclusion that offending mark is likely to deceive unwary purchaser.

Whether unwary purchaser likely to be deceived. . The wrappers in the two cases were similar in inscription, colour scheme and design and differed only in sizes; likewise other packages varied in sizes otherwise they were the true copies of the respondent s registered trade mark. The word "Hafiz" was exactly in the same colour scheme, figures on both the packages. Of course, in appellant s packages "Hafiz" was written in a crescent with a star, flanked by two arches, placed above the two spikes of the crescent and further two wheat-corns had been shown circulative on each of the two sides of the crescent. Four spherical clews also appeared on each of upper ends of the wheat corns. On the other hand, in defendant s packages the word "Haft" was written in a circular chain and underneath it, were to be found the words "Ka Multani Sohan Halva". In appellant s packages below the word "Hafiz" had been inscribed the words "Bashir Ka Multani Sohan Halva". Despite these poi

Better known words become more closely associated in public with class of articles to which they are applied.

S. 6(1)(d)."Character or quality of goods"-Word "up" in phrase "Bubble up"-Does not by itself convey any idea of effervescence or sparkling, hence, not descriptive.

Both names having same words as suffix or second syllable-Held, mark of distinction in such cases should always be the first syllable or first portion of the names - Words Saigon, "Daigon" and "Dragon", all dissimilar-Whether in Registrar and hid discretion should not be registered-Discretion vested in register and his discretion should not be lightly interfered with.

Trade Mark Trade Mark-Registration of-Notice-Publication of trade mark in Trade Marks Journal-Does not constitute a notice of registration.

B filing suit for grant of permanent injunction restraining opposite-party from using name "Fructo Salt" as imitation of registered trade mark "Fruit Salt" of plaintiff and further seeking injunction restraining opposite party from infringing trade marks in respect of facsimiles of their wrappers-Relief in respect of wrappers granted but that in respect of trade name "Fructo Salt" refused-B failing to file appeal but subsequently when opposite-party applied for registration of trade name "Fructo Salt", objection raised by B before Registrar on same grounds as taken in earlier suit for permanent injunction

Held: B having failed to appeal against order in previous suit matter became res judicata and could not be agitated afresh-Civil Procedure Code (I/ of 1908), S.11.

Trade Mark -Test of deception for purpose of Trade Marks Act (V of 1940)-Not what thoughtful persons would take it to be but how mind of common consumer is affected by impugned Mark-Trade Marks Act (V of 1940).

Trade Mark -"Acquiescence"-User, by another, by way of "infringement" of trade mark, necessary, before owner of trade mark could be said to have "acquiesced" in such user- [Electriluc, Ltd. v. Electrix Ltd. (1953) 71 R P C 23 ref.].

Trade Mark Trade mark-Infringement-Test-Whether an unwary purchaser is likely to be deceived.

Trade Mark Trade Mark - Infringement - Distinction between confusion arising in connection with sale of goods, and confusion arising on account of infringement-Even innocent use of another's trade mark objectionable-Mark "Pears" on toilet soap, held, infringed by mark "Paras" on laundry soap.

When granted.

Infringement of-Resemblance between respective labels and monograms, in order to be actionable, must be such as might deceive an average cautious purchaser.

Trade Mark -Name must be impressed in a distinctive manner for being registrable-BATA, held, not such a name, nor a distinctive device or fancy word-(Malta case).

What is.

Statutory requirement not complied with -Mark may yet not be removed from register.

What amounts to-Using one or more of its essential features.