2015 C L D 512
[Sindh]
Before Salahuddin Panhwar, J
HAMDARD LABORATORIES (WAQF) PAKISTAN---Plaintiff
Versus
MUHAMMAD FAHIM---Defendant
Suit No. 1268 of 2014, decided on 25th September, 2014.
(a) Trade Marks Ordinance (XIX of 2001)---
----Ss. 21, 43 & 74---Civil Procedure Code (V of 1908), O. XXXIX, Rr.1 & 2---Infringement and passing off of registered trade mark---Application 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.
Wellcome Foundation Limited v. Karachi Chemical Industries (Private) Ltd. 2000 YLR 1376; J&P Coats Limited v. Golden Thread Industries through Proprietor 2011 CLD 811; Messrs Dewan Sugar Mills (Pvt.) Ltd. v. M.B. Abbasi and others 2007 CLD 1610; M. Sikandar Sultan v. Masih Ahmed Shaikh 2003 CLD 26; Mehran Ghee Mills (Pvt.) Ltd. v. Chiltan Ghee Mills (Pvt.) Ltd. 2001 SCMR 967; The State v. Abdul Qayum PLD 2001 SC 14; 1990 CLC 497; PLD 1973 SC 104; 1988 CLC 489; NLR 1981 UC 362; 1987 CLC 1539; 1980 CLC 1272; PLD 1971 Kar. 189; 1984 CLC 2478; PLD 1964 SC 536; 1972 SCMR 100; 2005 YLR 1895; 2006 YLR 1895 and 2006 YLR 856 ref.
Wellcome Foundation Limited v. Karachi Chemical Industries (Private) Ltd. 2000 YLR 1376; J&P Coats Limited v. Golden Thread Industries through Proprietor 2011 CLD 811; M. Sikandar Sultan v. Masih Ahmed Shaikh 2003 CLD 26; Mehran Ghee Mills (Pvt.) Ltd. v. Chiltan Ghee Mills (Pvt.) Ltd. 2001 SCMR 967; Puri Terminal Ltd. v. Government of Pakistan 2004 SCMR 1092 and J.N. Nichols (VIMTO) PLC A Company Incorporated in the United Kingdom v. Mehran Bottlers (Private) Limited, Karachi PLD 2000 Kar. 192 rel.
(b) Trade Marks Ordinance (XIX of 2001)---
----Preamble---Constitution of Pakistan, Art. 18--- Object of the Ordinance---Object of Trade Marks Ordinance, 2001 was to ensure a protection to the goodwill, name and reputation of a "trade mark" to avoid any mala fide move of other competitor to come and take the benefit of such name and reputation of the 'mark'---Trade Marks Ordinance, 2001 would fall within the exception of Art. 18 of the Constitution which had ensured and protected the right of every citizen to enter upon any lawful profession or occupation and to conduct any lawful trade or business---Trade Mark did not restrict any one to enter upon a lawful business or to do a lawful trade but same would demand that such trade or business should not be at the cost of the goodwill or reputation of other registered 'mark'---'Trade mark' once registered would become the property of the person in whose favour same was registered---No new mark should be registered which might result into a 'deception' or 'confusion' while purchasing a product/brand---Any ordinary man while purchasing a product/brand was not supposed to minutely examine the same to find out the difference into a product in his hand or the one which he intended to purchase---Name of product/brand alone or its phonetic would not matter but scheme, colour, calligraphy and manner of presentation of such product would matter while deciding a question of 'deception' or 'confusion'---Question of 'deception' and 'confusion' could be determined on the principles that the purchaser/customer was not intelligent to stick with name of product/brand one; that phonetic should not be such to let seller/shop keeper to present other product than demanded with an excuse of similarity between two; overall similarity consisting upon theme, manner and colour scheme which was of more importance as difference in theme might not open the eye of an ordinary man but the colour scheme would do the same.
Salman Ahmed Shaikh for Plaintiff.
Shamshad Ali Qureshi for Defendant.
Date of hearing: 10th September, 2014.
ORDER
SALAHUDDIN PANHWAR, J.---Through instant order I intend to dispose of two applications Under Order XXXIX, Rules 1 and 2, C.P.C. (C.M.A. No. 9812 of 2014), whereby the plaintiff has sought the relief of ad interim injunction against defendant and another application under Order XXXIX, Rule 4 read with section 151, C.P.C. (C.M.A. No.11282 of 2014) filed by defendant regarding recalling of interim status quo order.
2Plaintiff filed a suit for Injunction against infringement of Trade Mark, passing off, unfair competition, Damages and account of profit. Succinctly, facts of plaintiff's case are that plaintiff is an internationally renowned organization, engaged in manufacturing and marketing herbal drugs, syrups and consumer products for more than six decades and products of plaintiff are a household name and is very popular among consumers. Sale of plaintiff runs into billions of rupees. One of goods of plaintiff is marketed under trade Mark of ROOH AFZA label. In view of excellent quality the trade mark ROOH AFZA Label is extremely popular and plaintiff carries out vast publicity for its such Trade Mark. Plaintiff has obtained registration of the Trade Mark ROOH AFZA Label with the Registrar of Trade Marks, Trade Marks Registry, Government of Pakistan Karachi and same is required to be protected under section 86 of the Trade Marks Ordinance, 2001.
3.It was further pleaded that plaintiff came to know that defendant has recently started manufacturing, packing and marketing syrup under the Trade Mark ROOH E SAMAR Label. An Advertisement of ROOH-E-SAMAR Label has appeared in daily Dawn dated 29th June, 2014. The plaintiff claimed that trademarks ROOH AFZA Label of the plaintiff and ROOH-E-SAMAR Label of the defendant are identical, confusingly and deceptively similar with each other, visually as well as phonetically. Besides this, the design, get up and colour scheme of both the Marks are identical, thus making the marks confusingly and deceptively; same is sold on same counter to same consumer hence is unlawful under section 67 of the Trade Marks Ordinance, 2001. Defendant applied for registration of his label with Registrar of Trade Marks, Trade Marks Registry, and Government of Pakistan under trade mark application No.316901 in class 32 which is being opposed by plaintiff and the opposition is pending adjudication thus no rights accrue to the defendant within meaning of the Trade Marks Ordinance, 2001. Plaintiff claimed to have suffered damages to their reputation and good will by aforesaid wrongful acts of defendant towards its goodwill, reputation and loss of business.
Along-with said suit the plaintiff also filed C.M.A. No.9812 with the prayer that:--
"It is prayed on behalf of the plaintiff that this Hon'ble court may be pleased to grant temporary injunction against the defendant, his servants, agents, representatives and all persons claiming through them, from infringing and Passing off the plaintiff's registered Trade Mark ROOH AFZA Label by selling, marketing, offering for sale, advertising or otherwise using on their syrups under the Trade Mark ROOH-E-SAMAR Label and using the said Label in conjunction with any other Mark or confusing and deceptively similar Mark and in any color".
The interim injunction was granted in favour of the plaintiff. However, the defendant caused appearance and has also filed an application under Order XXXIX, Rule 4 read with section 151, C.P.C. seeking recalling of status quo order.
4.Learned counsel for the plaintiff has argued that since there is a protection to its Trade Mark as such the defendant has been guilty of infringement of his rights by preparing, packing, selling and marketing its product ROOH-E-SAMAR by giving it a packaging, colour scheme and name which may result in deceiving the customer of plaintiff, therefore, plaintiff has got a good prima facie case; since trademarks of plaintiff is well known and earns good result therefore, balance of convenience also lies in its favour. If the injunction is not granted the irreparable loss and injury to plaintiff shall continue. In support of case the counsel for plaintiff placed reliance on the case-laws, reported as Wellcome Foundation Limited v. Karachi Chemical Industries (Private) Ltd. (2000 YLR 1376), J&P Coats Limited v. Golden Thread Industries, through Proprietor (2011 CLD 811), Messrs Dewan Sugar Mills (Pvt.) Ltd. v. M. B. Abbasi and others (2007 CLD 1610), M. Sikandar Sultan v. Masih Ahmed Shaikh (2003 CLD 26), Mehran Ghee Mills (Pvt.) Ltd. v. Chiltan Ghee Mills (Pvt.) Ltd. (2001 SCMR 967) and The State v. Abdul Qayum (PLD 2001 SC 14).
5.Conversely, learned counsel for the defendant has contended that defendant is a registered company, hence under Article 18 of the Constitution has right to run business and such fundamental is guaranteed and even per section 36(1) of Trade Mark Act 1940 defendant can use the applied Trade Mark with its product; product of defendant is not similar in scheme and colour therefore no question of deception to consumer is there; defendant has applied in 2012 for registration of Trade Mark which is exclusive power of Registrar where plaintiff has filed its objection therefore, instant suit is not sustainable. The learned counsel for the defendant also placed the copies of label(s) of 'Sharbat Rooh Afza', 'Rooh-e-Shireen (a registered trade mark of Quice) and 'Rooh-e-Samar' duly pasted on a single paper to show that there is no confusing resemblance. In the last he argued that no prima facie case or balance of convenience is there in favour of plaintiff rather status quo is causing irreparable loss and legal injury to defendant therefore, application of the plaintiff merits dismissal. Case-laws, reported as 1990 CLC 497, PLD 1973 SC 104, 1988 CLC 489, NLR 1981 UC 362, 1987 CLC 1539, 1980 CLC 1272, PLD 1971 Kar. 189, 1984 CLC 2478, PLD 1964 SC 536, 1972 SCMR 100, 2005 YLR 1895, 2006 YLR 1895, 2006 YLR 856 were relied.
6.I have heard the arguments, so advanced by either sides, and have also perused the available record.
7.Before diving into merits of the case, I would like to make it clear here that no doubt injunction is a form of equitable relief and is to be issued in aid of equity and justice but only where the person, seeking injunction, establishes existence of all three ingredients in his/her favour. Reference, if any, can well be given to the case-law, reported as Puri Terminal Ltd. v. Government of Pakistan (2004 SCMR 1092) wherein honourable Supreme Court held that:--
"21. No doubt an injunction is a form of equitable relief and is to be issued in aid of equity and justice, but not to add injustice. For grant of such relief, it is mandatory to establish that in order to obtain an interim injunction, the applicant has not only to establish that he has a prima facie case, but he has also to show that the balance of convenience is on his side and that he would suffer irreparable injury/loss unless he is protected during the pendency of suit".
8.To my understanding the Trade Marks Ordinance falls within exception of Article 18 of the Constitution which, otherwise, ensures and protects the right of every citizen to enter upon any lawful profession or occupation and to conduct any lawful trade or business. Therefore, I feel it proper to have a look at the objective of the Ordinance which is nothing but to ensure a protection to the goodwill, name and reputation of a "trade-mark" so as to avoid any mala fide move of other competitor to come and take the benefit of such name and reputation of the 'mark' which, undoubtedly, is not established in a day nor can it be achieved over-night. This has been the object and purpose of getting a 'mark' registered under the law. The Trade Marks, no where, restricts one to enter upon a lawful business or to do a lawful trade but only demands that such, otherwise, lawful trade or business, should not be at the cost of the goodwill or reputation of other registered 'mark'. It, nowhere, speaks about trade but 'the trade-mark' under which one is; or intending to continue his business.
9.Having said so, I would further add here that 'trade-Marks', once registered becomes the property of the person in whose favour it is registered. Since, usually the people do not stick with the name alone while purchasing a product, therefore, it became necessary to widen the scope of 'registered Mark' that no new 'mark' should be registered which, because of its similarity, may result into a 'deception' or 'confusion' to an ordinary eye while purchasing a particular product/brand. An ordinary man while purchasing a product/brand is not supposed to minutely examine the product/brand handed over to him so as to find out the difference(s) into a product in his hand or the one which he intended to purchase. Therefore, it is not the 'name' of product/brand alone or its phonetic but the scheme, colour, calligraphy and manner of presentation of the product which matter(s) while deciding a question of 'deception' or 'confusion'. It is needful to add here that the question of 'deception' or 'confusion' has been insisted for an ordinary eye, which we have in abundance in our society. I am guided in my such view with the case-law, reported as:--
M. Sikandar Sultan v. Masih Ahmed Shaikh (2003 CLD 26), wherein it is held that:
"Under section 21 of the Trade Marks Act, 1940 (hereinafter referred to as the Act), the registration of person in the register of proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation of those goods and that right shall be deemed to be infringed by any person, who not being the proprietor of the trade mark of a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembles it as to likely to deceive or cause confusion in the course of trade, in relation to any goods in respect of which it is registered."
In the case of Wellcome Foundation Limited v. Karachi Chemical Industries (Private) Ltd. (2000 YLR 1376), it is held that:--
"It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered trade mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him."
(Underlining is supplied for emphasis)
In the case of J. N. Nichols (VIMTO) PLC A Company Incorporated in the United Kingdom v. Mehran Bottlers (Private) Limited, Karachi (PLD 2000 Karachi 192) wherein established principles in question of similarity of two marks have been observed as under:--
(a)What is the main idea or the salient feature?
(b)Marks are remembered by general impressions or by some significant details 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."
10.Thus, it would be germane to state that in view of above case law the question of 'deception' and 'confusion' has to be examined on following principles:--