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Date Order with signature of
Judge
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1. For hearing of CMA No.1847/2015.
2. For hearing of CMA No.17174/2014.
19.11.2015
Mr. Salman
Ahmed Shaikh advocate for plaintiff.
Mr.
Muhammad Sarfraz Sulehry advocate for defendants No.2 and 3.
……………
By the dint of this order I
will decide captioned applications filed by plaintiff and defendant No.3.
Through CMA No.17174/2015 plaintiff seeks interlocutory relief as under:-
“…… grant temporary injunction
against the defendants, their servant, agents, representatives and all persons
claiming through them, from infringing and passing off the plaintiff’s earlier
registered trade mark POWER SONIC Label by selling, marketing, offering for
sale, advertising or otherwise using on their batteries and battery cells, the
trade mark POWER SONIC Label and using the said Label in conjunction with any
other mark or confusingly and deceptively similar mark and in any colour.”
2.
Whereas
through CMA No.1847/2015 defendant No.3 is seeking relief as:-
“…. Declare that registration
of trade mark Power got registered by the plaintiff in his name, is well
protected trade mark under the Paris Convention and plaintiff being the agents
of the principles POWER SONIC California San Diego since 2003 had no right to
get the trade mark Power-sonic register the trade mark in his name and its
registration done vide certificate dated 22.3.2012 is void, unlawful, having been
done with mala fidely to the detriment of the principals is liable to be
cancelled.”
3.
Learned
counsel for plaintiff contends that plaintiff is having registered trade mark
by referring annexure P/20 in the name of Javed Akhter Chauhan Trading as
“Javedan Resources Corporation” since then plaintiff is carrying on its
business whereas defendants have no right of registration or also running their
business on the same trade mark, such trade mark is only registered in the name
of the plaintiff. Albeit, defendant No.3 is claiming the same trade mark as
registered in USA but such certificate is not appended with the written
statement or the counter affidavit. He contends that there is no issue of
authorization of agency but in instant suit issue of trade mark is involved. He
also refers section 73, sub-section (3) of 80, 86 and 96 of the Trade Marks Ordinance
2001. It is also contended that defendant have not sought permission to run
their business in Pakistan hence their application is without any substance and
grounds taken in their application are not falling within the parameters of
section 86 of the Trade Marks Ordinance 2001.
4.
In
contra, learned counsel for defendants No.2 and 3 contends that plaintiff was
agent of defendants No.2 and 3 upto 2009/2010 and thereafter on same trade mark
he got registration in Pakistan hence under Paris Convention of Intellectual
Property 1963 rights of the defendants are protected; he also emphasizes while
referring emails and documents submitted with counter affidavit showing therein
that plaintiff continuously remained in contact with defendants with regard to
such claims. He relied upon PLD 2000 Karachi 139, 2007 CLC 1610 and 2003 PLC
26.
5.
Heard,
perused the record.
6.
Since
name and style of trade mark is not disputed and question before this Court as
raised by respective parties is confined to the extent that registration in
Pakistan in favour of plaintiff with regard to same trade mark whether has
legal value in view of section 85 of the Trade Marks Ordinance 2001. At this
juncture it would be conducive to refer paragraph 13, 14 and 15 of the plaint
which are as under:-
13. That defendant No.3 is a company carrying on business at
California, U.S.A. It gets the batteries and battery cells manufactured from
the Peoples Republic of China & Vietnam and import them to the U.S.A. The
batteries and battery cells are labeled under the trade mark POWER SONIC Label
and thereafter they are shipped to Pakistan. The goods were also shipped from
Republic of China & Vietnam to Pakistan. The plaintiff was carrying on
business with it and was their representative in Pakistan until the year 2009-2010.
14. That thereafter the relations between them became strained and
the defendant No.3 started exporting its goods to defendants No.1 & 2 under
the trade mark POWER SONIC Label.
15. That the marks POWER SONIC Label of the plaintiff and POWER
SONIC Label of the defendants are identical with each other, visually as well
as phonetically. Besides this, the design, get up and colour scheme of both the
marks are identical, thus causing confusion and deception during the course of
trade.
7.
Since
it is not disputed that plaintiff was agent of defendants with regard to same
business but under the trade mark “Power Sonic” label shipped to Pakistan; for
the same of convenience sections 85, 86 and 92 of the Trade Marks Ordinance
2001 are reproduced hereunder:-
85. Meaning of "Paris
Convention" and "Convention country".- In this Ordinance-
(a) "Paris Convention"
means the Pairs Convention for the Protection of Industrial Property of the
20th March, 1883, as revised or amended form time to time; and
(b) a "Convention country"
means a country other than Pakistan which is a party to the Paris Convention.
86. Protection of well known trade
mark.
(1) References in this Ordinance to a
trade mark which is entitled to protection as a well-known trade mark shall be
to a mark which is so entitled under the Paris Convention and which is
well-known in Pakistan as being the mark of a who-
(a) is a national of a Convention
country; or
(b) is domiciled in, or has a real
and effective industrial or commercial establishment in, a Convention country.
whether or not that person carries on business, or has any goodwill, in
Pakistan and references to the proprietor of such a mark shall be construed
accordingly.
(2) For the purposes of this
Ordinance, the tribunal while determining a trade mark is well-known, without
having to require registration or actual use in the form of sales of goods or
services under the trade mark in Pakistan, shall consider the following factors
as relevant criteria for establishing the well known status of the trade mark,
namely:-
(i) the amount of Pakistan or
worldwide recognition of the trade mark;
(ii) the degree of inherent or
acquired distinctiveness of the trade mark;
(iii) the Pakistan or worldwide
duration of the use and advertising of the trade mark;
(iv) the Pakistan or worldwide
commercial value attributed to the trade mark;
(v) the Pakistan or worldwide
geographical scope of the use and advertising of the trade mark;
(vi) the Pakistan or worldwide
quality and image that the trade mark has acquired; and
(vii) the Pakistan or worldwide
exclusivity of use and registration attained by the trade mark and the presence
or absence of identical or deceptively similar third party trade marks validly
registered or used in relation to identical or similar goods and services.
(3) The owner of a trade mark which
is entitled to protection under the Paris Convention as a well-known trade mark
shall be entitled to restrain by injunction the use in Pakistan of a trade mark
which, or the essential part of which, is identical or deceptively similar to
the well-known trade mark-
(a) in relation to identical or
similar goods or services, where the use is likely to cause confusion; or
(b) where such use causes dilution of
the distinctive quality of the well-know trade mark.
(4) Rights conferred under
sub-section (3) shall be subject to the provisions of section 81 and nothing in
the said sub-section shall effect the continuation of any bona fide use of a
trade mark begun before the commencement of this Ordinance.
…………
92. Trade name.- A trade name shall be protected
without the obligation of filing or registration under this Ordinance whether
if forms part of a trade mark or not.
8.
Perusal
of section 85 categorical suggests that Pakistan is the signatory of Paris
Convention and is a Convention country. Definition as provided ”Paris
Convention” means that “Paris convention for the protection of industrial
property of the 20th March, 1833”, whereas section 86 provides
complete protection. Since name and style is not disputed and question of
registration is categorically defined in section 92 with regard to trade name,
which provides that “A trade name shall be protected without the obligation of
filing or registration under this Ordinance whether it forms part of a trade
mark or not.” Hence documents appended
with the plaint as well as with written statement reflect that plaintiff was an
agent of defendants upto 2010, subsequently he got registration in his name
with regard to same product with same name and same trade mark hence they are
protected under the Convention of 1833. At this juncture it would be noteworthy
to add here that if such practice is allowed, then in every country any agent
or other person would start that practice by getting registration from that
area and this would amount to negation of the Convention which provides
protection to the creator and such scheme was enshrined to save the rights as
provided in intellectual property. Accordingly, application filed by plaintiff
is dismissed whereas application filed by defendant is allowed.
J U D G E
Imran/PA