IN THE HIGH COURT OF SINDH, KARACHI
Suit No.359 of 2006 _____________________________________________________
For hearing of CMA No.2100/06
17 & 18 November 2009
Ms. Shazia Tasleem, advocate for the plaintiff.
Mr. Munawar Ghani, advocate for the defendant.
IRFAN SAADAT KHAN, J:-
Through this application (CMA No.2100/06), the plaintiff seeks an order restraining the defendant from infringing and/or passing off by use of the trade mark “FEASINA” and the trade name “PARACHA FOOD PRODUCTS”.
2. Brief facts of the case relevant for the purpose of disposing of this application are that plaintiff/applicant has been carrying on business as the manufacturer, seller and supplier of soft drink in the powder form in different flavours under the trade name “Paracha Food Products, Karachi” and using the trade mark “FEASINA” since 1980-81. On 8.9.1982, vide application No.77706 in class 32, the plaintiff applied to the Registrar of Trade Marks, for registration of the trade mark “FEASINA” and trade name “PARACHA FOOD PRODUCTS” in his name. The application was accepted by the Registrar, Trade Marks and was published in Trade Mark Journal No.397 dated 1 February 1984. The address of the plaintiff at the time of submitting the said application was Plot No.C-102, Block I, North Nazimabad, Karachi 33, however, subsequently, the plaintiff moved to Plot No.A-425, Block-I, North Nazimabad, Karachi and, therefore, did not receive the notice/demand note served by the Trade Mark Registry and, thus, was unable to follow up its application and the same was treated as abandoned by the Trade Mark office. It was in the year 2003 when the plaintiff came to know about such facts and, therefore, immediately filed another application, bearing No.200445 in Class 32, for the registration of the said trade mark, which is under process. In the month of March 2006 the plaintiff came to know that the defendant is using the same trade mark and trade name for similar goods. It is in these circumstances that the plaintiff has filed the present suit, inter alia, praying for permanent injunction restraining the defendant from infringing and/or passing off and/or attempting to pass of and/or from enabling others to infringe and/or pass off their products by using the impugned trade mark FEASINA and imitated trade name “PARACHA FOOD PRODUCTS”. Alongwith the plaint, the plaintiff also filed the listed application under Order XXXIX, rules 1 and 2, CPC for interim relief in the like manner.
3. Learned counsel for the plaintiff/applicant submitted that the plaintiff is marketing his goods under the trade mark “FEASINA” and trade name “PARACHA FOOD PRODUCTS” since 1980-81 and, therefore, being proprietor of earlier right and a prior user of the said trade mark and trade name, the plaintiff is entitled to protection from this Court. Moreover, the plaintiff is continuously using the trade mark “FEASINA” and trade name “Paracha Food Products” since 1980-81 and, therefore, is prior user of the said trade mark as well as the said trade name. Learned counsel also referred to Annexures “B-1” “B-2” and “B-3” to show that the plaintiff is continuously marketing his products under the trade mark and trade name “FEASINA” and had never stopped production/marketing thereof. She also submitted that application for registration of the trade mark and trade name in the name of the plaintiff was made but due to inadvertence the same could not be followed up and the application was treated abandoned. However, the plaintiff was continuously using the trade mark and trade name continuously. The learned counsel for the plaintiff also submitted that the sir name of the plaintiff is “Paracha” and therefore he is using the same as trade name in the style “Paracha Food Products” however the defendant, who is not a Paracha by caste, is using the same to deceive ordinary people by passing off his goods as that of the plaintiff. Learned counsel also referred to various provisions of the Trade Mark Ordinance 2001 to argue that the registration of the said trade mark in the name of the defendant was in violation of the law. Lastly, referring to the written statement of the defendant, the learned counsel stated that averments made by the plaintiff in the plaint have not been denied and, therefore, the same are to be presumed as true. The learned counsel relied on the following cases and treatise on trade marks:
1. M/s. Durafoam Enterprises (Pvt) Ltd. V. M/s. Vohra Enterprises (2002 CLD 1639),
2. Al Karam Textile Mills (Pvt) Ltd. V. Mehtab Chawla and others (SB) (2007 CLD 966),
3. Ghulam Nabi v. Khuda Bux and others (PLJ 1984 Karachi 147),
4. Simatul Chemical Industries Pvt. Ltd. V. Cibatul Ltd. (AIR 1978 Gujrat 216),
5. ADT Services Ag v. ADT Pakistan (Pvt) Ltd and others (2005 CLD 1546),
6. Kala Niketan, Karol Bagh v. Kala Niketan, G-10 (AIR 1983 Dehli 161),
7. Al Karam Textile Mills (Pvt) Ltd. V. Mehtab Chawla and others (DB) (2007 CLD 1044),
8. Trade Mark and Passing Off by P. Narayanan, Third Edition, 122, and Fourth Edition, page
9. Consolidated Foods Corporation v. Brandon and Co. (AIR 1965 Bombay 35)
4. Learned counsel for the plaintiff also produced before me two packs: one used by the plaintiff for its product under the trade mark “FEASINA” and the other used by the defendant for its similar product under the same trade mark and trade name and submitted that the two packs are so deceptively similar that person of ordinary parlance could easily get confused while purchasing the said product.
5. In reply to the arguments of the learned counsel for the plaintiff, Mr. Munawar Ghani, advocate for the defendant submitted that his client under the impression that the trade mark was abandoned by the plaintiff applied for the registration and got the same registered in his name on 9.8.2001 and in this regard referred to the Certificate of Registration of the said trade mark. He submitted that no doubt the plaintiff applied for registration of the said trade mark in its name in the year 1982 but since the said trade mark failed to attract the general public, therefore, in his opinion the plaintiff did not follow his application for registration of the said trade mark in his name and abandoned the same in 1998. Thereafter, the defendant applied and got the same registered in his name. He stated that his trade mark was duly advertised in the Trade Mark Journal but no opposition was filed to the same by any one. The learned counsel referred to section 36 of the Trade Mark Ordinance and stated that where a trade mark has been removed from the Register for failure to pay the fee for renewal, it shall be deemed to be a trade mark already on the Register for one year next. He submitted that in this case the defendant applied for the registration of the said trade mark in his name long after the same was abandoned by the plaintiff. Therefore, there is no mala fide on the part of the defendant. He further submitted that since the defendant is a registered user of the said trade mark, therefore, no injunction can be issued against such a user.
6. Before proceeding any further it would be pertinent to mention here that Mr. Munawar Ghani, learned counsel for the defendant, had, at the very outset, submitted that the trade name “PARACHA FOOD PRODUCTS” was adopted by the defendant as Paracha was the sir-name of the person who had invented the formula for the product and since he had died in the year 2006, the defendant had stopped using the said trade name “Paracha Food Products” and he will not oppose the listed application to this extent. Therefore, it would be an exercise in futility to discuss this question and the case law relied upon by the learned counsel for the plaintiff on this point.
7. I have examined the two packs produced during the course of arguments by the learned counsel for the plaintiff, to which no objection was raised by the learned counsel for the defendant. A perusal of the two packs reveals that the colour scheme, label design and pattern of the two packs is almost identical and an ordinary person cannot differentiate between the two at a cursory glance. It is also noteworthy that all the text/wording on both the packs is almost the same. However, the most glaring aspect of the matter is that on one side of the pack the plaintiff has mentioned its trade name and short address as “Paracha Food Products Karachi-33 Pakistan” and the same trade name and short address also appears on the pack of the defendant. While the word and figure “Karachi-33” appears in the address of the plaintiff on application filed by him before the Registrar, Trade Marks, but the same does not appear in the address of the defendant as mentioned in the Certificate of Registration filed by the defendant with his plaint in Suit No.425/06. It may also be worth noting that the address of the plaintiff is that of North Nazimabad while the address of the defendant is that of Marriot Road and thus both cannot fall within Karachi-33.
8. As regards the submission of the learned counsel for the plaintiff that as the plaintiff is using the trade mark “FEASINA” since 1980-81, therefore, by virtue of being a prior user the plaintiff has a superior right over the said trade mark and registration of the same in favour of the defendant would not affect plaintiff’s right therein, the first obstacle for the plaintiff to clear is to show that the plaintiff is the prior user of the said trade mark.
9. The learned counsel for the plaintiff stated that the plaintiff is using the said trade mark since 1980-81 and applied for registration of the same in his name on 8.9.1982. This statement is not controverted by learned counsel for the defendant but he states that since the application was abandoned, therefore, the defendant got the same registered in his name. A similar controversy arose in the case of Shahi Enterprises Limited v. D.F.I. (Pvt) Ltd. (2007 CLD 527), wherein a learned single Judge of this Court has held as under:
“It is indeed true that the plaintiff has applied for registration of its trade mark “CHOKLIK” on 22.8.2006, whereas, the defendant has applied for registration of its trade mark on 12.12.2006, however, since the plaintiff has failed to produce any material in support of his claim of prior user of the trade mark ‘CHOKLIK’ , he can, at best, claim its user from the date of his application i.e. 22.8.2006. It is indeed true that in the said application, the plaintiff has claimed having used the name ‘CHOKLIK’ since 2005 but as noted earlier, no material has been produced in support of his above claim whereas the defendant through the various Sales Tax Invoices has, prima facie established that he is producing liquid Chocolate under the trade name ‘CHOCOLIQ’ since 3.6.2005, further more, the plaintiff has also not produced any material to establish that the trade name ‘CHOKLIK’ has come to be associated with it. In the circumstances, I do not find any merits in the application. The application is, therefore, dismissed.
10. In the case in hand if the criteria laid down in the above quoted case is applied, then it is clear that the plaintiff applied for registration of the trade mark “FEASINA” as far back as 1982 whereas the defendant filed his application in the year 2001 and if the date of filing of applications before the Registrar of Trade Marks are to be used for determining the prior user of the trade mark “FEASINA” then there is no doubt that admittedly plaintiff is the prior user of the trade mark “FEASINA”.
11. Even otherwise, during the course of arguments, as well as in the written synopsis , Mr. Munawar Ghani, the learned counsel for the defendant has stated that the defendant is using the trade mark “FEASINA” since 2001, it is also admitted that the defendant did not coin or invent the said trade mark ”FEASINA” but the learned counsel has frankly acknowledged that this trade name has been picked from the market on the mere assumption that it was abandoned by the plaintiff.
12. Next, I will take up the question as to what are the rights and privileges of a prior user of a trade mark. In this regard reference may be made to the case of Consolidated Foods Corporation (supra) wherein it has been held as under:
“To summarize, therefore, a trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. As between two competitors who are each desirous of adopting such a mark, "it is, to use familiar language, entirely a question of who gets there first." (Gaw Kan Lye v. Saw Kyone Saing, AIR 1939 Rang 343 (FB). Registration under the statute does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration.” (emphasis supplied).
In the case of Al-Karam Textile Mills Ltd. (DB)(supra), a learned Division Bench of this Court observed as under:
“Admittedly the appellant got the registration of the Mark "Al-Karam" under the Trade Marks Act, 1940, rights of exclusivity as conferred under section 21 of the Act, 1940 was subject to sections 22, 25 and 26. As held in the case of Abdul Wasim v. Haico and others 2002 CLD 23, right of registered user is subservient to the right of prior user. It was further held that "Exclusivity to use mark registered under section 21 of the Trade Marks Act, 1940 does not affect the right of prior user, may it be unregistered. It was further held that "Right in a trade mark created by prior user, despite non-registration was superior right recognized under section 25 of the (late Act of 1940).” (emphasis supplied).
In the case of Messrs DURAFOAM (Pvt.) Ltd. (supra) it has been held as under:
“In the foregoing background in presence of a registered trade mark in favour of the plaintiffs, plaintiffs' right to use such mark is indeed recognized under the Trade Marks Act but exclusivity to use such mark is not absolute but qualified. Rights of prior user as recognized under section 25 of the Act, are equally protected.
However, in view of section 25, right of prior user is preferential and superior right of course subject to proof, as against the right of registered holder of contentious mark recognized under section 21 thereof. Right of prior user is valuable and superior right than the right of registered holder of contentious mark. Right of prior user in terms of section 25 is not dependant on registration. In a defensive action defendant has to satisfy the Court that the defendant is using such mark extensively prior to the use by the registered proprietor. As discussed above the defendants have prima facie demonstrated that they are prior user of contentious mark "Mujahid Foam". Defendants have produced advertisement material which are published and printed material which shows advertisement in newspaper and so also on Television much anterior to the adoption of contentious mark by the plaintiff as discussed above, therefore, in my humble opinion defendants have successfully demonstrated that they are prior user and are entitled to protection as recognized under section 25 of the Act.”
Treaties on Trade Marks and Passing Off by P. Narayanan, Third Edition, at page No.53 states as under:
“122 Effect of false claim to proprietorship
If the applicant at the time of making the application had knowledge that the mark as applied for or a similar mark had already been used by another trader in relation to similar goods, then the claim to proprietorship made by him is false.” (Emphasis supplied).
13. Treaties on Law of Trade Marks and Passing Off by P. Narayanan, Fourth Edition, at page No.42 states as under:
“A single actual use with intent to continue such use instantly confers a right to such mark as a trade mark. It is sufficient if the article with the mark upon it has actually become a vendible article in the market with intent on the part of the proprietor to continue its production and sale. Extent and duration of the use is not relevant.”
In this regard reference may also be made to the aforesaid treaties which, at page No.44, states as under:
“Use of mark by another subsequent to date of application. An applicant who has filed an application under s. 18 claiming to be the proprietor of the trade mark and to have definite and present intention to use the mark has better rights than another who, subsequently without due care adopted and used a similar mark. Subsequent use by another of the same mark cannot militate against or take away the rights acquired by the applicant on the date of his application by virtue of s 18(1). If a subsequent adoption and user by another is taken as a ground for rejection of an earlier application for registration, then s 18(i) which enables a person to apply for registration of a mark proposed to be used by him will be rendered practically nugatory. The right to have a mark registered under s 18(i) by a person devising and proposing to use it can in all cases be defeated by an unscrupulous rival trader coming to know of the mark proposed to be registered and using the same before the mark is actually registered and putting forward opposition to the application for registration on the ground of his user of the mark. Once an application for registration of a mark is made by a person who has proposed to use a mark devised by him, all persons who happen to use that mark thereafter bona fide or not, will only be taking a risk and, therefore, their user cannot stand in the way of the applicant's prosecuting his application for registration.” (Emphasis supplied).
In the case of Al-Karam Textile Mills (Pvt.) Ltd. (SB) a learned single Judge of this Court has held as under:
“The exclusive right to use registered trade mark is conferred on proprietor in terms of section 21 of the Trade Marks Act, 1940, and such right is subservient to exception as provided under sections 22, 25, and 26 of Trade Marks Act. A registered proprietor cannot restrain prior bona fide user of the trade mark in respect of identical or confusingly similar trade mark. Since the defendant is using Trade Mark "Al-Karam" prior in time to the plaintiff, plaintiff cannot on the basis of his registered Trade Mark restrained the defendant from using the same. If any case-law is required in support one can see the case of Abdul Wasim v. Messrs Haico through Sole Proprietor /Partner and 2 others 2002 CLD 1623.”
14. A perusal of the above referred decisions/treatise would reveal that, there is a consensus that a right in a trade mark created by a prior user, despite non-registration, was a superior right and a protection to such right is provided under the law.
15. Reference was also made to section 67 of the Trade Mark Ordinance, 2001, which falls under Chapter VII and deals with unfair competition and comparative advertisement. Clause (a) of sub-section (1) of section 67 of the Ordinance states that “all acts of such nature as to create confusion by any means whatsoever with the establishment, goods, services or industrial or commercial activities of a competitor”. Thus, under provisions of this clause, a bar is placed upon all acts which may create confusion by whatever means. Since at present I am only dealing with an application under Order XXXIX, rules 1 and 2, CPC, and not the entire case, therefore, I will not dilate on this aspect, except that the two packs produced in the Court before me by the learned counsel for the plaintiff are so deceptively similar that they will definitely cause confusion in the mind of an ordinary person.
16. Similarly, reference was also made by the learned counsel for the plaintiff to the provisions, including section 80 of the Ordinance, which deal with grounds for invalidating registration but since a judicial misc. application is pending between the parties, therefore, it is not justifiable to dilate upon the same at this stage as it could prejudice case of one of the parties thereto.
17. Now arises the question as to whether, a temporary injunction can be issued in his favour although the trade mark of the plaintiff has not, as yet, been registered in his name. In this regard reference may be made to the following cases:
In the case of Telephone Soap v. Lever Brothers (1994 CLC 2135), it was held as under:
“Mere fact that the trade mark of the appellant had also been registered under the Trade Marks Act, would not entitle him to use the same if it amounted to infringement of the trade mark of the plaintiff. I have also examined the raps of both the soaps manufactured by the parties and find that though there may be voice difference and picture of Telephone appears in the trade mark of the appellant but the dispute has to be decided considering over all get up of both the trade marks. When examined I also find that prima facie there is close similarity as regards colour scheme and other features of both the trade marks, therefore, it was rightly held that prima facie case existed in favour of the respondent and it was respondent who was to suffer irreparable loss in case the appellant was not restrained from infringing the trade mark of the respondent and passing his goods as goods of the respondent during the pendency of the suit as the loss which has to occur to the business reputation of the respondent was not measurable in terms of money.”
In the case of Mehran Ghee Mills (Pvt) Limited and others v. Chiltan Ghee Mills Limited (2001 SCMR 967), a learned Division Bench of the Hon’ble Supreme Court, dealing with ‘passing off’ action, held as under:
“As regards passing off action, it is noted that the principle underlying the passing off action is that it is ‘unlawful for a trader to pass off his goods, as the goods of another’. Passing off action may be independent as it may be coupled with infringement. It is maintainable irrespective of the fact that the trade mark is registered or unregistered.
In another case dealing with the action of passing off, reported as Ferozuddin v. Muhammad Shafi and another (PLD 1975 Karachi 486), reference has been made to Halsbury’s Laws of England, Third Edition, Volume XXXVIII at page 594, which reads as under:
“The consequence of the right to prevent passing off is that a trader, who uses a name or mark or get up that has become distinctive of his goods, can prevent other using the same or a similar name or mark, where that use will deceive or is calculated to deceive a substantial number of members of the trade or public into thinking that goods, offered for sale or supplied by them are his.”
18. Now, once again, I will refer to the two packs produced by the learned counsel for the plaintiff in Court. If the same are placed together it will transpire that the two packs – one used by the plaintiff and other by the defendant for the same goods, are so similar that it can be safely said that they are identical. For example, the front of the pack of the plaintiff shows a full orange with two green leaves and a half piece of orange with a glass two-thirds full with some orange liquid and the trade mark “FEASINA” on top thereof. At the bottom of both the packs wording “Soft Drink Powder With Vitamin “C” appears in yellow shade. Thus the front of the pack is almost the same. Similarly, the back side of the pack is also almost identical as the trade mark “FEASINA” in black wording is followed by word “Orange” in orange colour, the packs are halved in thick green line and in the upper part and the lower part thereof the wording in English and Urdu are the same. In the same way, on one side of the pack similar trade name appears as “Paracha Food Products Karachi-33 Pakistan” and on the other the ingredients of the goods are mentioned, once again in strikingly similar fashion. Then on the remaining two opposite sides of the packs while the wording is different but the green colour is again the same. Thus, if the two packs are placed together and compared it will transpire that both are almost identical. Even the words “Karachi 33 Pakistan” appearing on the pack used by the plaintiff, whose address is of Karachi-33, are also appearing on the pack used by the defendant although it is not the address of the defendant, as discussed above. Thus, the two packs would definitely deceive an ordinary man. In the case of Western Brand Tea v. Tapal Tea Pvt Limited and others (PLD 2001 SC 18), it was held as under:
“It is the cardinal principle of law and fair commercial trading, that deceptive measure should not be adopted to adversely affect goodwill and recognition earned by other organizations in trading in specific commodity. Bare visual look on the wrappers wherein the petitioner (herein) packed their tea, reflects complete resemblance, providing similarity of design, scheme and colour which can certainly affect the product of the respondent Tapal Danedar Tea. The illiterate customers particularly can be conveniently misled on looking at wrappers.”
19. It would be advantageous at this stage to once again refer to the relevant portion from the case of Consolidated Food Products, (supra), wherein it was held as under:
The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration.
20. In view of the above, in my opinion, the plaintiff has made out a prima facie case for grant of interim injunction in his favour as the two packs are strikingly similar and a customer can be misled into believing that the product of the defendant belongs to the plaintiff and thus causing irreparable loss to the plaintiff which could not be calculated in terms of money. In the case of Al Karam Textile Mills Limited (supra) a learned Division Bench, headed by Mushir Alam, J, has held, as quoted above, that “Right in a trade mark created by prior user, despite non-registration was superior right recognized under section 25 of the (late Act of 1940)”. Since it is a Division Bench judgment, the same is binding on me. Therefore, I allow this CMA (No.2100/06), filed by the plaintiff and restrain the defendant, his agents/men, representatives and stockists, jointly and severally, from using the said trade mark “FEASINA”, the trade name, “PARACHA FOOD PRODUCTS” and the similar packs for his products till the decision of the suit and the J.Misc. filed by the plaintiff, which ever is earlier. Consequently, CMA No. 2721/06, filed by the defendant in Suit No.425/06, is dismissed.
21. It may, however, be noted that the observations made herein are merely tentative in nature and shall have no bearing on the final adjudication of the suits as well as the J.Misc. pending between the parties hereto.
11th December, 2009. Judge