IN THE HIGH COURT OF SINDH, AT KARACHI
H.C.A. No.233 Of 2007.
Present:- Mr. Justice Amir Hani Muslim
Mr. Justice Irfan Saadat Khan.
O R D E R
Date of hearing : 30.09.2009.
Appellant through : Miss Shazia Tasleem Advocate.
Respondent through : Mr. Munawwar Ghani Advocate.
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IRFAN SAADAT KHAN, J: This High Court Appeal has been filed against the order passed by the learned Single Judge, dated 04.10.2007, whereby CMA No.6118/05 under Order 39 Rules 1 & 2 CPC filed by the appellant, in Suit No.952/05, was dismissed.
2. Briefly stated the appellant is a public limited company engaged in the business of manufacturing and assembling of motorcycles. The appellant is marketing the motorcycles under the trademark "HERO" since 1997. In the year 2005 the appellant came to know that the respondent had introduced a new motorcycle under the name and style of "ASIAHERO". The appellant was of the opinion that by using the mark ASIAHERO the said respondent had infringed their exclusive right of using the term HERO and this mark ASIAHERO would impair their goodwill, which they had acquired in the motorcycle manufacturing industry. According to the appellant the mark ASIAHERO used by the respondent is capable of attracting clients who would like to buy HERO, which is a well known brand for years and the respondent has adopted this name just to sail close to the appellant and to enjoy the same popularity and goodwill which the appellant had acquired in the last couple of years. In this backdrop the appellant preferred Suit No.952/05 in which an application for injunction, being CMA No.6118/05, was moved. Such application was dismissed vide the above referred impugned order.
3. Miss Shazia Tasleem Advocate, appeared on behalf of the appellant and submitted that the learned Single Judge was not justified in dismissing the injunction application without considering the fact that the appellant is adopting the trademark HERO since 1997 and in the last couple of years they had acquired popularity and goodwill. It was further submitted by the learned counsel that the name ASIAHERO is deceptively similar and an identical trademark to the mark HERO. She has further submitted that the appellant had invested a huge amount towards concept, designing, and advertisements and has therefore earned goodwill in the market in this regard. She submitted that by using the mark ASIAHERO the respondent wants to impair the said reputation achieved by the appellant during the last couple of years, hence, the respondent may be restrained from using the said trade name ASIAHERO, which according to her is quite similar to the trademark of the appellant's and is thus violative of the provisions of the Trademark Ordinance, 2001. Learned counsel for the appellant has further stated that the learned Single Judge has also not taken into consideration the fact that the appellant has filed suits for permanent injunction against the companies using the trade name "King Hero/Pak Hero". In the end she submitted that the learned Single Judge has not appreciated the decisions cited by the appellant before him. The learned counsel has finally prayed that the order passed by the learned Single Judge may be set aside by accepting the appellant's application.
4. Mr. Munawwar Ghani Advocate appeared on behalf of the respondent and submitted that no infringement of the trademark under question has been made by the respondent company. Learned counsel vociferously submitted that the mark HERO is a word of common parlance and of wide amplitude. He submitted that nobody could be given exclusive right to use the mark HERO as there could be occasions of either prefixing and suffixing any word with the word HERO. Learned counsel also submitted that the mark ASIAHERO is quite distinct and different from the mark HERO and the learned Single Judge was quite justified in dismissing the application moved by the appellant, which according to him was misconceived. He further submitted that not only the trade name is different but the emblem of HERO also is quite different. Moreover the prices of the two motorcycles also are quite different. The learned counsel for the respondent further submitted that there is no sign of deceptive similarity between the two trademarks, as alleged by the appellant. He further submitted that in India also a company is manufacturing motorcycles under the brand name of "HERO HONDA". The learned counsel further submitted that the allegation of the appellant that due to similarity of the names of HERO and ASIAHERO a common person could get confused while purchasing a motorcycle is also misplaced as any person purchasing a motorcycle, is fully aware of the product he wishes to purchase. Learned counsel further submitted that the learned Single Judge has passed an elaborate and erudite order by touching upon each and every aspect of the case. According to him the learned Single Judge has not only elaborately and eloquently thrashed out the facts of the case but has also relied upon a number of precedents in this regard. The learned counsel, finally submitted that this appeal is misconceived and may, therefore, be dismissed accordingly.
5. We have heard both the learned counsel at length and find ourselves to be in agreement with the impugned order. The learned Single Judge, in our opinion, has passed an exhaustive and elaborate order, whereby the learned Judge has not only discussed the facts of the case in detail but has also relied upon a number of decisions given by the superior courts on the issue. In our considered view the appellant has failed to make out any case of interference, since the appellant could not be given the exclusive right of the mark HERO which in our view is a word of common parlance and is used in a number of varieties/cases. We are guided in this regard by the test laid down by the Apex Court in Western Brand Tea Vs. Tapal Tea (Pvt.) Ltd. reported as PLD 2001 S.C. 14 wherein it was observed as follows:-
"It is cardinal principle of law and fair commercial trading, that deceptive measures should not be adopted to adversely affect goodwill and recognition earned by other organizations in trading specific commodity."
6. The Hon'ble Supreme Court in Mehran Ghee Mills (Pvt.) Ltd. Vs. Chiltan Ghee Mills (Pvt.) Ltd. (2001 SCMR 967) has held 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."
7. Being cognizant of the above precedents, suffice would it to say that the word "HERO" is otherwise descriptive and is being employed generally across the board. Hence there is prima facie no possibility of any deception being entertained in the minds of the public upon usage of the two competing marks. Moreover, the appellant has also failed to provide any material so as to substantiate any possible deception. To extend any protection to the appellant with regard to its mark "HERO" is thus uncalled for.
8. We also agree with the learned Single Judge that the balance of convenience also tilts in favour of the respondent rather than the appellant for the simple reason that the mark HERO has been employed across the board.
9. In view of the above discussion, we are of the view that this High Court Appeal is misconceived and deserves to be dismissed in limine. These are the detailed reasons in respect of the short order announced by us on 30.09.2009.
10. However, before parting with the order we would like to observe that since the order only decides an appeal arising from an interlocutory order, the observations and conclusions herein shall not affect the outcome of the pending suits.
11. There shall however be no order as to costs.
JUDGE
Karachi.
Dated:___________. JUDGE
Tahseen/P.A.