IN THE HIGH COURT OF SINDH AT KARACHI
1. For hearing of CMA No. 9812/14.
2. For orders on CMA No. 11282/14.
Plaintiff : Hamdard Laboratories (Waqf) Pakistan
through: Salman Ahmed Shaikh Advocate.
Defendant : Muhammad Fahim
through Mr. Shamshad Ali Qureshi advocate.
Date of hearing: 10.09.2014.
Date of order: 25.09.2014
O R D E R:
SALAHUDDIN PANHWAR, J. Through instant order I intend to dispose of two applications Under Order XXXIX Rules 1 & 2 CPC (CMA No. 9812 of 2014, whereby the plaintiff has sought the relief of ad-interim injunction against defendant and another application U/O 39 R 4 r/w Section 151 CPC (CMA No.11282/2014) filed by defendant regarding recalling of interim status-quo order.
2. Plaintiff 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 qualify 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 CMA 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 U/O 39 r 4 r/w section 151 CPC 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 vs KARACHI CHEMICAL INDUSTRIES (PRIVATE) LTD. (2000 YLR 1376), J & P COATS LIMITED vs GOLDEN THREAD INDUSTRIES, through Proprietor (2011 CLD 811), Messrs DEWAN SUGAR MILLS (PVT.) LTD. vs M. B. ABBASI and others (2007 CLD 1610), M. SIKANDAR SULTAN vs MASIH AHMED SHAIKH (2003 CLD 26), MEHRAN GHEE MILLS (PVT.) LTD vs CHILTAN GHEE MILLS (PVT.) LTD (2001 SCMR 967) and THE STATE vs ABDUL QAYUM (PLD 2001 SC 14).
5. Conversely, learned counsel for the Defendant has contended that defendant is a registered company, hence U/A 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. versus 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 facia 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 malafide 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 versus 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 Versus 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 VS. 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 board 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:--
a) the purchaser / customer is not intelligent to stick with name of product / brand alone;
b) phonetic should not be such to let seller / shop keeper to present other product then demanded with an excuse of similarity between two;
c) the overall similarity, consisting upon theme, manner and colour scheme.
d) Colour scheme is of more much importance because difference (s) in theme may not open the eye of an ordinary man but the colour scheme does;
11. While, reverting to revert to the merits of the case in hand. First, I would like to examine the similarity of 'phonetic’ ‘Sharbat Rooh Afza’ and ‘Rooh-e-Samar’. On saying, both the above ‘names’ there appears no phonetic similarities. The common WORD ‘Rooh’ is not the decisive factor but it is the ‘phonetic’ impression which matters. Had it been the sole criteria the ‘sharbat Rooh-e-Shireen’ should not have been registered. The instances, referred by the defendant’s side in this regard by mentioning registered product (s) having common word ‘Cola’ are also relevant to stand well with this view which are :-
“PEPSI COLA, COCA COLA, RC COLA, ROOH COLA (OF PLAINTIFF’S), MACCA COLA, MART COLA, GORMET COLA”
12. Further, to examine the similarities between ‘theme, label and colour scheme’ of the two product (s), in question, whether the same if viewed with an ordinary eye can result into ‘deception’ or ‘confusion’. However, before going into detail (s), I must add here that I am quite conscious that the registration gives to its proprietor an exclusive right to use the trade mark and registration is a prima facie evidence of its validity within meaning of the Section 23 of the Act. The infringement of such right cannot 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 (s), cannot be allowed to continue. Since the question cannot be decided without making comments on similarities of the product (s) / brands in dispute, therefore, without prejudice to the prerogative and domain of the Registrar, the Court can examine and comment while deciding an application for injunction. I find support in my such view from the guidance so provided in number of case laws, referred above so also in case of J & P Coats Limited and another (supra) wherein such examination was done.
13. Similarly , in the case of Messrs Mehran Ghee Mills (Pvt) Ltd (quoted supra), the Honourable Supreme Court of Pakistan while dealing with the point in issue has held as under:-
“15…………The question that whether there has been an infringement or not is to be decided by comparing and placing the two marks together and then to determine about their similarity or distinctiveness. If the two marks are absolutely identical no further probe is needed and infringement is established. Essential features of the marks shall be looked into for effectively deciding the issue of infringement. To constitute infringement it is not necessary that whole of the mark be adopted. The infringement will be complete if one or more dominating features of a mark are copied out. If there is a striking resemblance, ex facie, it would lead towards the conclusion that the mark has been infringed. There is mark degree of similarity between two marks of this case. Mark/ label of respondent No.1 has virtually been adopted by petitioner in same colour scheme, design and get-up to pass off its (petitioner’s) goods, as that of the respondent No.1”
(Underlining has been supplied for emphasis)
14. I have before me the label (s) of both products i.e ‘Sharbat Rooh Afza’ and ‘Rooh-e-Samar’ . It is worth to make it clear again that it should not be a mere claim of similarity but claim of similarity should qualify the test that it (similarity), overall, should be so resemble that an ordinary consumer may not differ between what he intended to purchase or what is presented to him. A bare look, nowhere, results into any confusion because not only the colour scheme but also the calligraphy and its manner are quite different from each other. Mere having photo-graph/ picture of different fruits is not sufficient to believe the plea of the plaintiff that label of the defendant’s product ‘Rooh-e-Samar’ shall cause ‘confusion’ or ‘deception’ to its customers of ‘Sharbat Rooh Afza’. The colour scheme(s) of these two are entirely different with considerable distinction to an ordinary eye; the calligraphy is also differently posed and even picture of picture of fruits is different from that of ‘Sharbat Rooh Afza’.
15. In view of above examination I am not of the view that label of the product of the defendant (Rooh-e-Samar) is being presented / labeled or marketed in a manner or fashion that it could result in causing a ‘deception’ or ‘confusion’ to the customer of the plaintiff whose brand ‘Sharbat Rooh Afza’ is well renowned and very much known to its customers , therefore, no case of ‘confusion’ or ‘deception’ is appearing to me. Accordingly, I am not inclined to sail with the view of the plaintiff but conclude that plaintiff has no prima facie case in its favour so as to deprive the defendant from doing / continuing the lawful business or trade. Therefore, application for injunction is hereby dismissed. In consequence whereof the CMA No.11282/2014 stands dismissed being in-fructuous.
16. While parting, the Registrar is directed to decide the application of the defendant for registration of Trade mark without being influenced with any of the observations made hereinabove.
J U D G E