1. MUSHIR ALAM, J.--- Brief facts necessary for the disposal of listed application appears to that plaintiff claims to be the registered proprietor of trade mark 'E4' in respect of lubricant oil in class-4 since 23.5.1984, being registration No. 83067. Plaintiff's claim as to label, is sub judice in Misc. Appeal 303/2004. Plaintiff also claims to be the proprietor in respect of mark comprised of alphabet 'P' written in a peculiar fashion in white colour within a circle with blue background. It appears to be abbreviated form of plaintiffs' trading name 'Petromark'.
2. Plaintiff claims to have adopted mark "E-4" in respect of oil and lubricants with peculiar get-up and style. It is alleged that the defendant had adopted its trade mark 'E-4' with similar label, design, logo, colour scheme and get-up to deceive the public, in a calculated manner and is passing off spurious goods as the goods of the plaintiff, thus trading on the goodwill and reputation of the plaintiff.
3. On C.M.A. No. 1382/2004 ad-interim orders in terms of above injunctive relief was granted on 14.3.2004.
4. Defendant filed counter-affidavit to the listed application and so also filed C.M.A. No. 2056/2004 under Order 39, Rule 4, C.P.C. Seeking recall of the ad-interim order.
5. It was contended by Mr. Saleem Ghulam Hussain learned counsel for the plaintiff that, the plaintiff being registered holder in terms of Section 21 of the Trade Mark. Act, has absolute rights to use the mark 'E-4', "plus", shield, and other features of the label exclusively, It was urged that, defendants have not only adopted the trade mark "E-4" but also adopted same features, colour scheme and the design of container for their lubricants. According to Mr. Saleem Ghulam Hussain. If both the marks are placed side by side not only unwary. Purchaser would be deceived but also there is 'likelihood of deception and confusion. It was further urged that the Registrar of Trade Mark also dismissed the defendant's opposition for the registration of the said trade mark, therefore, they have no right to adopt and use the plaintiff's mark. Mr. Saleem Ghulam Hussain, contends that, since domination future of the plaintiff trade mark "E-4" has been copied by the defendant, therefore, actual deception is not necessary and the plaintiff is only required to show that there is likelihood of confusion. In support of his contentions Mr. Saleem, has relied upon cases cited as Sayyed Engineering v. Tristar Industries (Pvt.) Ltd. (2001 CLC 1368), Messrs. Mehran Ghee Mills (Pvt.)
6. Limited v.
7. Messrs. Chiltan Ghee Mill (Pvt.) Limited (2001 SCM R 967), J.N. Nichols (Vimto) PLC A Company Incorporated in the United Kingdom v. Mehran Bottlers (Private) Limited, Karachi (PLD 2000 Karachi 192) and Registrar of Trade Marks v. Chandra Rakhit Ltd. (AIR 1955 S.C. 558).
8. Mr. Khurrum further urged that, distinguishing feature associated with the plaintiff's mark is not "E- 4" but alphabet 'P' written in a peculiar form. He has drawn my attention to Annexure 'C' to the plaint. The advertisement of plaintiff's lubricant, available at page 161 and 163 was shown to demonstrate that the plaintiff themselves have advertised 'that "P" written in a peculiar form is symbol of quality product and people may not be defrauded by use of similar and identical names'. Mr. Khurram had also drawn my attention to Annexure-'D' to plaint, the mark of the plaintiff and towards Annexure 'H' to the plaint, the mark of the defendant to highlight the distinguishing features. Overall colour scheme of the plaintiffs label in two colours, upper half is yellow and lower half is in blue with picture of ordinary motor-cycle. Yellow coloured container is with hollow handle, for grip is short and stout with visible four groves striped depression running across the container including the handle. Whereas, the container of defendants' lubricant is elongated shape with circular grip with respondent cap,. Label is of different orange shade, diagonally divided into two triangles; upper portion is in striped in orange colour in lower portion a sporty motor-cycle is displayed. "E-4" in both the marks is common. Both the containers of the lubricants were also produced in Court to, demonstrate the dissimilarity of the mark. Learned counsel for the defendant further contents that "E-4" mark is common to trade and is generally used by the lubricant traders and dealers. In support of such contention, defendant alongwith counter-affidavit has produced photographs. Of various types and design of container with label using use of mark "E-4" by number of lubricant manufacture. At least nine different type of containers of lubricant bearing visible mark 'E-4' were produced manufactured by Atif Lubricant Jacobabad, Khan & Company, Peshawar, A.I Traders, Karachi, Shafiq & Co.- at Gujrat Khalid & Company, Mardan, A.I Traders, Multan, Asghar & Company, Okara, Asif A.I & Company, Lahore. It was urged by Mr, Khurram that, mark of the plaintiff was advertised in the Trade Mark General on 1.6:1986 with disclaimer which fact, the plaintiff had deliberately suppressed to obtain injunctive order. Mr. Khurram has drawn my attention to the Registration of the plaintiff's mark and logo "P" written in a peculiar form Annexure 'C' to the plaint and to the Annexure 'A' to the counter-affidavit which shows that the plaintiffs mark was advertised with various disclaimed features including of 'E-4'. It was therefore, contended that the plaintiffs have no right to the use of mark "E4" to the exclusion of others.
9. When the listed application came up for hearing on 1.4.2004, it was noted that counter-affidavit containing certain facts and documents was filed on 31.3.2004. Mr, Saleem Ghulam Hussain was asked, if he desires to file the affidavit-in-joinder to rebut the facts stated therein, to which he stated that, he will proceed on the basis of material available on record and does not wish to file a rejoinder. Accordingly the application was heard, I have heard the arguments and perused the record.
10. The registration certificate which the plaintiff has filed in respect of the trade mark appears to the in class-4, Annexure 'C' to the plaint (at page 43 of the file) is in respect of alphabet 'P' written in a peculiar faction in white, within a circle with blue background. Plaintiff did not file the registration of "E-4" in respect of which injunctive order is claimed. It was the defendant who filed copy of Trade Mark Journal dated 1.6.1986 alongwith counter-affidavit as Annexure A/1, showing that, the label of the plaintiff was advertised before acceptance, subject to condition and disclaimer in respect of various parts. It is noted that, the label plaintiff has annexed as 'B' with plaint is different and has registration No. 129393. Plaintiff claims protection in respect of mark with registration No. 83067 Annexure All to the counter-affidavit, it shows different label and packing of oil appears to be in can shaped in container. Plaintiff has laid emphasis to seek injunction in respect of a different label Annexure 'D' to the plaint though containing more or less same features but in different arrangement. Label is affixed on a yellow colour plastic container no registration of such label has been placed on record, prima facie plaintiff cannot claim any infringement of such label but passing off action in respect of unregistered mark is always maintainable.
11. The plaintiffs mark was advertised before acceptance in the Trade Mark Journal dated 1.6.1986 but subject to disclaimer as follows "registration of trade mark shall give no right to the exclusive of the letter "E-4", "Extra motor oil", numeral "30/40" and device of the container". Exclusive or monopolistic rights of registered trade mark holder in terms of Section 21, of the Trade Mark Act are not absolute but circumscribed by limitations and exception provided for [ in Sections 22, 25 and 26 of the Trade Marks Act, 1940, exception and limitation may be listed as follows:-
(1) Where registration is subject to any condition or limitation entered on the register (Section 22).
(2) As against the right of prior user in terms of Section 25.
12. (3.) As against bona fide use by a person of his own name, his place of business or name and or place of business of his predecessor in trade.
(4) Use of mark by other persons in the same trade, of any bona fide description of the character or quality of his goods. A permissive or authorized user cannot claim such protection or immunity.
13. From the scheme of the Trade Mark Act, it appears that some statutory defenses are available to a defendant who is accused of infringement or passing of action, some of the statutory defenses that could be summarized are as follows:--
(a) Where the defendant is able to show that the impugned mark has direct reference to the character or quality of the goods and according to its ordinary significance a geographical name or surname or the name of sect, cast or tribe in Pakistan. (Section 6(1)(d)).
(b) Where defendant is able to show that the mark is not distinctive; Section 6(1)(e).
(c) Where defendant claims honest concurrent user or other special circumstances. (Section 10).
(d) Where a defendant seeks benefit of any condition of limitation entered on the register and the defendant is able to show that his case is covered by such limitation and condition imposed by the Registrar on the registered mark of the plaintiff. (Section 22).
(e) Where the defendant claims to be using the mark either by them or by their predecessor prior to the registration obtained by the plaintiff. (Section 25).
(f) Where the defendant uses any bona fide description of the character or quality of his goods as a mark. Provided, he is not a permissive or authorized user under the registered holder or proprietor of the mark. (Section 25 read with Section 21(b) and 57(b)).
(g) Any feature, part of the mark or the mark as a whole that is common to trade or otherwise is of non-descriptive in nature as to character or quality of good. (Section 26).
14. It appears that the defendant has found refuge and sought protection under the statutory defence available under Section 22 of the Act, as summarized at serial number (d) and (g), in preceding paragraph. As noted above, registration of plaintiff's trade mark was advertised subject to conditions and limitations imposed by the Registrar subject to disclaimer in terms of Section 13(b) of the Act thereof, which relates to any matter common to trade or otherwise of a nondistinctive character. It is not disputed that registration of the plaintiff mark was subject to disclaimer in respect of various parts including features identified as "E-4", device of motor-cycle and container.
15. It appears that the feature "E-4" in the mark of the plaintiff beside, being disclaimed, is not distinctive rather it is descriptive as to the character or quality of the goods and such description is in common use by the lubricant manufacturer and traders.
16. Defendant No. 1 had placed on record sufficient material to show that large number of lubricant and oil dealers uses in their mark "E-4" which is reflective of character or quality of lubricant. 'E' refers to motorcycle engine and '4' refers to four stroke, "E-4" read together in the trade and business of motor-cycle lubricants, commonly identifies lubricant meant for "FOUR STROKE ENGINE".
17. It is not a trade mark, but a descriptive feature or character of lubricating oil that is associated to particular category and class of motorcycle engine.
18. Large number of photograph that have been placed on record shows that more 8 companies have adopted similar description in respect of their lubricating oil. Invariable in most of labels of various brands also carries image of different type of motor-cycle.
19. Each of the lubricant traders appears to have used all the disclaimed, non-distinctive and descriptive parts used by the plaintiff in a different manner, composition, arrangement, get-up, colour scheme and in various shape of containers.
20. This Court had the occasion to examine disclaimer in the case of Pakistan Drug House (Pvt.) Ltd. v.
21. Rio Chemical Company (2003 CLR 1713) at page 1542 it was held;- "From the disclaimer as reproduced above it is evident that disclaimer is with "Except substantially as shown in the form of application"a When one or more part of a mark are subject to disclaimer, then what may be subject-matter of registration is distinctive manner, get-up and colour scheme in which each of the constituting disclaimed parts or portion of mark are placed and arranged to give it same distinction from the other mark using same disclaimed part or portion for competing goods. Indeed, the plaintiff cannot claim exclusive right to the use of the name of the product i.e. "Aletris Cordial" or devise of bottle used in the mark as such mark was registered subject to disclaimer. There is no cavil to the proposition that a registered holder of mark, who had disclaimed, any of the feature of the mark, either in word, device or set-up or where such feature is claimed to be common to trade whatever the case may be. The holder of the mark may claim monopoly in the manner in which such mark, device, word or any combination thereof is put to use to distinguish his goods from the others. in this case the manner, plaintiff has used the combination of the word "Aletris Cordial" in semi-circular fashion in a particular form of calligraphy over the picture of a feminine hand holding a particular shape of bottle in 'a particular fashion all disclaimed parts, portion andfeature of the mark i.e, words and device of bottle and hand have been placed in a particular fashion get-up and colour scheme. Use of all feature in particular manner, gives the trade mark of the plaintiff a distinguishing impact. Indeed, defendant could have used the words "ALETRIS CORDIAL" and or device of bottle but not in the manner and fashion plaintiff had placed them in their mark. When both the marks subject-matter of suit were examined it appears that the defendant has not only copied the mark verbatim........................................ ............................................... The defendant appears to have simply pirated the mark of plaintiff in verbatim arrangement of the disclaimed parts in same manner and fashion." to the above case injunction was granted as the defendant had copied the mark of plaintiff in verbatim by using same get-up colour scheme arrangement of the disclaimed parts in same manner and fashion. In the case of Sayed Engineering (2001 CLC 1368), it was observed that "where it can be established that the proprietor of the mark was using such words that were descriptive in nature for the period of time which eventually could be equated to a specified product, such may be at time treated as a mark of such proprietor". Injunction was granted. In the case of J.N. Nichols (Vimto) PLC (PLD 2000 Kar. 192) Mr. Justice Nazim Hussain Siddiqui, since elevated to the Honourable Supreme Court, (now Chief Justice of the Apex Court) in his usual lucid manner outlined the factors that may be considered while determining the similarity between two rival marks. In the case of Mehran Ghee Mills (Pvt.) Ltd. (2001 SCM R 967), procedure for determining the similarity or distinctiveness was laid down. It was further held that "it is not necessary that the mark ex facie has to deceive or confuse but its total impact upon a common purchaser is important". In the case of Registrar of Trade Marks v. Ashoe Chandra Rakhit Ltd. (AIR 1955 SC 358), while considering discretion vested in the Registrar Trade Marks and interference by the High Court in relation to disclaimer and registration of label as a whole, in para. 14 it was held "It is true that where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory rights to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole".
22. It appears that, the label of the plaintiff Annexure "D" to the plaint is a combination of alphabet "E" numerical 4 and 30/40, device of motor-cycle, in yellow colour scheme in a particular get-up and container, said label is not shown to be registered. Other label Annexure 'B' to the plaint appears to be registered as a whole, with disclaimer of various constituting components. Another label that is registered No. 83067 is Annexure Ail to the counter- affidavit, label shows use of alphabet "P" in a peculiar and prominent fashion, but without motor- cycle, it is registered as a whole, with disclaimer of various constituting components..
23. Monopoly or exclusively of a composite mark or label holder, like that of the plaintiff lies in the manner of arrangement of various component constituting the composite mark or label as a whole and not in its individual component. A proprietor of a composite trade mark or label, comprised of many parts, may it be in words , . Devise, colour scheme, get-up or any combination thereof, can only claim monopoly in the composite mark as a whole to distinguish his goods tram the others. A composite mark or label is not consist of each part but consist of combination thereof as a whole. Where a component of a label are shown either to be disclaimed, common to trade, nondistinctive or non-descriptive then, right to claim monopoly vanishes and disappear, unless it is shown that the label as a whole has been copied verbatim, as was the case in (Rio Chemical supra).
24. Whether a 'particular mark or any part thereof is common to trade or otherwise, is indeed a matter of fact and calls for evidence. The defendant could successfully resist injunctive claim, where the defendant prima facie demonstrate that the impugned, mark is in use of traders generally and is publici juris. In the instant case the defendant has produced .Number of photographs to show that other traders have invariable used different combination of various components of plaintiffs' label, each component are shown to consist of disclaimed, non-distinctive and descriptive parts.
25. Including, "E-4". And divide of motor-cycle.
26. Another feature that has engaged my attention is the advertisement that was carried out by the plaintiff in newspapers. Two newspapers were placed on record by the defendant namely daily 'Jang', Rawalpindi dated 24.1.1995 and daily Nawa-e-Waqat of Multan dated 24.1.1995. In said advertisement plaintiff have advertised their lubricating oil and have cautioned the public not to be deceived by similar name, plaintiff had emphasized that public should buy engine oil bearing "P" logo. Even alongwith the plaint plaintiffs have themselves annexed Annexures F/3, F/4, and F/5 and it was advertised "for best engine performance use "Petlubes Oil". Annexures F-13 and F-14 to the plaint are also the advertisement of the plaintiff lubricating oil, it carries caution that "before purchasing quality of Petlubes ensure to see hologram seal and computerize printing", It therefore, appears that the plaintiff were fully aware that the description "E-4" is being used and employed generally by their other business rivals and traders in the same trade, otherwise there was no need to caution the public in the manner noted above.
27. I had the benefit of seeing the original label and the containers of lubricating oil manufactured by the plaintiff and defendant both and have examined the same in the light of guiding principals laid down in N.J. Nichols (Vimto) PLC (supra) and Mehran .Ghee Mills (Pvt.) Ltd. (supra). It was noted that not only the shape and design of the container was different but also the colour scheme of the rival containers was different. Though both the labels/composite marks were comprised of common disclaimed, non:distinctive and descriptive features that were organized, arranged, placed and presented in different fashion, composition and colour scheme. Therefore, in my humbly opinion plaintiff was neither able to demonstrate any exclusively, nor distinctiveness nor non-descriptiveness in their label, rather features namely "E-4", or plus and or devise of motor- cycle, appears from material brought on record, to be commonly employed and sued by the lubricant traders. AS noted above, plaintiff's label is no consisting of each part independently but consist of combination and arrangement of various component in a particular manner and fashion thereof as a whole, which combination or arrangement of similar components is not shown to have been adopted by the defendant.
28. Plaintiff was neither able to show any distinctiveness in any the various components of their label including "E-4" or device of motor-cycle nor, any peculiarity that could distinguish their goods with other traders. Plaintiff also failed to bring on record any material to refute the defence material produced by the defendant through counter-affidavit. For the foregoing reasons, the plaintiff was not able to persuade this Court to obtain confirmation of the injunctive relief. It is for this reason the application of the plaintiff was dismissed vide short order dated 1.4.2004 and above are the reasons for the same.
29. C.M.A. No. 2056/2004, since ap being C.M.A. No. 1382/2004 under Order 39, Rules 1 and 2 has been dismissed learned counsel for the defendant does not press this application which is accordingly disposed of as not pressed. .