' AMIR HANI MUSLIM, J.---The appellant has preferred this High Court appeal impugning the order allowing the injunction application of the respondent No,1 in Suit No,637 of 2003 filed by the respondent No, 1.
2. The brief facts as they appeared from the pleadings of the parties are that the respondent No,1 filed Suit No,637 of 2003 in this Court against the appellant and respondent No,2 for perpetual injunction to restrain infringement of registered Trade Mark "MAAZA", passing off and for accounts of profits and/or damages in this Court.
3. It has been pleaded by the respondent No,1 in the plaint that the Company is organized and existing under the laws of United Arab Emirates and are engaged in the manufacture and sale of Beverages, Juices and soft drinks for the last six years and are marketing and selling their products under the Trade Mark "Maaza" in the Middle East, North Africa and South Asia. The respondent No,1 has pleaded that their Trade Mark "Maaza" under which their products are sold is recognized as of high quality. The respondent No,1 further averred in the plaint that prior to 1974 the Trade Mark "Maaza" was originally created/ adopted by their predecessor-in-interest, namely, Parle Exports Company Limited, Bombay, India. The respondent No, 1 /plaintiff acquired the Trademark "Maaza" by way of assignment vide agreement dated 8-10-1997 and prior to the assignment the sister concern of the plaintiff viz. Union Beverages Factory was granted franchises in 1974 as the sole bottlers and juices by Maaza Beverages Inc., New York, in cooperation with their predecessor-in- interest.
4. It was the further case of the respondent No,1 that in 1980 Trade Mark "Maaza" gained popularity and recognition in the Gulf and the Far East besides other countries of the world. It was averred in the plaint that the respondent No,1 directly and indirectly made great efforts to acquire international recognition of their products sold under the Trade Mark "Maaza". The respondent No,1 claims to have granted franchises to several business entrepreneurs in Jordan, Kuwait, Ukraine, Tanzania, Kenya and Syria to manufacture and distribute juices under the brand name "Maaza".
Due to the increased demand of the products manufactured and sold under the brand name "Maaza", the respondent No,1 established their own factory in Pakistan under the name "Maaza Pakistan (Pvt.) Limited" and shortly the respondent No,1 were to launch their product of juices in Pakistan under the brand name "Maaza". For the said purpose and to protect their proprietary rights in the Trade Mark "Maaza", the respondent No,1 obtained registration of Trade Mark "Maaza" vide Trade Mark Application No,1442298 in Class-32 for Beverages, Juices, Soft Drinks, which is valid and subsisting.
5. It is also the case of the respondent No,1 that by virtue of long, continuous and extensive use of Trade Mark "Maaza" they in the last five years earned US$48,444,445.11 from different parts of the world and acquired valuable reputation and goodwill and the Trade Mark "Maaza" connotes and denotes the products of the respondent No,1 exclusively and none-else. On or about 8-3-2003 it came to the knowledge of the respondent No,1 that the appellant by adopting identical Trade Mark "Maaza", colour scheme, lettering, etc. Is engaged in manufacture and sale of juices in tetra-packs, which is an imitation and copy of their registered trade mark, with the intention to benefit themselves of the reputation and goodwill of the respondent No,1. It was of further pleaded by the respondent No,1 that appellant have adopted the Trade Mark "Maaza" fraudulently with mala fide intent to deceive and mislead the Customers into believing that the products of the appellant were those of the respondent No,
1. Such action of the appellant, according to the respondent No,1, caused wrongful loss to them and wrongful profits to the respondent No,1, resulting in the respondent No,1 to approach this Court by filing Suit No,637 of 1997.
6. Along with the plaint, the respondent No,1 has also filed an application under Order XXXIX, rules 1 and 2, C.P.C. Seeking a restraining order against the appellant and the respondent No,2 from infringing respondent No, l's Trade Mark "Maaza" in respect of beverages, juices and soft drinks. The appellant filed a written statement denying and disputing the various averments made in the plaint besides the Counter-Affidavit to the injunction application of the respondent No, 1.
7. The defence of the appellant in their counter-affidavit and written statement was that they were prior user of the Trade Mark "Maaza" and were entitled to the use of the same irrespective of the registration of the respondent No,1 by virtue of section 25 of the Trade Marks Act. The learned Single Judge after hearing the parties was pleased to allow the injunction application of the respondent No,1 against which the appellant has filed the present proceedings.
8. It has been contended by Ms. Navin Merchant, learned counsel for the appellant, that the respondent had failed to make out a prima facie case as it was specifically pleaded by the appellant in para.4 of their written statement that the copies of the documents filed and relied upon by the respondent No,1 in the plaint were forged and fabricated documents. The learned counsel submits that in view of the fact that forgery and fabrication of the different documents were specifically pleaded by the appellant, the Honourable 'Judge should have refused injunction to the respondent No, I.
9. The learned counsel further submits that the appellant have superior right being prior user as the respondent No,1 was never in use of the trade mark in Pakistan and it was the appellant who were in use of Trade Mark "Maaza" since 1997. The appellant claims to have earned goodwill and reputation. It was further argued that no element of deception or confusion was on record, which could have warranted the Honourable Judge, in law, to grant injunction in the given circumstances.
10. It has been further argued by the learned counsel for the appellant that the suit preferred by the respondent No,1 was filed after a delay of 5 years when the appellant was already in use of the Trade Mark "Maaza". According to the learned counsel, section 21 of the Trade Marks Act extends exclusive right by registration subject to restriction provided under section 25. Of the Trade Marks Act, 1940, which includes the restriction of prior user of the Trade mark. In this connection the learned counsel has relied upon the case of Abdul Wasim v. Messrs Haico reported in 2002 CLD 1623 at page 1631 wherein it has been held by an Honourable Judge of this Court that exclusive right to use trade mark by virtue of registration is conferred on a proprietor in terms of section 21 of the Trade Marks Act are subservient to the exceptions provided under sections 22, 25 and 26 of the Trade Marks Act. According to the appellant's counsel exclusivity to use a mark recognized under section 21 however, does not affect the right of a prior user even if it was unregistered. The learned counsel therefore, submits that on the day of registration of the trade mark of the respondent No,1, the appellant was using "Maaza" and, therefore, section 21 of the Trade Marks Act, would not come in the way of the appellant. The learned counsel submitted that the injunction application was wrongly allowed by the Honourable Single Judge restricting the appellant from using the Trade Mark "Maaza".
11. According to the learned counsel for the appellant the appellant has invested billions of rupees towards the advertisement of the Trade mark through print and electronic media and the Honourable Single Judge while passing the impugned Order has overlooked the convenience of the appellant, which was one of the basic ingredients for granting injunction. It was further submitted that while granting the injunction the learned Judge has not given any finding on the question of deception and, therefore, the grant of injunction against the appellant was contrary to the established law. In support of her arguments, the counsel has relied upon the case of Shahid Mirza v. Merloni Finanziaria S.P.A. Reported in PLD 1991 Karachi 425 at 433 in which this Court has held that in case of distinctive mark within the meaning of the Act, right to the exclusive use thereof, can be acquired immediately on that mark being used as a trade mark i.e. Used by the trader in his business upon or in connection with the goods and it is not necessary to prove either the length of the user or the extent of the trade.
12. The learned counsel has referred to different documents placed before the Honourable Single Judge by the respondent No,1 which show that the trade mark of respondent No,1 was registered in different countries which according to the learned counsel was hardly a ground for the grant of 'injunction as the product of the respondent No,1 came to Pakistan after it was registered in 2002.
The learned counsel while arguing the scope of section 21 of the Trade Marks Act has cited the case of Formica Corporation v. Pakistan Formica Limited reported in 1989 SCMR 361 at 365.
13. The learned counsel for the appellant has thereafter referred to findings contained in the impugned judgment in regard to the passing off action and submitted that after holding that right in a Trademark created by prior use despite non-registration is superior right recognized under section 25 of the Trade Marks Act, 1940 and the Honourable Single Judge contrary to this finding had allowed the application of the respondent No,1 in spite of the fact that the appellant was prior user of the trade mark. It was submitted by the appellant's counsel that fact of infringement of the trade mark and or its registration is provided under section 73 of the Act. It was submitted that it was appellant who had popularized the Trade Mark in Pakistan and has for that purpose placed on record different invoices of sales tax to establish that the appellant was prior user. It was further submitted that the material produced by the appellant before the Honourable Single Judge was sufficient to reach the conclusion that the appellant was prior user of the trade mark and had superior right under sections 21 and 25 of the Trade Marks Act and, therefore, injunctive order impugned in these proceedings was bad in law.
14. Mr. Munawar Ghani, learned counsel for the respondent No,1, on the other hand, in reply, has submitted that the appeal has been filed by the Company through its Director who has not shown any board resolution in his favour authorizing him to prefer the appeal. Therefore, the appeal was filed by an unauthorized person and is liable to be dismissed on that score only. He in support of his contention has relied upon the judgment in the cases of Iftikhar Hussain Khan of Mamdot v.
Ghulam Nabi Corpn. Ltd PLD 1971 SC 550 and Bolan Bank Limited v. Baig Textile Mills (Pvt.) Ltd. 2002 CLD 557 at 559.
15. According to Mr. Munawar Ghani, the respondent No,1 is a limited company incorporated in United Arab Emirates and is engaged in the manufacture and sale of beverages, juices and soft drinks. It is further claimed that the respondent No,1 is the proprietor of Trade Mark Maaza. The respondent No,1 further claims that their Trade Mark Maaza was registered with United Arab Emirates, Saudi Arabia, Jordan, Kenya, Kuwait, India, Tanzania, Japan, Yemen, Lebanon and USA, copies of the registration certificates have been placed on record.
16. According to the learned counsel for the respondent No,1 the Trade Mark Maaza was originally created and adopted by their predecessor-in-interest, namely, Parle Exports Company Limited, Bombay, India, prior to the year 1974 which was acquired by the respondent No,1 by way of assignment. The respondent No,1, due to increased demand of their Trade Mark, have got incorporated a company in the name of Maaza Pakistan (Private) Limited Karachi. The respondent No,1 purchased plot, building and plant in Karachi after investing huge amounts. Learned counsel submits that the respondent No,1 had applied for registration of the Trade Mark Maaza on 1-7-1997 which after scrutiny by the Registrar of Trademark was advertised before acceptance in the Trade Mark Journal. He submits that in October, 2000, the Trademark of the respondent No,1 was advertised in the Trade Mark Journal, which was not opposed either by the appellant or by any other person within the stipulated time of two months. After expiry of the statutory time, the registration certificate was issued on 19-2-2003 under the provisions of section 14 of the Trade Marks Act, 1940, from the date of the application i.e. 1-7-1997.
17. According to the learned counsel for the respondent No, 1, the appellant had prior knowledge of the international reputation of respondent No, 1 's Trade Mark Maaza yet the appellant malafidely applied for registration of identical trade mark on 26-11-2001. The learned counsel disputes the ownership of the Trademark of the appellant. He submits that the application for registration of the trade mark by the appellant was subsequent in time to the application of the respondent No,1 and was made after advertisement in the Journal in October, 2000. Therefore, according to him no notice was required to be sent to the appellant as either on the date when the respondent No,1 has applied for registration of their trade mark in 1997 or when the trade mark of respondent No,1 was advertised no application of the appellant was pending. He submitted that the advertisement itself in the Journal was made to put on notice all such persons who are interested in opposing the application for registration of trade mark of a party. The appellant did not file any opposition to the application of the respondent No,1 for registration of the trade mark. According to the learned counsel the appellant therefore, cannot under the garb of Rule 23 of the Revised Trade Mark Rules, 1960 claims notice. In support of his argument he has relied upon the case of Abdul Qadir v.
Muhammad Azim reported in 1980 CLC 612.
18. Learned counsel further submits that the registration by the Registrar can be appealed against under section 76 of the Trade Marks Act. But the appellant has chosen not to prefer any appeal therefore, the respondent No, 1 's registration by the Registrar of the trade mark has attained finality and the same cannot be challenged in these proceedings.
19. On the question of delay in filing the suit after the respondent No,1 has made the application for registration of their trade mark in 1997, the learned counsel submitted that the registration certificate was issued on 19-2-2003 which fact was communicated by the letter on 24-5-2003. He therefore, submits that the suit by the respondent No,1 for infringement could only have been filed under the provisions of section 21 and that too after the respondent No,1 had been issued certificate for registration. The learned counsel submitted that the suit from which the present appeal emanates was filed by the respondent No,1 on 29-5-2003. The learned counsel further submitted that a suit for passing off was not filed as the goods of the respondent No,1 were not in the local market at the relevant time.
20. On the question of prior user as claimed by the appellant, learned counsel for the respondent No,1 has submitted that it was factually incorrect that the appellant was in use of the Trade Mark Maaza for its juices since March 1997. In this regard, he has drawn our attention to Form TM-1 dated 26-11-2001 of the appellant in which phrase "the mark is proposed to be used" has been mentioned.
He has further drawn our attention to the application dated 27-2-2002 on Form II of the appellant for registration of copyright in which it has been stated in Column 9 that "work being published in December, 2001." The different copies of the commercial invoices, sales tax, challans and statements, which the appellant has placed on record pertained. To the year 2002. Learned counsel submits that not a single document reflecting the sale of Maaza juice from the year 1997 to 2001 have been placed on record. According to the learned counsel for the respondent No,1, after the application/ Form TM-1 dated 26-11-2001 of the appellant in which the proposed intent to use of the Mark Maaza was mentioned and subsequent to the filing of the suit by the respondent No,1 on 29-5-2003 rectification of the use of mark was sought by the appellant on 31-5-2003 by applying on Form TM-16. According to the learned counsel, the appellant, on acquiring knowledge of the proceedings by way of suit against them for infringement by the respondent No,1, had made an application on Form TM-16 on 31-5-2003 with the request to amend the period of user from March, 1997 and this application of the appellant was allowed on the same day and on 2-6-2003 acceptance ordered and advertisement in the Trade Mark Journal had appeared. The learned counsel submits that the Registrar Trade Mark without following the procedure requiring the appellant to submit the proof of the period of user of trade mark since 1997; had allowed the application made on Form TM-16. The learned counsel submits that the very application on Form TM-16 was made by the appellant with the sole object to improve their defence of prior user of the trade mark in order to take advantage of the exceptions provided under section 25 of the Trade Marks Act, 1940.
21. Learned counsel submitted that an application for search certificate was also made by the appellant on 30-10-2000, which too was a procured document. In regard to the words "Poly Emoza Juice" used in the impugned order by the Honourable Single Judge it was submitted that there was no misreading of the document as this phrase has appeared on one of the sales tax invoices. In support of his contention he has relied upon the cases of Abdul Wasim v. Haico reported in 2002 CLD 1623; Durafoam (Pvt.) Ltd. v. Vohra Enterprises (Pvt.) Ltd. Reported in 2002 CLD 1639; Solo Susice National Podnik v. Sindh Match Works (Pvt.) Ltd. Reported in 1991 CLC 37 and S.M. Taufiq v. National Biscuit Company reported in PLD 1962 Karachi 355.
22. We have heard the arguments of both learned counsel and have perused the record. The points in these proceedings are whether the appellant was prior user of the Trade Mark Maaza and was entitled to the protection provided by section 25 of the Trade Marks Act, which is an exception to section 21 of the Trade Marks Act. In this connection, the appellant placed on record different commercial/ sale tax invoices as Annexures J-1 to L. Annexure J-1 which is sales tax invoice of 22-4- 2001 which reflect Poly and Maaza which has been misread as Polly Emoza in the impugned order.
However, such misreading has hardly any effect on the conclusion drawn by the Honourable Single Judge. Annexures J-1 to J-4 pertain to the period 2002 whereas Annexures J-5 to J-10 are the copies of different ledger entries of the appellant which pertain to the year 2002. Annexures J-12, J- 13, J-14, J-15 are four challan forms in the name of Collectorate of Customs, Central Excise, Peshawar, which do not mention the mark Maaza in it though these are the copies of challan forms which are of 1997-1998. Annexure K-1 dated 20-6-2003 is the copy of certificate issued by PTV in favour of the appellant which spells out that Maaza juice product was advertised on the PTV Network. Another certificate annexure K-2 issued on 3-6-2003 by an advertising, company shows that Maaza fruit juices were advertised during the year 2002. Then there is yet another copy of certificate L-1 which shows that Maaza packing material was prepared in February, 1997 to June, 1997. It appears that this undated letter has been procured through fax on 3-6-2003. Besides the aforesaid documents there was another copy of the invoice issued by Tetra-pack in April, 2002.
Except for the aforesaid copies of the documents there is nothing on the record in support of the claim of the appellant that they were prior users of the mark since 1997.
23. The appellant has failed to persuade us on the basis of the aforesaid material or on any legal plane that they were prior users of the Trade Mark Maaza. The application of the appellant in Form TM-1 dated 26-11-2001 clearly reflects that the appellant has stated for the proposed use of the Trade Mark Maaza. If this document of the appellant, which the appellant has never disputed, is accepted, then minimum that can be assumed was that on 26-11.-2001 the appellant were not in business of MAAZA juices and were not user of the said trade mark prior to 26-11-2001. This very document would belie all other material placed by the appellant inclusive of the Annexure L-1, which is a copy of undated certificate issued by Tetra-pack Company, which document appears to have been procured over fax on 3-6-2002. Additionally, the rectification application of the appellant on form TM-16, made on 31-5-2003 by which the appellant had sought amendment of the period of user from March, 1997 also is in conflict with the contents of the application made on Form TM-1 by the appellant on 26-11-2001. What is more intesting was the statement of particulars of the appellant which appears to have been submitted by them in support of application of copyright of the Mark "Maaza Mango Drinks" shows in Column 9, which requires mentioning of the year and country of first origin shows that the appellant has stated "being published since December, 2001 by the appellant company in Pakistan." This statement of particulars duly signed by the Director of the appellant further belies the stand of the appellant that they were prior users of the mark since 1997.
24. For the aforesaid reason we hold that the appellant, prima facie, have failed to establish that they were prior users of the Trade Mark Maaza since 1997 therefore, they cannot seek benefit of exceptions provided under section 25 of the Act.
25. The other point as to the grant of injunction to the respondent No,1 is concerned, the respondent No,1 has claimed to be owner of the Trade Mark Maaza and in support has placed on record material, which prima facie establishes its ownership. Under section 23 of the Trade Marks Act, the registration of the mark is prima facie evidence of validity in all legal proceedings related to a Trademark and the registered Trademark can be exclusively used by its owner as long as such registration under the Act remains intact. Section 54 of the Specific Relief Act provides that a registered Trademark is a property and its evasion can be restrained by injunctive order.
26. The law recognizes infringement of a registered trade mark if a party approaching the Court establishes its registered title besides the alleged infringement. The law does not recognize adoption of foreign trade mark by a local company, which in the present case the appellant had done. There is nothing on record which reflects that the appellant at any point of time were in the business of Maaza Drinks and were users of Trade Mark Maaza and the very material of the appellant which have been placed on record by the appellant do not support the stand which they have taken in the pleadings.
27. The respondent No,1 on the other hand has established his proprietorship and has also placed on record substantial material in order to prima facie show that they have all intent to use the trade mark as they have invested huge amounts and have established a factory in Pakistan. Hence the respondent No,1 has made out a prima facie case. The balance of convenience also rests in favour of the respondent No,1 as the appellant has failed to show that they were entitled to be allowed to use the Trademark of the respondent No,1 which is visually similar in appearance. In cases of the nature, if the injunction is not granted, the goods of the appellant are bound to create confusion and deception amongst the consumers resulting in wrongful loss to the respondent No,1, which the law does not permit. We are in respectful agreement with the conclusion reached by the Honourable Single Judge while passing the impugned order, which does not warrant interference by us in this appeal.
28. The observations, however, made by us in this order are tentative in nature and would be subject to evidence to be produced by the parties at trial and shall not prejudice either party at trial. This appeal for the aforesaid reasons is dismissed along with the listed application with no order as to costs.