1. C.M.As. Nos.526 of 2004 and 728 of 2004 ' S. ALI ASLAM JAFRI, J.--In this suit for permanent injunction, damages and rendition of accounts filed against defendant for infringement of trade mark and copyright of the plaintiff in respect of their product scented sweet (supari betel nuts) being sold in the market under the Trade Mark "Tasty GOLD", the plaintiff has filed C.M.A. No,526 of 2004 under Order XXXIX, Rules 1 and 2 read with section 151, C.P.C. And has prayed for grant of temporary injunction pending the decision of the suit to restrain the defendant, its agents, men, representatives and stockist from infringing and/or passing off and/or attempting to pass off and/or from enabling others to Infringe and/or pass of their products under the trade mark and label design GOLD Piece or any similar or close variation thereof in any manner whatsoever, being similar and/or deceptively identical and/or having some resemblance to the trade mark and copyright in "Tasty GOLD" belonging to the plaintiff, either on the products or the wrapper and packaging thereof. This application is also supported by an affidavit of Muhammad Aamir Sorathia attorney of the plaintiff to which counter-affidavit has been filed by the other side.
2. ' C.M.A. No, 728 of 2004 is an application under Order XXXIX, rule 4 read with section 151, C.P.C. Filed by. The defendant for recall of the ad interim order passed on 28-1-2004 at the time of issuing notice to the defendant for 30-1-2004 and extended from time to time through which the defendant was restrained from using the similar get-up, colour scheme and calligraphy for "GOLD" as that of the plaintiff, as the said defendant was facing heavy financial loss because the distribution of his product had been stopped. Clunter-affidavit to this application has been filed on behalf of the plaintiff.
3. ' By this order I propose to dispose of both these applications.
4. ' The case of the plaintiff as disclosed in the plaint as well as in the affidavit in support of the application for grant of injunction and the counter-affidavit to C.M.A. No,726 of 2004 is that the plaintiff has the exclusive right to sell her goods/scented sweet supari/ Pan Masala etc., under the trademark TASTY and had been selling such item since 1979. Initially such trademark was registered in the name of Hajiani Marium Bai from whom the plaintiff has purchased this business and the said trademark. In order to protect the exclusive proprietary right in respect of trademark TASTY the plaintiff has obtained registration of the said trademark under No,72151 in Class-30 in respect of "supari" etc. And the said registration is valid and intact for all intents and purposes since 12-7-1980. In order to secure proprietary right the plaintiff has also obtained registration under Copyright Ordinance, 1962 on 23rd April, 1999, and has been using and applying the said trademark in the course of trade in a very peculiar, distinctive and distinguishing label design having colour scheme, design, livery and/or get-up. In the year 1986 plaintiff adopted trademark GOLD for her high quality sweet supari and trademark GOLD is being used by the plaintiff in conjunction with the house mark TASTY in a very peculiar manner in the form of a wrapper/packaging with distinctive colour scheme, design, get-up and livery (hereinafter referred to as "Tasty GOLD"). The plaintiff has claimed that by virtue of said long use extensive and exclusive quality production she has acquired valuable reputation and goodwill and the goods manufactured by the plaintiff under the trademark and copyrighted "Tasty GOLD" are demanded by people within and outside the country.
5. Due to reputation and goodwill the trademark and copyrighted work "Tasty GOLD" has become synonymous with plaintiff's products in the course of trade "TASTY" or "GOLD" either alone or in conjunction with any other work or feature whether of plaintiffs manufacture or not is referred to as emanating from the plaintiff only. Very recently, plaintiff came to know that certain other traders with mala fide intention to reap profits out of the goodwill of the plaintiff and in order to cause wrongful loss to the plaintiff are manufacturing and selling inferior quality products being exact imitation of plaintiff's trademark and copyrighted work "TASTY GOLD" . Plaintiff made thorough market search and found that the defendant is using trademark "GOLD Piece" with exactly identical and deceptively similar packaging, design, colour scheme, get-up and livery and has also obtained cunningly registration with the Registrar of Copyright Karachi and such certificate has been issued to him on 10-1-2004 a day earlier to the filing of the opposition by the plaintiff. The plaintiff has stated that she has approached Central Copyright Board, Government of Pakistan, Islamabad and has applied for issuance of certified extract of the work so registered with other necessary details.
6. ' Under these circumstances, the plaintiff has prayed for grant of temporary injunction till the disposal of the suit on the grounds that being the owner of registered trademark and copyright there is strong prima facie case in favour of the plaintiff, and she shall suffer irreparable loss if the injunction is not granted. The plaintiff has further stated that balance of convenience is also in favour of the grant of injunction.
7. ' Counter-affidavit to this application as well as written statement has been filed by Zeeshan Farooqi proprietor of the defendant's firm denying and disputing the claim of the plaintiff. In order to dislodge the claim of the plaintiff the defendant has stated that label used by the plaintiff consists of descriptive matter. The word "Tasty" appearing therein is a descriptive word within the meaning of Trademark Act, 1940 hence no monopoly rights over the word can be conferred upon any party. It has been further stated that the Registrar of the Trademark while granting the application of the plaintiff for trademark registration has imposed disclaimer upon the word "Tasty" as such no exclusive right accrued to the plaintiff in respect of the word Tasty within the meaning of Trademark Act, 1940. It is further stated the trademark registration has been granted to the plaintiff in Class 30 in respect of "Tasty Label". Thus in the said registration the dominant feature is the word "Tasty" which stand disclaimed. The defendant has further claimed that his firm has obtained registration of its goods with a label under the Copyright Ordinance, 1962 and plaintiff has no legal right to claim the relief. No infringement has been committed by the firm of the defendant and it is not a case of passing off the goods of the plaintiff. It has been categorically stated that label of the product of the plaintiff bears the photograph of her brother/cousin which itself constitutes a distinctive feature, and it is evident even from a cursory look at the two labels. The defendant has further stated that he is using the name "GOLD Piece" label for last about one year, thus, the balance of convenience is also in favour of the defendant. He has further stated that his firm has already filed trademark application No,190934 on 1-1-2004 for registration of his trademark as "GOLD Piece". Legal plea regarding maintainability of the application has also been raised.
8. ' In rejoinder to the counter-affidavit while denying the case set up by the defendant, it has been stated that by the plaintiff that use of the word "GOLD" which is exactly similar and deceptively identical to the registered copyright, amounts to in management of passing off. Factum of disclaimer has not been denied but it has been stated to be unjustified.
9. ' Ms. Shazia Tasleem learned counsel for the plaintiff has mainly contended that plaintiff is engaged in the business of sweet scented ' supari (betel nuts) since the year 1979 and started using the trademark "Tasty" in the year 1980. Thereafter, the plaintiff adopted trademark of "Tasty GOLD" in the year 1986, and it has been. Registered with the Registrar of Trademark under No 72151 and 144394 in Class-30. She has further contended that the defendant has dishonestly adopted and undertaken the use of the mark "GOLD Piece" under a label design, which is identical and deceptively similar to that of the plaintiff. Learned counsel has referred to section 21 of the Trade Mark Act 1940 to justify the exclusive right to use such mark.
10. ' The factum of disclaimer has not been denied. However, in support of her case with reference to effect of disclaimer learned counsel has referred to the following passage from Para.13.10 of the book "Law of Trademarks and Passing off" by P. Narayanan (Fourth Edition):-- "Section 29(1) provides that the mark will be infringed when a rival trader uses not only a mark identical with the registered mark, but also a mark deceptively similar to it. The question will therefore, arise whether an infringement action will lie where the rival trader's mark is deceptively similar to the registered mark by virtue of similarity with the disclaimed portion alone. Questions will also arise whether in comparing the two marks the disclaimed portion should be completely ignored or whether any weight should be attached to its presence."
11. ' Learned counsel has therefore, urged that the plaintiff being the registered proprietor of the trademark "Tasty GOLD", has got the exclusive right to use the same in the course of trade and the defendant is infringing her right by using a label deceptively similar with the registered mark of the plaintiff, hence it is fit case for grant of temporary injunction till the decision of the suit.
12. ' Learned counsel for the plaintiff has further argued that by virtue of section 21 of the Trademark Act 1940 the plaintiff has got exclusive right to use the mark and under section 23 of the Act registration is the prima facie evidence of the proprietorship whereas under section 24 of the Act, after expiration of seven years from the date of such original registration, the original registration of the trademark shall be taken to be valid in all respects unless such registration was obtained by fraud, and according to the learned counsel there is no such allegation that the registration has been obtained by the plaintiff by fraud. Learned counsel has further argued that it took about five years to complete the process of registration of the mark in 1997 though the mark was advertised in the journal and neither any opposition was filed nor its registration was objected by anybody including the defendant at any time. She has placed reliance on J. N. Nichols (Vimto) PLC v. Mehran Bottlers (Pvt.) Limited PLD 2000 Karachi 192 to show that registration of a trade mark is prima facie evidence of its validity and plaintiffs were entitled to sue for infringement without being liable to prove user in circumstances. She has also drawn the attention of this Court to the test laid down in the said authority to assess the infringement and that where a strong prima facie case is made out in favour of the plaintiff, in such situation the balance of convenience goes into background. It was under these circumstances that injunction was granted in that case.
13. ' In order to show that section 21 of the Act confers an exclusive right to use a trademark to a person in relation to those goods and, without prejudice to the generally of the foregoing provision, the right shall be deemed to be infringed by any person who being not the proprietor or a registered user thereof uses a mark identical with it or so nearly resembling it to be likely to deceive or cause confusion in the course of trade in relation to any goods in respect of which it is registered, reliance has been placed again on Law of Trade Marks and Passing off by P. Narayanan (Fourth Edition).
14. ' With respect to the effect to disclaimer on the rights conferred by registration, learned counsel has referred to the case reported as Pakistan Drug House (Pvt.) Ltd. v. Rio Chemical Company and another 2003 CLD 1531 wherein it has been held that where one or more part of a mark are subject to disclaimer then what may be subject-matter of registration would be distinctive manner, get-up and colour scheme in which each of the constituting disclaimed parts or portions of mark were placed and arranged to give it the same distinction from the other mark using the same disclaimed part or portion of competing goods. With reference to the above cited authority, it was further argued that holder of registered trademark who had disclaimed any of the features of the mark either in word, device or get-up or where such feature was claimed to be common to trade whatever the case may be, may claim monopoly in the manner in which such mark, device, word or any combination thereof was put to use to distinguish his product from the others. Reliance has also been placed on Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. AIR 1955 SC 558 to show that every man has an exclusive right to name under which he carries his business or sale his goods to this extent at least that no one is at liberty to use the name for the purpose of deceiving the person or injuring the owner of the same. According to the learned counsel this view also finds support from the rule laid down in Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant 1987 SCMR 1090. It has, therefore, been vehemently urged that plaintiff being registered proprietor of trademark "Tasty. GOLD" has got the exclusive right to use the same in the course of trade.
15. ' To show that it is a case of passing off due to illegal adoption and use of a label design identical and deceptive or similar to the label design of plaintiff, reliance has been placed on Seven-Up Company v. Kohinoor Thread Ball Factory PLD 1990 SC 313 and Messrs Tabaq and Tabaq (supra).
16. Learned counsel has also drawn my attention to the definition of "passing off" which according to Black's Law Dictionary means "act or an instance of falsely representing one's own product as that of another, in an attempt to deceive potential buyers". With reference to rule of comparison, learned counsel has placed reliance on the cases of Messrs Mehran Ghee Mills Ltd. And others v.
17. Chiltan Ghee (Pvt.) Ltd and others 2001 SCMR 967 and Messrs Western Brand Tea, Karachi v. Messrs TAPAL Tea (Pvt.) Ltd. PLD 2001 SC 14. Learned counsel has further argued that copyright in respect of artistic work in label under word Tasty GOLD wherein the word GOLD is written in a stylized manner forming an important and prominent feature with peculiar colour scheme which is distinctive of plaintiffs product, the defendants are infringing the rights of the plaintiff in respect of the said label design by using the trademark word GOLD on their packaging in the same manner and under same colour scheme with features in the manner which forms an integral part of plaintiffs registered copyrighted work. The two labels and wrappers have been placed on record for comparison.
18. ' The plaintiff has, therefore, vehemently urged that there is not only a strong prima facie case in favour of the plaintiff but balance of convenience is also in her favour and the plaintiff shall suffer irreparable loss unless the defendant is restrained through an injunction as prayed.
19. ' In rebuttal Mrs. Navin S. Merchant learned counsel for the defendant has argued that no infringement has taken place as no renewal has yet been granted and as such the case-law cited by the learned counsel for the plaintiff with reference to disclaimer is distinguishable more particularly when exclusive right under section 21 of the Act in the cases cited by the learned counsel for the plaintiff was not subject to disclaimer. She has further argued that while granting the registration of "Tasty GOLD" the Registrar has imposed a condition of disclaimer that words, matters and features cannot be registered. She has referred to Registration Certificate Annexure D- 1' page 51 of the case file in which it has been categorically mentioned that "Registration of this trademark shall give no right to the exclusive use of word Tasty Gold letter H.P. And all other descriptive words appearing on the label". With reference to disclaimer as discussed by Naranayan in his above referred book. On Trade Marks and Passing off general principles as mentioned on page 187 are to be followed. Learned counsel has argued that despite phonetic similarity in the case of Coca Cola v. Koala Kola (1968) RPC 231, it was held that in an action of infringement while comparing the marks the Court should take into account any disclaimer subject to which the plaintiff's mark is registered. Cola was disclaimer being generic name. She has further argued that no one in the trade should be allowed to exploit or monopolize the marks and features commonly used by general public. Since no distinctiveness of the label was proved hence the Registrar has already concluded that the matters, features and words cannot be registered to the exclusion of others. Learned counsel further argued that no appeal was filed challenging the decision of the Registrar against disclaimer as provided under section 76 of the Act, hence the right to use the trademark material exclusively goes away.
20. ' Replying to the allegation of passing off, learned counsel has again referred to Naranayan who has laid down following three (3) principles of passing off which are often referred to as classical trinity i.e. (1) Reputation/goodwill; (2) Deception; (3) Damages, and that no claim can succeed in the absence of five (5) essential characteristics of a passing off action which are (i) misrepresentation, (ii) made by a person in the course of trade, (iii) to prospective customers of his or ultimate consumers of goods, (iv) calculated to deceive and (v) which causes actual damage to a business or the goodwill of the trader by whom the action is brought. Learned counsel has vehemently urged that the plaintiff has faired to bring her case within the ambit of the said requirements of law, hence no case for grant of injunction is made out, reference has been made to 1989 RPC 287 and 295. Learned counsel has further argued that in view of the facts of the case on record no evidence of sale of this item (Tasty Gold) has been filed and the plaintiff has relied only upon advertisement of tasty gold that too as late as in 2003. No evidence of goodwill and reputation has been filed, distinctiveness has not been proved, nothing has been shown that the defendant's use is causing harm or damage, and there is no evidence to show that the defendant has mispresented his goods to be that of the plaintiff and his use of the mark GOLD Piece has caused deception or confusion. Learned counsel has further argued that the defendant has neither copied the label as a whole, nor its essential features or any part thereof Plaintiff's claim on the special calligraphy of GOLD is not correct as the traders of supari are commonly using the features and other common words such as GOLD and other material to describe their goods. The use by the defendant is simultaneous. Learned counsel has further argued that in passing of cases the Court required a very high standard proof before it grants injunction in favour of the plaintiff. Certain elements such as (i) proof of false representation is necessary, (ii) property in the goodwill is protected therefore, the goodwill is to be established, (iii) proof of distinctiveness of the mark, (iv) confusion and deception is to be proved and (v) copying of mark per se is sufficient for infringement (without disclaimer) but not for passing off. Reliance has also been placed on CH. D.
21. The Dagenham Girl Pipers v. The Famous London Girls Pipers (1952) 69 RPC 1, in which case injunction was refused where there was no evidence of actual confusion. Same was the position in Coca-Cola v. Koala Kola (supra). Learned counsel has denied that any infringement of copyright has taken place as the defendant is using his own label, which is registered with Copyright Registrar and the plaintiff has stated that they will prefer rectification but once the registration is granted under the Copyright Law the same cannot be disturbed by impugning It before the Court particularly when Copyright Registrar has not been made a party.
22. ' I have heard the learned counsel for the parties at length and taken into consideration the material placed on record. The case-law cited at the bar has been given due attention.
23. ' The general principles laid down for grant of injunction are well-settled. Plaintiff seeking injunction has to show that there is strong prima facie case in his/her favour apart from the balance of convenience and that the plaintiff shall suffer irreparable loss if injunction is not granted. Indeed, there can be no cavil with the proposition of law as laid down in various authorities cited by the learned counsel for the plaintiff but it is well-settled principle of law that each case has its own merit and the law is to be applied keeping in view the facts of each case. The ratio decidendi in all the cases cited either from the plaintiffs side or the defendant's side clearly show that the very purpose of registration of trademark and copyright is to protect the interest of a person who has invented or prepared a particular item for sale to his customers under a particular trade name and has got registered a particular design or label under the Trade Marks Act or Copyright Ordinance as against a person who wants to take undue advantage of the same in order to deceive the unwary purchasers. In the instant case the material being sold by the plaintiff as well as a large number of other sellers under various names is an item of common use viz. Scented sweet supari (betel nuts). A number of wrappers and packaging material being used for sale of such material with the use of word GOLD such as Tasty Gold of the plaintiff, Gold Piece of the defendant, Diamond Gold of Ali Khan & Company, Sona Gold of Uroosa Products, Lipton Gold Sweet Supari of Farhan Products, Sanam Gold Sweet Supari of Jaker Products, Tara Gold Sweet Supari of Aziz Products, Jugnoo D Gold Bhuni Sweet Supari of Sunny Products, Khushboo Gold Sweet Supari of Star Confectionery Works, Jumbo Gold Sweet Supari of Hajiani Products and Jambo Gold Sweet Supari of Zeeshan Food Products have been placed on record by the defendant alongwith his written statement to show that word GOLD is being used by a large number of manufacturers of Sweet Supari or Scented Sweet Supari for last many years and the labels, wrappers and packets of each manufacturers are not identical, and appear to be different from each other though having some similarity in certain cases.
24. ' Indeed, the fact that so many other persons are illegally and unlawfully using identical wrappers, trade mark or labels, cannot be deemed to be a valid defence, but the fact remains that a look at the wrappers, packaging, colour scheme and calligraphy of the two labels being used by the plaintiff and defendant would show that the same are neither identical nor can be said to similar in all respects, and both appear to be distinctive from each other because the wrapper being used by the plaintiff has a peculiar colour scheme and calligraphy, it also bears the photograph of the brother or cousin of the plaintiff with a blue background which is an important distinguishing feature whereas the wrapper and label being used by defendant does not bear any such photograph. Word Tasty which find place on the wrapper of plaintiff in bold letters with a particular calligraphy and colour scheme is also not available on the wrapper being used by the defendant.
25. Moreover, the defendant has admittedly registered his design, label and packaging with the concerned authority against which no appeal has been filed by the plaintiff, hence prima facie the defendant has a lawful defence available with him to resist the prayer for grant of injunction.
26. ' Thus, I have come to a conclusion that there is no prima facie case in favour of the plaintiff to justify grant of injunction. Balance of convenience also does not appear to be in favour of the plaintiff who shall not suffer any irreparable loss if injunction is refused. Resultantly, this application is rejected and the interim on 28-1-2004 and extended from time to time is vacated. In this view of the matter application under Order XXXIX, Rule 4, C.P.C. Is also dismissed having become infructuous.