1. ' MAQBOOL BAQAR, J.---The above suit has been filed by the plaintiff against the defendants for declaration, injunction and damages. It is pleaded that the plaintiff-company, who are the world's leading direct marketers, develops a wide variety products including personal care, health and exercise equipment which it sells through direct response television advertising, direct response media as well as through authorized retailers. The plaintiff is the proprietor of the Trade Mark "Telebrands" and has been conducting their business under the said trade mark across the globe since 1991. The Trade Mark "Telebrands" was initially registered in favour of the plaintiff in USA on 14- 12-1993 and was renewed for a period of 10 years on 14-12-2003 in Class 42. Such trade mark is registered in favour of the plaintiff in various countries across the globe, such as Australia, Benelux, Brazil, Canada, China, Denmark, France, Great Britain, Greece, Germany, Iceland, India, Japan, Korea, New Zealand, Norway, Portugal, Singapore, Sweden, Switzerland and Taiwan. An application made by the plaintiff for registration of its trade mark in Pakistan on 23-10-2004 and in various other countries is pending. It is alleged that the defendant No,1 is a company specifically incorporated in Pakistan to encroach and violate the plaintiff s above valuable trade mark and as such has itself been named as "Telebrands Pakistan (Pvt.) Limited". It is stated that although the defendant No,1 has been incorporated as a private limited company but for all practical purposes the defendant No,1 is the sole proprietor of defendant No,2. It is further alleged that the defendants are involved in gross violation of the plaintiffs Trade Mark "Telebrands", misleading the general public and are dealing in counterfeit goods and have latantly sought to pass themselves off and their goods and services to be that of the plaintiff. It is claimed that the plaintiffs world-wide sales are in excess of US$ 80 million and its world-wide advertising expenditures is in excess of US$ 20 Million, whereas in Pakistan the plaintiff has appointed a distributor for its products with initial sales of US$1,90,000. It is averred that substantial advertising on television channels in South Asia by the plaintiff is beamed via satellite across Pakistan and consumers in Pakistan always recognized the Trade Mark "Telebrands" as that of the plaintiff. It is contended that it is world-wide recognition of the "Telebrands" name, its goodwill and international standing which has been painstakingly developed over the last two decades by the plaintiff, as well as the advertising spill over from its original advertising, which the defendants seek to take illegal advantage of by incorporating a company on 28-6-2004, which is illegally utilizing the plaintiff s trade mark and has moved an application for registration of the said trade mark in their favour on 28-3-2005 with the Registrar of Trade Marks. It is alleged that the defendants are illegally passing off their business and products as that of the plaintiff. Such products are not only being passed off as that of the plaintiff, but in many instances are blatant counterfeits. The defendants are unlawfully advertising their products and services in various media including internet and television and thereby confusing the Pakistani consumers and misleading them by illegal use of plaintiffs international trade mark. It is stated that so soon the plaintiff came to know of the defendant's illegal establishment of the domain name "Telebrandspakistan.Com" it instituted a complaint on 27-4-2005 against the defendants before the National Arbitration Forum of the Internet Corporation for Assigned Names and Numbers ("ICANN") and by its decision ICANN held, inter alia, that the disputed domain name was being used for telemarketing in Pakistan and other countries for sale of unauthorized versions of plaintiffs products and ordered that telebrandspakistan.Com domain name be transferred to the plaintiff.
2. After the above decision defendant No,1 on 8-6-2005 instituted a suit against the plaintiff in the Court of District and Sessions Judge, Islamabad and it was only after receiving the plaint in the said suit that the plaintiff became aware of the extent of illegal use of its Trade Mark "Telebrands" by the defendants, and of their unlawful activities within the territorial jurisdiction of this Court. It is alleged that through the above said suit the defendants have sought to mislead the Court of the District and Sessions Judge, Islamabad by making false representation on oath that the defendant No,1 was the registered owner of the Trade Mark "Telebrands", although section 102(1) of the Trade Marks Ordinance, 2001 prescribes a punishment of imprisonment for minimum one month extendable to six months or fine of minimum of Rs,20,000 or both, for wrongly representing an unregistered mark as a registered trade mark. When such misrepresentation was exposed in the written statement filed by the plaintiff, the defendant No,1 chose to avoid appearance in the said suit, which was thus dismissed for non-prosecution on 24-8-2005, whereafter the plaintiff, initiated urgent efforts to institute the present proceedings. It is submitted that the defendants have no right whatsoever to pass itself off or its products as Telebrands, however, in contravention of the plaintiffs exclusive proprietary trade mark, they are continuing to illegally use the plaintiffs long established and internationally acclaimed trade mark and are blatantly misleading the general public to make unlawful gains from the plaintiffs trade mark and are also offering counterfeit products of inferior quality, causing grave prejudice to the plaintiff and are damaging its trade mark. It is alleged that the defendant's illegal activities/passing off is being conducted across the country and especially at Karachi, being the largest commercial centre and market of such goods.
3. ' Along with the plaint, the plaintiff also filed an application under Order XXXIX, rules 1 and 2, C.P.C.
4. (C.M.A. No,7464 of 2005) for an order restraining the defendants from using the plaintiffs Trade Mark "Telebrands" and from advertising or marketing any goods under the said mark pending final determination of the suit.
5. ' The defendant No,2 in his counter-affidavit to the plaintiffs above application submitted that the defendant No,1 company is a commercial importer and is primarily involved in the business of health care and exercise equipment. It was further deposed that "Telebrands" Pakistan is the largest telemarketing DRTV organization in Pakistan and that the defendants create awareness of their products by telecasting infomercials explaining products, features and uses. It was deposed that the defendant No,2 applied for registration of its trade mark in the Trade Mark Office, Government of Pakistan through application dated 28-3-2005. He deposed that upon dismissal of their suit by the Additional District Judge-II, Islamabad on 24-8-2005 the defendant No,1 Company, on 23-9-2005, filed an application for setting aside the dismissal order on which notice has been issued to the present plaintiff. It was further stated that the defendants do not operate any office or sub-office at Karachi or in any other part of the country and that the defendant's only office is in Islamabad, who conducts its entire business from that office, hence this Court has no jurisdiction in the matter. It was claimed that the defendant's trade mark application is made in Class 42, whereas the plaintiffs has applied in Class 35 and that the defendants have also applied for registration of copyright on 22-10-2004, which also is pending. It was stated that at the time of establishment of the defendant No,1 Company the availability of name adopted by the company was confirmed by the Security and Exchange Commission of Pakistan and the proposed name was published in the newspapers before applying for trade mark and copyright registration and the registration process was initiated after decision that no company with the similar name exists. It was claimed that the defendants have advertised their business under its above name extensively since last many years and that the annual budget is about Rs,120 million and that the defendant's products are different from that of the plaintiff s products and that the logo colour scheme of the defendants are quite different from the plaintiff. It was further claimed that the defendants are running their business since many years and its advertisement, commercial and documentaries are being aired since long but the plaintiff never objected to the same and now when the defendants have earned good reputation due to extensive advertisement the plaintiff is trying to interfere in the smooth business of defendants and wants to encash the defendant goodwill. It was submitted that till date no advertisement, commercial and documentary have been aired by the plaintiff in Pakistani electronic and print media for its products and the defendants are the prior user of the trade mark in Pakistan.
6. ' During the course of arguments Mr. Zahid F. Ibrahim, learned counsel for the plaintiff submitted that it was merely to take undue and unlawful advantage of the plaintiffs excellent world-wide reputation that the defendant have registered itself with the name of Telebrands Pakistan (Pvt.)
7. Ltd., with a mala fide intent, to pass of its products as those of the plaintiff. Learned counsel further submitted that the plaintiff is advertising its products worldwide in various T.V. Channels, which are beamed and watched in Pakistan also. He submitted that not only the defendants are misusing the name "Telebrands" but some or its products are clear counterfeits of the plaintiffs products and even the graphics used by the defendants for promotion of such products are mirror images of the graphics used by the plaintiff to depict its products and even the spelling of the word "Telebrands" is the same as used by the plaintiff and the addition of geographic term 'Pakistan', does not distinguish the name from the plaintiff trade mark. He submitted that not only are some of the products themselves identical but they are advertised with identical pictures, description and uses and by offering such counterfeit versions of the plaintiffs products the defendants are intentionally diverting the plaintiff business towards them. The learned counsel submitted that it was in view of the above that the National Arbitration Forum, constituted pursuant to Uniform Domain Name Dispute Resolution Policy, adopted by Internet Corporation for Assigned Names and Numbers ("ICANN") on 24-10-1999, upon a complaint made by the plaintiff against the misuse of the plaintiffs trade mark by the defendants and after considering the defendants reply and examining the various aspects of the case ordered that telebrandspakistan.Com domain name be transferred from the defendants to the plaintiff.
8. ' On the other hand, the learned counsel for the defendant No,1 at the outset submitted that the plaintiffs suit is not maintainable as the defendants are operating only from its office in Islamabad and do not have any office in Karachi and as such this Court has not jurisdiction. He further submitted that since an application for restoration of the defendant's suit is pending before the Additional District Judge-II, Islamabad, proceeding in the present suit are liable to be stayed.
9. ' He submitted that the defendant No,1 company is a commercial importer, primarily involved in the business of health care and exercise equipment and that applications made by the defendant No,1 company for registration of its trade mark on 29-3-2005 and for registration of copyright on 22-10- 2004 are pending with the relevant authorities. He further submitted that the defendant No,1 company has been advertising its business under the present name since last many years. He contended that the logo and the colour scheme of the defendant No,1 Company's mark are quite distinct from that of the plaintiff, whereas till date no advertisement/ commercial has been aired by the plaintiff in the Pakistani electronic or print media for its products. He further contended that the defendant is a prior user of the trade mark name in Pakistan and as such the plaintiff has no right to seek an order restraining defendants from using the Trade Mark "Telebrands".
10. Insofar as the question of maintainability of the present suit is concerned, it may be noted that although the defendants have claimed that they are operating only from their main office in Islamabad and have no office in Karachi, however. They have not denied that the marketing and sale of their goods is being conducted by them through internet and various television channels which reach the consumers in Karachi and have also not contended that they do not supply/dispatch their goods to the consumers in Karachi. They have also not denied the fact that the various T.V. Channels through which they advertise their products and seek orders from the consumers are watched in Karachi or that they do not supply their goods to the consumers in Karachi, whereas the plaintiff in their plaint have specifically stated that the cause of action has accrued to the plaintiff in the present suit at Karachi, due to substantial illegal marketing and sale made by the defendants a t Karachi, including but not limited to widespread television/internet advertising directed at consumers in Karachi which assertion has not been rebutted by the defendants and as such the defendant's objection to the maintainability of the plaintiff suit; on the ground of lack of jurisdiction, is untenable and frivolous. Since at the time of filing of present suit the suit filed by the defendants before the Additional District Judge, Islamabad stood dismissed, the bar envisaged by section 10 of the Civil Procedure Code also not apply to the present suit. The plaintiffs suit is, therefore, maintainable and is also not I' able to be stayed..
11. ' The fact that the Trade Mark "Telebrands" was registered in favour of the plaintiff-company in USA on 14-12-1993, which registration has been extended for 10 years on 14-12-2003 and that the commercials and advertisements through various international T.V. Channels as well as internet are being watched and are accessible in Karachi has also not been denied specifically. It has also not been specifically denied that the plaintiff is marketing its various products I Pakistan and has made initial sales in the sum of US$ 190,000 in Pakistan. The defendants in using, rather misusing the plaintiffs Trade Mark "Telebrands" have used the same spelling of the word as used by the plaintiff-company, whereas addition of suffix 'Pakistan' does not substantially distinguish it from the plaintiffs trade mark. It rather creates an impression that the defendants are the Pakistani versions of the plaintiff-company and as such can more easily confuse an unwary buyer into buying the defendant's goods as those of plaintiff and thus the Trade Mark "Telebrands" as being used by the defendants is deceptively similar to that of the plaintiff and is certainly being used with an intent to mislead and divert the consumers to its website and to trade upon the plaintiffs goodwill associated with its name and Trade Mark 'Telebrands". In fact the defendants have themselves, in their plaint in the suit filed before the Additional District Judge, Islamabad claimed that the plaintiffs trade mark is so much similar to that of the defendants that the plaintiff has been passing of its goods as those of the defendants, thus the plaintiff is driving benefit out of the reputation and goodwill of the defendants and that the similarity in the name of the defendants and the plaintiff is such that it may cause confusion between the two marks and have on such ground sought an order restraining the plaintiff from manufacturing, distributing, marking or selling any goods similar to the goods of the plaintiff under the defendant's trade mark or from claiming to be the owner thereof and as such the defendants cannot now be allowed to say that their name/trade mark is clearly distinct from the trade mark of the plaintiff and does not confuse the buyer into buying the goods of the defendants as those of the plaintiff. Not only the defendants are using the plaintiffs Trade Mark "Telebrands", but it is crucial to note that at least two of its products namely, Air Press Massager and Tummy Trimmer are identical to those developed/produced and marketed by the plaintiff and even the pictures and graphics being used by the defendants for depicting, advertising and marketing the said products are in fact copies of such photographs, descriptions and graphics as used by the plaintiff and as such by marketing and selling such counterfeit the defendants are in fact further confusing the buyers into believing that the defendant's products originates from the plaintiff and as such the defendants are clearly infringing upon the rights of the plaintiff and are not only illegally diverting the plaintiffs customers/business to them but are also putting the plaintiffs goodwill into jeopardy.
12. ' Although, the defendants have claimed that they are marketing their products since many years, however, such claim is belied by facts that the defendant No,1 company has been established/incorporated as late as on 28-6-2004. There is no question of marketing any products by a non-existent identity. In this regard, it is crucial to note that the plaintiff has applied for registration of its trade mark on 23-10-2004, whereas, the defendants have applied for registration of the Trade Mark "Telebrands" in their favour on 28-3-2005 and as such, they cannot claim that they are prior user of the trade mark.
13. ' It was for the foregoing reasons that by short order dated 1-10-2005, I granted the plaintiffs application under Order XXXIX, rules 1 and 2, C.P.C. (C.M.A. No,7464 of 2005) restraining the defendants from illegal use of the plaintiff s Trade Mark "Telebrands" and from advertising or marketing any goods under the said mark till the disposal of the suit. It hardly needs mention that the order is subject to final adjudication of the matter to be made after recording evidence.