1. KHILJI ARIF HUSSAIN, J.---Plaintiff Messrs Al-Karam Textile Mills (Pvt.) Ltd. Filed suit for a decree of permanent injunction restraining defendants from infringing and or passing off their products under the Trade Mark and Trade name "Al-Karam".
2. Brief facts for the purpose of deciding the application under Order XXXIX, rules 1 and 2, C.P.C. Are that the plaintiff is engaged in the business of manufacturer, exporters, sellers and suppliers of textile products inter alia yarn, fabric, bed linen, made-ups, kitchen linen, garments, curtains and quilted bed spreads and like products since 1986. It is stated by plaintiff that he has come a long way since its inception, from a very modest scale it has grown from starting fabric manufacturing to an export of entire range of fashions and home textile products and in order to distinguish its superior quality products from those to the other traders, manufacturers and competitors the plaintiff used the number of trade marks inter alia Shabnam, Swiss Voile, Sana, Safina, Resham Linen, Super Cot etc. Either alone or in the conjunction with its house mark "Al-Karam" in a very distinctive and peculiar lettering style. The plaintiff obtained numerous registration certificates from the Registrar of Trade Marks including Trade Mark "Al-Karam" in Class 24 Registration No.91356 on 10-8-1986. It is alleged that due to high quality product under the Trade Mark "Al-Karam" the name of the plaintiff Al-Karam Textile Mills (Pvt.) Ltd. Commonly known as "Al-Karam Textiles" has now become a household name and stands as the symbol of quality and reliability thus enjoys envious goodwill and reputation. The plaintiff quality products are not only being highly recognized and demanded in local market but said products are largely exported to a number of countries (across ,the globe) inter alia Belgium, Canada, Finland, France, Germany, Greece, Holland, Italy, Korea, Middle East, Portugal, Russia, Spain, Sweden, Switzerland and USA:The name of the plaintiff Al-Karam Textile Mills (Pvt.) Ltd. Commonly known as "Al-Karam Textiles" over a period of time has become a household name acknowledged, appreciated, and recognized internationally beyond geographical boundaries of Pakistan not only the Pakistani individuals living abroad but also by the nationals of other countries and also among st the business and commercial circles. Exported sales of the plaintiff was under:--- Year Amount in Rs.
3. 1998 1,672,198,699 1999 1,936,798,817 2000 2,062,459,389 2001 2,516,687,75,8 2002 2,384,406,499 Total 10,572,551,163 That somewhere in February 2002 it came to knowledge of the plaintiff that certain unscrupulous elements with mala fide intention to reap profits out of the goodwill of the plaintiff in its trade- mark/trade-name "Al-Karam Textile" and with intent to cause wrongful loss to the plaintiff are manufacturing and exporting low quality product under the name and style as "Al-Karam Textile" in exactly identical and deceptively similar to the trade mark, tradesman and trading style of the plaintiff, i.e. Al-Karam Textile. The plaintiff made hectic efforts to ascertain the status of the said concern and to identify the - persons carrying on said business under said deceptive name but all efforts on the pail of the plaintiff proved futile. The plaintiff in an exhibition found displaying name as Al-Karam Textiles obtained a booklet/profile of the said concern from the said stall from where it was learnt that it is the defendant who are carrying said business under the aforesaid style infringing thereby the exclusive proprietary rights of the plaintiff in the trade name/Trade Mark "A- Karam" and or "Al-Karam Textiles". It is alleged that defendants have been approaching international buyers for business in a manner and style which is prejudicial to the plaintiff either directly or through the use of Internet and the defendant has developed and has been using a web address as www.Alkaramtextile.Com which web address of the defendants is identical and deceptively similar to the web address of the plaintiff i.e. Www.Alkaram.Com.
4. After service of the summons and notice of the 'listed application the defendant filed written statement and counter affidavit to listed application. The defendant stated in his counter affidavit that he has started his business of manufacturing and marketing of towels, bathrobes and allied items under the name and style of Alkaram Textile in the year 1985 and in support of his contention he filed NT No.10-44- 2515437 which followed by filing of the income tax return for the assessment year 1985-86, an application dated 19-11-1985 submitted to Director of Labour, West Division, Government of Sindh for registration of the factory under the Factories Act, 1934. The defendant firm was registered with the Chief Controller of Imports and Exports, Government of Pakistan vide Registration No. Export W.048795 dated 4-8-1986. It .Is the case of the defendant that his firm Al- Karam Textile was registered as exporter earlier than the plaintiff, which can be verified from the registration numbers. The case of the defendant is that defendant is using his name Al-Karam Textile since 1985 without any objection from any quarters and he acquired goodwill and reputation in his name. It is stated by the defendant that his firm manufacturing teriy, towels, bath robes, and allied finished goods for local exporter (indirect export) on contract basis and also exports the same directly to the foreign countries. The goods manufactured, sold and exported by the defendant bears the respective trade mark brand name of local exporters, importer and foreign buyers and defendant never applied/used and neither intend to use the Trade Mark "Al Karam" on his goods, however, defendant is running and doing business under the name and style of Al-Karam Textile since 1985 without any hindrance and made huge investment in millions of rupees in the said business. It is stated that the factory established by the defendant are in accordance with international standard and foreign buyers have certified the same before buying the goods from him. The defendant also gave sales figures for the last three years, which are as under:- Sales figures for the last three years.
5. Financial year. Indirect Export Direct Export Total Amount July 99 to June 00 27,743,851.00 10,755,149.00 38,499,000.00 July 00 to June 01 316,642,399.00 22,673,580.00 339,315,979.00 July 01 to June 02 350,202,777.00 49,861,864.00 400,064,641.00 July 02 to Mar 03 139,732,436.95 42,872,639.5 182,605,076.5 In para.22 of the counter affidavit defendant stated that he is doing business in the name and style of Al-Karam Textile without any hindrance is substantiated by the fact that the plaintiffs were doing business with him and they are selling the cotton yarn Random copies of the plaintiffs invoices and along with delivery notes were filed as Annexures D/87 to D/90. The defendant denied that the plaintiff is known as Al-Karam Textiles but if all known is as Al-Karam and the same has not become household name neither recognized internationally or in Pakistan as an exclusive mark of plaintiff. It is further alleged that the goods of the plaintiff and the defendant are totally different and fall under different classification of goods and under the defendant being prior user of the mark under the firm name Al-Karam Textile Mills defendants are entitled to use the same without any let or hindrance. Heard Mr. Khurram Gul Ghoury, learned Advocate for the plaintiff, and Mrs. Navin Merchant learned counsel for the-defendant. Mr. Khurram Gul Ghoury, learned counsel for the plaintiff, argued that since 1986 plaintiff has been trading under the name and style of Al- Karam Textile Mills (Pvt.) Ltd. And enjoying substantial reputation and goodwill. The plaintiff has been using the word 'Al-Karam' as its trade mark and it has become distinctive.For the plaintiff for a long time. The learned counsel argued that the plaintiff is a registered proprietor of Trade Mark Al- Karain and by the passage of time plaintiff by virtue of use also got exclusive right to use the said Trade Mark and trade name. The plaintiff came to know on receipt of query (Annexure PF/1) from one of its foreign clients about the dishonest adoption of plaintiffs trade name and Trade "Mark "Al- Karam" by the defendant and such adoption by the defendant.Is causing deception and confusion in the trade. The learned counsel further argued thdt the defendant is also copying domain name of the plaintiff www.A1-Karam.Com, while using domain www.A1-Karam TextileMills.Com which is also causing confusion and deception as both the parties are advertising for the same description of the goods. In support of his contention learned counsel for the plaintiff relied upon the cases reported in Messrs Chas A. Mendoza v. Syed Tausif Ahmed and 2 others PLD 1993 Karachi 790, Messrs Tabak Restaurant v. Messrs Tabak Restaurant 1987 SCMR 1090, Cluett, Peabody and Company Inc. v. Assistant Registrar of Trade Marks and another 1991 SCMR 921, National Detergents Limited v. Mod International (Pvt.) Ltd. 1993 MLD 590, The Welcome Foundation Limited v. Messrs Karachi Chemical Industries (Private) Limited 2000 YLR 1376, J.N. Nichols (Vimto) PLCA,Company Incorporated in the United Kingdom v. Mehran Bottlers (Private) Limited, Karachi PLD 2000 Kar. 192, Messrs Mehran Ghee Mills (Pvt.) Limited and others v. Messrs Chiltan Ghee Mill (Pvt.) Limited and others 2001 SCMR 967, Messrs Western Brand Tea, Karachi v. Messrs Tapal Tea (Pvt.) Limited PLD 2001 SC 14, Tekronix Incorporated v. M. Abdul Mannan PLD 1973 Kar. 14, ACER. Inc. v. ACER Computers 2004 CLD 1131, Messrs ADT SERVICES AG through Attorney and another v. Messrs ADT Pakistan (Pvt.) Ltd. Through Promoter and Director and 4 others 2005 CLD 1546, William Dimech v. Gofferodo Allesandro Chriten and another AIR 1931 PC 15, Messrs Kala Niketan Karol Bagh, New Dehli v. Messrs Kala Niketan, G-10 (Basement) South Extension Market 1, New Dehli AIR 1983 Delhi, 161, Lloyd's Bank Ltd. v. Lloyd's Investment Trust Company Ltd. 1912 :RPC 545 and 557, Unilever PLC A British Company of Port Sunlight Wirral Merseyside, England v. R.B. Oil Industries (Pvt.) Ltd. Karachi 1999 MLD 1447, Zafar Farooq v. Raja Dil Nawaz Khan 2000 YLR 2351, Kabushiki Kaisha Toshiba (also trading as Toshiba Corporation) v. Ch. Muhammad Altaf (trading as Murad Industries (Regd.) and another PLD 1991 SC 27.
6. On the other hand, Mrs. Naveen Merchant, learned counsel for the defendant, argued that the plaintiff applied for registration in the year 1989 and Trade Mark Al-Karam was registered in his name in 1993, but the plaintiff has not placed on record documents to show that he has been using said Trade Mark from 1989 and the documents, which have been placed on record about the 'use of such trade mark/trade name are from 1999 onwards. Learned counsel argued that the invoices (Annexures E/1 to E/36) pertain to local sale from 1999, whereas export invoices D/1 to D/36, pertain to years 2002 onwards. The learned counsel argued that the plaintiff has made a misstatement by saying that the plaintiff came to know about the trade name of the defendant in February, 2002 as the plaintiff used to supply raw material to defendant. In support of his contention she drew my attention to Annexures D/87 to D/90. Learned counsel further argued that the defendant adopted his Trade Mark Al-Karam in the year 1985 and since 1985 defendant is paying income tax and registered as an exporter with the Chief Controller of Exports. It is contended by the learned counsel that no one can claim exclusive right on the word 'Al-Karam' as it is a public juris and so many traders are using the same. Learned counsel argued that the defendant is suing its Trade Mark Al- Karam since 1985 and present application suffers from laches and is liable to, be dismissed on this sole ground. In support of her contentions she relied upon the cases reported as Indus Pencil Industries (Pvt.) Ltd. v.
7. Indus Copy House 1987 MLD 2073, AEG Telefunken Pakistan Ltd. v. Electric Concern Corporation 1985 CLC 155 and General Biscuit and another v. English Biscuit Manufacturers (Pvt.) Ltd. 2004 CLD 680.
8. I have taken into consideration respective arguments advanced by the learned Advocates for the parties. Perused the record and case law relied upon by them. From the perusal of record it appears that the plaintiff obtained various registration certificates from the Registrar of the Trade Marks including Trade Mark Al-Karam in Class 24, bearing Registration No.91356 on 10-8-1986, and in Class 25 on 16-12-1993. The A evidence for use of trade mark/house-mark Al-Karam given by the plaintiff are from the year 1999 and no evidence/document has been filed to show that prior to said date plaintiff was using the said trade mark. It is the case of the plaintiff that in February 2002 plaintiff came to know that defendants are carrying on the business under the name and style Al- Karam infringing thereby exclusive rights of the plaintiff in its Trade 'Mark/trade-name Al-Karam and/or Al-Karam Textiles.
9. On the other hand defendants' firm carrying on business using trade name Al-Karam since 1985 and produced various documents in support of his claim including Income-Tax Assessment for the year 1985-86, certificate issued by the Income Tax Officer Circle W8, registration under Factories Act, Export Certificate issued by the. Government of Pakistan Export Trading Controller No.W 049795.
10. It also appears that even plaintiff himself dealt with the defendants in the year 2000 and while dealing with the defendants under the trade name Al-Karam the plaintiff has not raised any objection that the defendants are infringing their rights and or that same may cause any confusion, deception in the mind of the general public. The exclusive right to use registered trade mark is conferred on proprietor in terms of section 21 of the Trade Marks Act, 1940, and such right is subservient to exception as provided under sections 22,, 25, and 26 of Trade Marks Act. A registered proprietor cannot restrain prior bona fide user of the trade mark in respect of identical or confusingly similar trade mark. Since the defendant is using Trade Mark "Al-Karam" prior in time to the plaintiff, plaintiff cannot on the basis of his registered Trade Mark restrained the defendant from using the same. If any case-law is required in support one can see the case of Abdul Wasim v. Messrs Haico through Sole Proprietor/ Partner and 2 others 2002 CLD 1623.
11. The plaintiff also is not entitled for grant of injunction due to laches. The defendants are using said trade mark much prior in time of the plaintiff and from year 2000 it was in the knowledge of the plaintiff that defendants are using Trade Mark Al-Karam while dealing with him, but he has not objected to D such use and now after almost about 20 years from the date of use of Trade Mark Al- Karam and at least three years. After having notice of such use (when date in 2000 plaintiff himself dealing with defendant) by the defendant the plaintiff is not entitled for grant of injunction on account of laches. In the case of Indus Pencil Industries (Pvt.) Ltd. v. Indus Copy House 1987 MLD 2073, learned Single Judge of this Court declined to grant injunction on the ground of delay in action for a period of 10 years. In the case of ,AEG Telefunken Pakistan Ltd. v. Electric Concern Corporation 1985 CLC 155, injunction was refused due to delay of about two and a half years. The defendant is in use of the Trade Mark "Al-Karam" concurrently from the last about twenty years and various documents have been placed on record in support of such use. The averments of facts stated on Oath by the defendant has not been denied by the plaintiff by way of filing affidavit-in- rejoinder till date. The defendant in his counter affidavit categorically stated that he is prior adopter of trade name "Al-Karam Textile" and doing his business under the name and style "Al-Karam Textile" since 1985 which is prior to plaintiff adoption and incorporation. The plaintiff and defendant are doing their respective business side by side continuously for the last over 16 years under their respective trade name and style and plaintiff has never objected the same. It is further stated that the plaintiff was aware of with the defendant's firm name as plaintiff was doing business and selling his goods to defendant's firm but plaintiff never objected to the same. The defendant further stated in his counter affidavit that his goods and plaintiffs goods are totally different from each other and that defendant has never used, nor is using and neither intended to use Trade Mark "Al- Karam Textile" on his goods as trade mark. These statements of facts on oath have not been denied by the plaintiff. For the foregoing reasons, plaintiff has failed to make out a prima facie case, and balance of convenience also lies in favour of the defendant so as to deny the defendant from using his trade name which defendant is using for last about 20 years will cause more inconvenience to defendant than to the plaintiff. For the foregoing reasons listed applications are dismissed.