1. C.M.A. No.2848 of 2004..
2. MRS. QAISER IQBAL, J.---The plaintiff has proceeded to file application under Order XXXIX, rules 1 and 2, C.P.C., praying therein that the defendants be restrained from infringing and/or passing off and attempting to infringe the products using the word SANTE or any similar or close variation to the plaintiffs trade mark either on the products or the wrappers in packaging thereof. The plaintiffs case is that they had established market of a small range of OTC products in Pharmaceutical Production for Sales. The plaintiff was supporting the medicinal community in education and information had engaged innumerable sponsor, manufacturing high quality of capsules for treatment of intestinal diseases, gastric and ulcer, selling the products under the trade name SANTE registered from the Trade Mark, Registry under No.131462 in Class-5 dated 20-8-1995 granted in September, 2002, the trade name/trade mark of the company was adopted by the plaintiff in the year 1995 and was ever used in Pakistan, after high level of research, quality control, superiority of products. Through advertisement in the generals., it transpired that the defendants had commenced the business under the name and style of SANTE International (Pvt.) Ltd., Karachi, manufacturing pharmaceutical medicines, sought registration of the Trade Mark word SANTE BLINK Fresh in English and Urdu under Application No.149109 Class-5, upon which the plaintiff had preferred opposition, which is pending before the Trade Mark Registry. The Trade Mark SANTE is similar and identical to the plaintiffs" famous and popular registered mark, which will cause confusion and deception amongst the consumers and general public. Mr. Irfan Khalil, the defendants authorized officer filed counter affidavit denied that through advertisement in the Trade Marks Journal, the plaintiff came to know about the business carried out by the defendants using the word SANTE on it's products since 1996. The word SANTE in the form of logo placed in distinctive manner with house mark which is also defendant's corporate name. Mr. Asif Misbah Khan, the authorized officer of the plaintiff, reiterated the contents of the affidavit filed along with application, pleaded that the defendants had made unqualified admission to the effect that word SANTE has been used by the defendants as a trade mark in the course of the business. Mrs: Shazia Tasleem, advanced the plea of infringement of trade mark and trade name by using the same for the purpose of promoting the business. The plaintiff had acquired registration of the Trade Mark " SANTE" for the medicinal used for gastric ulcer, granted in the month of September, 2002, infringed by the defendants, prima facie, the plaintiffs have succeeded to establish a case that the balance of convenience and irreparable loss shall be sustained by the plaintiffs, if the defendants are not restrained from using the trade mark in support of the above contention reliance is placed on:--
(i) Shahid Mirza v. Merloniziara S.P.A. PLD 1991 Karachi 425;
(ii) Multani Sohan Halva, Hussain Aghai Multan v. Registrar of Trade Mark 1987 CLC Karachi 1448; Messrs Burneys Industrial and Commercial v. Messrs Rehman Match Works PLD 1983 Karachi 357;
(iv) Maaza International Company L.L.C. v. Popular Foods Industrial Ltd. 2004 CLD 171;
(v) Pakistan Drugs House (Pvt.) v. Rio Chemical Company and others 2003 CLD 1131;
(vi) Tapal Tea (Private) Limited v. Shahi Tea Company 2002 CLD 1113;
(vii) A Meredith Jones & Co. v. Usman Textile Mills Ltd. 2002 CLD 1121;
(viii) Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant 1987 SCMR 1090; (ix)Cluett, Peabody and Company Inc. v. Assistant Registrar of Trade Marks 1991 SCMR 921;
(x) National Detergents Limited v. Mod International (Pvt.) Ltd. 1993 MLD 590; (xi)Abdul Hadi and 4 others v. Government of Sindh through Secretary Industries Department, Karachi and 3 others 1993 MLD 590;
(xii) The Welcome Foundation Limited v. Messrs Karachi Chemical Industries (Private) Limited 2000 YLR 1376;
(xiii) J.N. Nichols (Vimto) PLC A Company Incorporated in the Kingdom v. Mehran Bottlers (Private)
3. Limited, Karachi PLD 2000 Karachi 192 Mrs. Naveen Merchant, the learned counsel appearing for the defendants had contended that the word SANTE in the form, logo is distinctive in manner used by the defendants since 1996, for medicines listed in the plaint. It is urged that the - defendants are using the corporate name and logo without any let or hindrance. The company SANTE (Pvt.) Ltd., was corporated on 23rd September, 1996 and registered with copyright registration since 2001. It is next urged that SANTE is the common French word. Means "Health" used in the trade of medicine. The plaintiffs are not the inventor of the mark, it's public Juris and is commonly used in trade already registered with proprietors, no confusion or deception occurs in the mind of the general public on account of the similar trade mark used by the parties. Section 10(2) of the Trade Mark Act, 1940, provides for protection of concurrent use and simultaneous registration, Trade Mark SANTE used by the plaintiffs on its product would not debar the defendant, selling its products under the same name. The question for determination is whether the plaintiff has made out a prima facie case entitled to monopoly to use the word SANTE The 'plaintiff is proprietor of the registered trade mark, dealing in the pharmaceutical use for treatment of ulcer and gastric diseases, whereas the defendants have also been using the same trade mark registered for number of medicines manufactured and used. Section 26 of the Trade Mark Act, 1940 provides that no registration of the trade mark for bona fide use by a person for his own trade name without any mala fide intention. The basic elements requiring consideration in the circumstances of the case is, whether the defendants have been using goods of the plaintiff as of their own, has been made by the trader to it's customers, pretended the goods of the plaintiffs by causing calculated injury to the business or goodwill of the plaintiff, which may cause actual damages to a business and goodwill of the trader. The plaintiff claimed that their goods have acquired distinctiveness in the mind of general customers on account of the Trade Mark and Logo SANTE, the activities of the defendants are same as that of the plaintiffs. The goods associated in with the medicinal trade, will deceive and cause confusion to the public mind, on account of the prior user the defendants infringed the rights of the plaintiffs, on account of parallel use of the trade mark. Section 26 of Trade Mark Act, 1940 is equivalent to section 42 Trade Marks Ordinance, 2001 a proprietor of registered trade mark cannot prevent another from trading in his own name. In this context reliance is placed on:--
(i) The National Electric Fans Manufacture v. Muhammad Din & Sons Ltd. 1980 SCMR 97.
(ii) Indus Pencil Industries (Pvt.) Ltd. v. Indus Copy House 1987 MLD 2073.
4. Prima facie defendants have been using Trade Mark SANTE with their logo, on their medicines from the last 10 years. From the documents produced by the plaintiffs it is spelled out that they are engaged in manufacture and sale of one medicine used for intestinal, gastric and ulcer disease.
5. The plaintiffs had delayed the action for 10 years, the defendants had acted malafidely, it would be appropriate to maintain balance between the parties. Delay per se is fatal to the grant of injunction in case of parallel use of the Trade Mark SANTE by both the parties. On analysis of both the marks, it appears that the defendants medicines bears logo which creates, distinction between the medicines prepared by the parties distinctively. The defendants have produced ample documentary evidence (W-178) with written statement that Trade Mark SANTE was already registered in the name of Rowntree and Company Ltd. United Kingdom vide TM No.4319 in Class 5 undoubtedly word SANTE is purely descriptive word every one has exclusive right to use at. No document has been produced by the plaintiffs to prove confusion and deception. In view of the above discussion C.M.A. No.2848 of 2004 bears on merits hereby dismissed.