1. The appellant, through the present appeal, have assailed the order, dated 10-4-2001 passed in Suit No.42 of 2000, by a learned Single Judge of this Court, restraining the appellant from using, during the .Pendency of the suit, the word 'Crystal' in connection with a ball pen manufactured and marketed by the appellant. The brief facts of the respondent's case are that the respondent company is a pioneer in the business of manufacturing good quality writing instruments in Pakistan, which are sold under well known trade marks, such as, 'Piano'. 'Allegro', Tempo' and 'Piano Crystal' etc. And have since long been popular amongst a wide circle of customers, such as, student, office worker, executive and professionals. It is claimed that 'Piano Crystal' is amongst the most popular and reputed ball pens manufactured and sold by the plaintiff, with a distinctive shape design and getup and is being widely advertised and marketed throughout Pakistan and aboard. As a consequence of such wide sales and publicity the respondent's Trade Mark 'Piano Crystal', and its shape, design and getup, has come to be associated, by the trade and the general public, exclusively with the products manufactured and sold by the respondents. The respondents have also applied for registration of its Trade Mark 'Piano Crystal' which is pending with the Trade Marks Registry, Government of Pakistan. It is alleged that in or about December, 1999 the respondent came to know that the appellant had commenced sale of a ball point pen by the name of 'Image', not only the shape, design and getup whereof are almost, identical with that of 'Piano Crystal' but the packets containing the ball pen 'Image' bear the word 'Crystal'. The respondent immediately wrote to the appellant calling upon them not to market the ball pen, which was a ditto copy, both in getup and shape, of the respondent's ball pen 'Piano Crystal', as the same would result in passing off. In response, the appellant, through letter, dated 17-12-1999 denied the respondents' claim and refused to abide by their request. It was submitted that the Trade Mark 'Crystal' and the shape, design and getup in question are the valuable property of the respondents who are the originator and first user of the Trade Mark 'Crystal' and of the shape, design and getup in question since, 1989.
2. The appellants through their counter affidavit to the respondents' injunction application denied the various allegations of the respondent. It was denied that the plaintiff has the exclusive right to use the word 'Crystal'. It was contended that the appellant cannot be denied the user of the word 'Crystal' as 'Crystal' is a descriptive word, and is common to trade. It was claimed that the word/mark 'Crystal' was registered in Pakistan way back in the year 1966 by a well known international company. "Biro Swan" for their ball pens and in the year 1968, the word was registered in favour of a Japanese Company 'BIC'. It was pointed out that though the plaintiff claims to the exclusive user of the Trade Mark 'Piano Crystal' since 1989 but has applied for registration of the said mark as late as on 7-12-1999, whereas, defendant's application for registration of their Trade Mark 'Image' is pending before the Registrar of Trade Marks since March, 1999 and it was in fact a reaction to the appellant's application that the respondents moved for registration of the mark 'Piano Crystal'. .It was denied that the respondent have ever attempted to copy the shape/ design/getup/or the mark of the respondent or intended to cause any confusion or deception. It was contended that neither is there any phonetical similarity in the two names, nor are the plaintiff the only manufacturer of crystal body ball pens and that such pens are being produced/manufactured by "BIC", "Pilot" and "Uni" or Japan and that there is no possibility of anyone being deceived or confused into buying the ball pen 'Image' for the ball pen 'Piano Crystal' as the word 'Crystal' does not appear anywhere on the appellant's Pen, which only bears its name 'Image', which is printed on the clip of its cap and it is only to describe the transparent body of the pen that the word the 'Crystal' has been printed on its boxes, which boxes are different in colour from the respondents boxes. The two pens, it is claimed, are clearly distinguishable as unlike the respondent ball pen the appellant pen does not contain a coloured ball inside the top of it cap, indicating the colour of the ink in the pen. The other distinguishing features are the nib/cone of the two pens, the appellants being of blue and black colour and the respondents being neutral in colour. In their rejoinder, the respondent submitted that on the basis of long and extensive use of the Trade Mark 'Piano Crystal' without any let or hindrance since, 1989 the said trade mark and the shape of the said ball pen have become distinctive of the goods of the plaintiff, as there was no other similar ball pen in the market bearing the Trade Mark 'Crystal', as such, the plaintiff has acquired the right to use the Trade Mark 'Crystal' and the shape, getup and appearance of the ball pen 'Piano Crystal', whereas, the appellant on its own showing has decided in January, 1999 to adopt the name 'Image' and applied to register it on 2-3-1999. It was submitted that prior to the registration of the Mark 'Crystal' in favour of Biro Swan in 1968, a company known as Jhon Dickenson and Co. Ltd. Also registered the said mark in the same class, however both these registrations were not renewed. It was claimed that deception and confusion is likely to arise Between the plaintiffs and the defendant's products and there is sufficient documentary proof in support of the same. However, no such proof was filed or produced before the Court.
3. We have heard the learned counsel and also perused the record of the case. The respondents have alleged passing-off on the grounds, firstly, that the shape, design and getup of the appellant's pen 'Image' is almost identical with that of their pen 'Piano Crystal' and secondly, that the appellants have printed the word 'Crystal' on the boxes of their pen 'Image'. In an action for passing off the central question has always been as to whether the name or description given by the defendant to his goods is such as to create a likelihood that a substantial section of the purchasing public will be misled into believing that his goods are the goods of the plaintiff and that the defendant is selling his goods under the pretence that they are those of the plaintiff. The representation must be such as to cause confusion in the public mind between the defendant's goods and the plaintiffs goods. The impugned mark should be identical with the plaintiffs mark or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade in relation to the goods in respect of which it is used and the impugned mark is being used in such a manner as to render the use of that mark likely to be taken to import a reference to the proprietor of the mark or import a reference to the goods to which the proprietor is connected in the course of a trade. Keeping in view the above well-established principles laid down by. The Judicial Pronouncements, we would proceed to examine the case in hand.
4. No doubt, there is some similarity in the design of the two ball pens, inasmuch as both are barrel shaped, with round toped caps and both have transparent bodies and caps. However, the ball pen 'Piano Crystal' is clearly distinguishable from the ball pen 'Image' as the former contains a coloured ball inserted inside the top of its cap, indicating the colour of its ink. The other distinguishing feature is that the tip of the ball pen `Piano Crystal' is of yellow/golden colour, whereas, that of `Image' is of the colour of its ink i.e. Blue or black. Moreove, the pen 'Image' does not carry the word 'Crystal' and only its name `Image' is printed thereon, whereas the other pen prominently bears its name `Piano Crystal' on its body. Even otherwise, there is no novelty in the shape or design of 'Piano Crystal' as the barrel shaped pens are the commonest of all the pens. So far as the use of word 'Crystal' is concerned, in the first place, as noted above, the word is admittedly not being impressed upon the appellants' pen, secondly, the same being a descriptive word cannot be allowed to be monopolised by the respondent, more so for the reason that the respondents also are using the word to characterize the transparent bodied, version of their most famous yellow ball point pen `Piano'. This has been stated by the respondents in their brochure (Annexure-C/60 to the plaint), in the following words:- "Piano Crystal Article No.808 Piano Crystal characterizes the qualities of Piano, the most famous yellow ballpoint pen in Pakistan, with two exceptions, it's body is crystal clear and it has a 0.8 mm fine tip."
5. We have also compared the boxes containing `Piano Crystal' and `Image' ballpoint pens and found them to be clearly distinguishable as the former is of back colour. It bears on its top/upper side, images of a peacock feather, a broach like figure, and of the 'Piano Crystal' pen, carrying its name.
6. The words 'Piano Crystal', are also printed on the right side of the top in bold letters. One side of the box bears the name 'Piano' in large letter and the word 'Crystal' in small white letter, and also the name of the respondent company, with the text of their guarantee. The other side bears the same words and -text in Urdu, whereas, the box of the ballpoint pen 'Image' is blue in colour with coil shaped circular line printed all over. The name Image' is printed in bold letters on the left side of its top as well as on its sides under which name, is printed the word 'Crystal' in smaller fonte over a red strip.
7. The lower right side of the top bears the words '10 ballpoint pens'. The top/upper side also bears an image of the ball point pen 'Image', whereas one side of this box bears the name 'Image' and the word 'Crystal': which word is printed on a red strip and the other side, in addition to the name 'Image' and the word 'Crytal' over a red strip, also bears the name of the appellant. It can thus be seen that there is absolutely no element of any confusion or probability of the buyers being deceived into buying the ball pen 'Image' for the ball pen 'Piano Crystal' or as a product of respondents. We have perused the following judgments relied upon by Mr. Khawaja Mansoor.
8. Though we respectfully agree with the judicial principles enunciated/reiterated therein, but as the following review would reveal, the said cases are dearly distinguishable from the instant. In the case of Zakauddin v. Muhammad Zahid and 2 others (PLD 1993 Karachi 766), where the appellant was, since 1985, selling shampoo under his registered Trade Mark 'BioAmla' in black colour bottles, with a label, design, layout, colour scheme and getup in a particular style, registered under the Copyright Act. The bottle also bore the appellant's registered house Mark 'Forvil'. However, respondent No.1 who was the real brother of the appellant had started manufacturing, selling and offering for sale his shampoo under the brand name 'Super Amla Shampoo' in an identical bottle. It was found that the respondent had virtually adopted the appellant's labels and that the phonetical difference between the two words 'New Forvil' and 'Farvil' used by the plaintiff and defendant respectively is imperceptible. In the case of The Sanitas Company Limited v. Condy (RPC 4 1987 530). In 1876, a partnership firm, trading as the Sanitas Company, begun to apply to antiseptics and disinfectant; in which they dealt, the word 'Snaitas' and in 1877 they registered, as a trade mark for chemical substance used for sanitary purposes, a device consisting of a fir tree within a garter, on which were inscribed the words 'Sanitas Sanitatis Omina Sanites". In 1878, the Sanitas Company (limited) was formed, for the purpose of taking over, and did in fact took over, the business, patent, and trade mark of the said partnership firm. The said company continued to apply the name 'Sanias' to all articles of its manufactures. In 1883, the company adopted and registered for deodorants, disinfectants, and antiseptics, a ' trade mark, consisting of a device of a eucalyptus tree surmounting the words `Sanitas', On the first of January, 1884, the company registered the word Sanitas' alone as trade mark for its aforesaid product. The plaintiff became aware in 1885 that the defendant was trading under the style of 'The G. Condy's Santitants Co., and was offering for sale George Condy's Liquid Sanitant, the bottle having trade mark of a sun in a slpendour with a circle, on which were the words 'Omnia Condi-Sanitants' printed. In 1886, the plaintiff discovered that the defendant was largely ~ advertising a new disinfectant under the title of 'Condi Sanitas'. In 1886, the company commenced an action against George Condy, trading as The G. Condi Sanitas'. In The company commenced an action against George Condy, trading as The G. Condy's Sanitants Co.' and The Condisanitas Co., and moved for an injunction to restrain the defendant from infringing their registered Trade Mark 'Sanitas', or any other registered trade marks of the plaintiffs and from selling or advertising any disinfectant or antiseptic preparation under the name of 'Sanitas' or 'Sanitant', either alone or in combination with any other words. The defendant's counsel did not call any witnesses, but argued that it was proved by the cross-examination of the plaintiffs witnesses that the defendant's disinfectant was different in colour and composition from that of the plaintiffs goods and were offered for sale in a manner totally different from that in which the plaintiffs' goods were offered for safe, and that no actual deception or probability of deception had been shown. Mr. Justice Kekewide of the Chancery Division, having come to the conclusion that:-- "it is either admitted or proved that the plaintiff company has a trade mark registered in different forms, but substantially 'Sanitas', and that by means of that word, with or without certain additional words and figures, the plaintiff company has established a considerable business; has, in fact, to use the phrase which will be found in many cases, established a vendible article in the market", held that "That being so, the plaintiffs are entitled to have the trade mark protected; and, farther than that, they are entitled to have their business protected to this extent, that if any person has used the words which they employ so as to pass off, or so as to tend to pass off, the goods of that other person as the goods of the plaintiffs, then the plaintiffs are entitled, apart from their trade mark, to insist that should be restrained". The learned Judge whilst referring to a quotation from the case of Lever v.
9. Goodwin, in the following words:--"there may be no monopoly at all in the individual things, but if they are so combined by the defendants as to pass off the defendant's goods as the plaintiff, then the defendants have brought themselves within the old common law doctrine, in respect of which equity will give to the aggrieved party an injunction in order to restrain the defendants from passing off their goods as those of the plaintiffs." Further held that "Now in this particular case there is one of the individual things which belongs to the plaintiffs, the word 'Sanitas' and those goods which are advertised as `Sanitas'. That remark does not apply to 'Sanitant', and those goods which are advertised as 'Sanitant', but it does not 'Condi Sanitas'. Therefore, as regards Condi Sanitas. I have a case stronger than that pointed out by the Lord Justice, because, not only have I a combination, but I have in that combination one individual thing which is a monopoly of the plaintiffs'. It was further held that 'it is quite open to the defendant to sell a disinfectant or deodorant, and to manufacture it, and if he can produce precisely the same article he is perfectly at liberty to do that; and he may call it by any name he likes which is his own, but having not only the English language before him. But every language, living or dead, to choose were he pleases, he will take up the Latin word `Sanitas'; and to my mind the very choice is a distinct indication of fraud.
10. He is perfectly aware, and I must take him to be aware, that 'Sanitas' was appropriated by the plaintiffs; and why on earth he should not have taken some Greek, French, Italian or any other word, and called his mixture or compound by that other word, unless he desired to pass his goods off as those of the plaintiffs, it is beyond my ingenuity to conceive."
11. "To my mind whether it is `Condi Sanitas,' or `Sanitanf, it being a compound intended for the same purpose. I must come to the conclusion, and I think any ordinary juryman would come to the conclusion, that he has gone as near as he thought he safely could, with the intention of cutting out the plaintiffs, and cutting them out dishonestly that is passing off his goods as their. That is my distinct conclusion on the evidence: and to say that he has put his name and has not used a yellow label, only goes to show that his impudence was not so great as some fraudulent persons sometimes exhibit. I have not the slightest hesitation in granting to the plaintiffs the injunction which they claim', and, of course, with costs."
12. In the case of Messrs K.S. Sulemanji Esmailji and Sons v. Messrs M. Sulemanji and Company Ltd.
13. (1986 CLC 775), the plaintiff and defendant were in the business of manufacturing and marketing Macaroni, Spagheti and Vermicelli etc. The. Plaintiff was manufacturing and exporting Macaroni.
14. The grievance of the plaintiff was that thdefendant recently started using packets and cartons with marks including getup and colour scheme of the plaintiffs packets or cartons of registered Trade Mark 'Cock-Macaroni' by making alteration in their packet of Mark `Crispo Macaroni' by replacing the earlier device of 'Corn Spike' with the device of 'Cock' on their label and exported large .Quantities in such cartons to Saudi Arabia. It was contended that the adoption of the plaintiffs mark, getup, colour scheme and device or figure of 'Cock' by the defendants is dishonest and intended to cash on the goodwill and reputation of plaintiffs trade mark. The controversy was dealt by a learned Single Judge of this Court in the following words:-- "The question that has got to be answered is whether the printing of 'cock' by defendants on the carton though in different colour and different position, would be tolerable in the situation of the case? The answer was offered by the learned counsel himself when I put to him the following question:- Suppose a housewife in the Gulf State sends some one to the market to buy for her the 'Cock' brand Macaroni. How the servant would address the shopkeeper for the purchase of this stuff?'
15. The answer of the learned counsel was plain and to the point and it was the messenger would say to the shopkeeper give me Cock Macaroni. Once the packet is handed over to the buyer with the figure of 'Cock', it is difficult to visualize that this purchaser would enter into arguments with the shopkeeper that he wants the other brand and not the one which has been handed over to him. Moreover the unwary purchaser or consumer for that matter would usually go by the description of the goods rather than meticulous details of each packet particularly in a situation' when the colour scheme, the get up and printing on the sides of the packet are so identical and they are so close in resemblance that a man possessing ordinary intellect would hardly be able to distinguish between the two. The packets are usually stocked in the stores in such a position that only sides of the rectangular box are visible to a customer. When these two sides are compared, one can see the placement of 'Cock' right on the right hand side of the packet in the white background within a circle. The words 'Cock' and 'Crispo' are in red ink and below these words in 'Macaroni' in green ink.
16. This itself shows that at the first glance the customer would point his finger to the box and ask for the stuff without being conscious that he is taking away. One stuff and paying for another. I am deliberately avoiding comparison of the colour scheme, the getup, the size, the print of the words, the three colours employed on the packets, the descriptions of the goods in small letters on the packets of each party. But I cannot avoid examining and commenting upon dominating appearance of 'Cock' in a white circle not only in figurative position but also in description contained in a rectangle with the word 'Cock' appearing in red and 'Macronf in green ink. Now looking to the packet of the defendants we find that the position of the 'Cock' is in the circle in the white background, the word 'Crispo' is in red and `Macronf is in green. These two words are set in a diamond shape .Instead of a rectangle as in the case of the plaintiffs. When placed in juxtaposition the two boxes would look like twins bearing close similarity with each other. Piracy of a design or a trade mark is possible in a number of ways. In some cases it may be by visual representation. In others by employing expression which when pronounced sounds in the same tones. Still in others some sign, symbol or mark may become a pass word and the goods carrying this device may be described by mere mention of such devoice. 'Quaker Oats' carrying figure of a maid on the tin or; a 'Robin' on a packet of blue or camel on a cake of soap, or a white horse on a bottle of whisky, are some of such examples where goods are demanded by the customers by the description of these marks and a customer of an average intelligence when offered the merchandise with the imprint of these marks closely resembling those, hardly investigates other writings or descriptions printed on the packets. Indeed there may be customers who are not even literate and they would only depend on the popular name under which the goods are sold with a causal look on the packings answering those names.
17. In this view of the matter if a customer in Saudi Arabia or in the Gulf no fully familiar with the English language simply asks for 'Cock' brand Macaroni and is handed over the 'Cock' brand of the defendants instead of the 'Cock' brand of the plaintiffs, it is possible hat he would quietly walk off after paying the money little realizing that the 'Cock' ( ) on one packet is different from the othei."
18. The learned Judge referring a judgment reported in 1981 CLC 1519 further held that:-- "In the present case also dissimilarity in the two boxes of `Macaroni is too- insignificant as compared to large number of similarities including colour scheme, size, colour and sizes of the letters of descriptions and the last but not the least the figure and word 'Cock' printed on the packets."
19. In, the case of Muhammad Fazil v. Messrs Ashfaq Brothers, Karachi (1981 CLC 1519) where the plaintiff was manufacturing and marketing 'threads' under the Trade Mark 'Everredy' and numerals '999' with a certain design, layout, getup and colour scheme, registered under No.64794 since 28th October, 1976. The defendants applied for registration of a trade mark comprising 'Everlife' and numerals '990'. The plaintiff filed a suit, opposing registration of the trade mark applied for by the defendant and the trial Court granted interim injunction on the ground that in that case number zero and the word Life in the trade mark label of defendants in the suit are not the only dominant features but also the getup, colour, shade and phrases used in Urdu and Sindhi as well as monogram, which are similar to the Trade Mark of plaintiffs in the suit, providing close resemblance between two which makes likely deception and confusion in the mind of unwary purchasers. The learned single Judge of this Court in an appeal filed against the said order held as follows:-- "I have carefully examined and compared the two labels in dispute marked A and B on this file. The size of both is same. Both the box covers to carry 12 spools. Colour scheme is same i.e. Red on top, yellow in the middle, then green and blue at the bottom. Designing, printing and the sizes thereof are almost same. Words and letters are of the same size. 'Everready' and Everlife' are printed in white against the background of blue with '999' and 990' in an egg like circle in the background of black. In the middle are printed words Brand. Mercerised sewing thread in very similar manner.
20. Then there is a small triangle containing monograms with different letters of AB and FB and at the bottom names of manufacturers. On both sides are printed in Sindhi and Urdu almost the same words 'neat, clean and strong thread for stitching'. The only difference between the two is that one is 'Everready 999' and the other is 'Everlife 990' so the difference in reading is 'Life' instead of 'Ready' and '0' instead of '9' and of course the small letters in monograms and namesof manufacturers. On very close scrutiny it can be found that colours in 'Everlife' lable are just a little shade lighter. From this comparison, I have formed the opinion that both labels are very closely similar and can cause confusion and deception in the mind of unwary purchasers. "I am of the opinion that the two labels are very similar to each other and are likely to cause deception and confusion in the minds of the unwary purchasers. For these reasons, I hold that the learned Additional District Judge has rightly granted interim injunction and there is no merit in this appeal which is hereby dismissed with costs."
21. In the case of Insaf Soap Factory v. Lever Brothers Port Sunlight Ltd. (PLD 1959 (W.P.) Lahore 381), it was held that in a case of infringement of trade mark the test is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trade mark as the goods of the owner of the trade mark. In the case of Jaima Industries Ltd. v. Caltex Oil (Pak.) Ltd.
22. And another (PLD 1984 SC 8), the appellant, Jamia Industries Ltd. Applied to the Registrar of Trade Marks for registration of a mark containing the word `Jamia' with the device of a five pointed stars inside a crescent, in class 4, for lubricating oils. Respondents Caltex Oil (Pakistan) Ltd. Opposed his application on the ground that they were proprietors of two trade marks, one with the word 'Clatex' and a star device (duly registered at No.20665 on 21-9-1953) and the other mark containing the device of star and letter* T and the words 'TEXCO' (duly registered at No. 3029 on 30-12-1948), both for the same goods in class 4. The Deputy Registrar by his order, dated 27-4-1967 upheld the opposition of the respondent under sections 8(a) and 10(1) of the Trade Marks Act and refused the registration of the appellant's trade mark. The case of the respondents in support of their objection was that the star device distinguished their goods and has been associated with their house mark 'Caltex' and that their house mark had commenced since, 1937 in pre-partition India and since, 1948 in Pakistan. On the other hand the appellant controverted the opposition case on the ground that their mark was primarily the word 'Jamia' and the device of crescent and star was generally used by Muslims, which therefore, does not necessarily indicate any intention of deception on their part. After considering the evidence adducted by the parties, the learned Registrar, after comparing the two marks, come to the conclusion, 'that the device of star is common prominently in both the marks and though the distinguishing character in applicants' mark is the use of the word Jamia, when I see the whole. I confess that the dissimilarity is not enough to make the wholes dissimilar. Accordingly my view is that appellants' mark is not entitled to registration. The learned single Judge in the High Court taking note of the well established principles 'that the making comparison of the two marks, emphasis should be laid on their leading features' and held as follows:- "If we take this trade mark and compare it with that of the appellants, then the irresistible conclusion would be that the dominant and essential feature of the two marks is the five pointed star in outline, and this being so, there is every probability that the two marks will be confused with each other, as also the goods marketed under each mark. Even with regard to the first trade mark of the respondents, that is the one bearing No.20665, in which the whole star is coloured, the view may be taken, in the circumstances of the present case, that this mark bears resemblance to the proposed mark of the appellants in that, both the devices the five pointed star is shown surrounded by a circle. I have already stated that the appellants five pointed star is within a crescent, but this crescent is, in fact, a circle. One feature, therefore, would be common between the respondents'
23. Trade Mark No.20665 and that proposed by the appellants, that is, in each case, the five pointed star is surrounded by a circle,' and dismissed the appeal."
24. The Hon'ble Supreme Court in an appeal filed against the judgment of the High Court, enunciated the following principle:- When the question arises whether a mark applied for bears such resemblance to another mark as to be likely to deceive, it should be determined by considering what is the leading characteristic of each. The one might contain many, even most, of the same elements as the other, and yet the leading, or it may be the only, impression left on mind might be very different. On the other hand; a critical comparison of two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart . At different times might be the same.
25. Thus it is clear that a mark is infringed if the essential features, or essential particulars of it, are taken. In cases of device marks, especially it is helpful before comparing the-marks to consider what are the essentials of the plaintiffs device; with word marks, the Court is apt to be more impressed by the danger of giving the plaintiffs what amounts to a monopoly in large class of words.'
26. It was held that Deputy Registrar and the High Court proceeded on well recognized principles governing the question whether the proposed mark resembled the respondents marks already on the register so as to be likely the device or cause confusion, and after comparing the two marks further held, that an examination of the overall circumstances concerning the rival marks would also yield the same result that the similarities are so striking that an unwary purchaser would be exposed to reasonable probabilities of confusion and deception that the goods of the appellant carrying the proposed trade mark had their origin from the respondents. It was further observed that it is well recognized that the same test is more stringently applied in cases of infringement or passing-off, but a weaker case than would entitle a plaintiff to succeed in action for infringement will enable an opponent to object successfully to the registration of a new mark and dismissed the appeal. In the case of CECIL De Cordova and others v. Vick Chemical Company (PLD 1951 PC 108), the dispute was in respect of two trade marks registered in the name of respondents, and bearing Nos. 1852 and 3707 respectively in Jamaica. Their Lordships whilst dismissing the appeal held the appellants' liable for infringement of the respondent above trade marks by the sale in Jamaica of certain jars of ointment styled `Karsote Vapour Rub' and for passing off these goods as the goods of the respondent. The primary issue involved was the status of the word 'VapoRub'. The word formed a part of Trade Mark, 1852 and was the whole of Trade Mark 3707. The word was coined by an American Druggist to form trade appellation of one of those medicated ointments which he had then been manufacturing for some years. In 1915 the word Vaporub' was registered as a trade mark in United States of America, and it had since been registered in fifty different countries, of which twenty were English speaking countries including England, Canada and New Zealand. The respondents registered Trade Mark, 1852, in Jamica in the year, 1924. It consisted of the words Vicks VapoRub Slave', a device consisting of a triangle with the words Vicks Chemical Company' printed on the sides, and other subsidiary words below the triangle. In the year, 1941 the respondents registered in Jamaica Trade Mark 3707, which consisted of the single word VapoRub'. It was not disputed that, if Trade Mark 3707 is validly on the Register and is not now to be expunged, the appellants' actions have infringed it; for what they have been doing since the year, 1942 is to import from England and market in Jamaica a medicated ointment of the 'Vapour rub' type which bears on the jar, as a trade, name the words `Karsote Vapour Rub'. They, however, contended that the Trade Mark 3707 was not capable of being registered in 1941 and ought to be expunged from the Register. Regarding Trade Mark, 1852, the appellants contended that the said mark has not been infringed by them. Their Lordships while upholding the view of the Court of Appeal that the appellants had infringed Trade Mark, 1852, observed that:-- "though respondents have not used the mark itself on the goods that they have sold. But a mark is infringed by another trade if, even without using the whole of it upon or in connection with his goods, he uses one or more or its essential features. The identification or an essential feature depends partly on the Court's own judgment and partly on the burden, of the evidence that is placed before if, it was held that, if a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader. For confusion is likely to result and adhering to the principle laid down by Lord Cranworth, L.C. In Seixo v. Provezende (LR 1, 1 Ch. App, 192 at 197), that "if the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think that the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market, may be as much a violation of the rights of that rival as the actual copy of his devotee", their Lordships held that the importance of `VapoRub' in Trade Mark, 1852 becomes plain. Quite apart from what is shown by the oral evidence, it is itself a fancy word, coined originally to serve as the trade appellation of the respondents' product. There was an inherent likelihood that in course of time it would come to be used in the market as a distinctive name or one of the distinctive names of that product. And that is what the evidence shows to have happened in Jamaica. Both courts in Jamaica have agreed in their findings that Vicks VapoRub' and 'VapoRub' are there synonymous terms," and that The evidence, which was not contradicted or seriously challenged, established that for a period of 10 year or more the trade and the public used the expression 'Vicks VapoRub' as indicative, the salve or ointment made by the plaintiffs, and that the words Vicks' alone and 'VapoRub' alone are used respectively as synonymous with 'Vicks VapoRub'. I must confess that but for the unchallenged evidence I would have had difficulty in concluding that that word 'VapoRub' as meaning 'Vicks VapoRub' was in common use by the public". In view of the above, their Lordships further held that "'VapoRub' must be treated as an essential feature, or, to use an alternative phrase, a material or substantial element, of Trade Mark, 1852, and that the appellants have infringed the mark by selling their ointment under the designation Rarsote Vapour Rub' for the word 'Karsote' prefaced to 'Vapor Rub' is quite insufficient in itself to dissolve the confusion that is bound to arise from associating the appellants goods with a word so distinctive as. 'Vapour Rub'."
27. And further that:- "What the appellants have sought to establish is that the word VapoRub' in the respondents' mark is merely descriptive. To say that it is descriptive would not be enough, for, as Fletcher Moulton. L.J.
28. Pointed in Re Joseph Crosfield and Sons Ltd. (1910) 1 Ch. 130 at p.145), there is no absolute incompatibility between what is descriptive and what is distinctive. A descriptive word, such as 'sheen,'can be recognized in law as distinctive if the evidence clearly shows that it is distinctive in fact. See q., Re. J & P. Coats Application (2). But if a word or words are merely descriptive, in the sense that 'cellular cloth' or `malted milk' or shredded wheat' were said to be merely descriptive in the well-known cases in which their significance was the subject of judicial decision, then it would follow that the use of such words by one trader in his mark could not amount to an infringement of the mark of another trader, even if the words formed a part of that mark. For no Court could conclude that they amounted to one of its essential features and thus sanction just that encroachment on the common of the English language which the law has always refused to permit."
29. "In this case it would be an abuse of language to place a fancy word such as 'VapoRub' in the same descriptive class as such phrases as 'malted milk' or 'shredded wheat'. This much can be said, that the word has a descriptive element, for it is a compound of two ordinary English words which were chosen for the purpose of suggesting to the reader leading characteristics of the substance sold. But the word itself is no description of a substance except to those persons to whom the term 'a vapour rub' would be an intelligible use of words. And the evidence shows that those persons were not to be found in Jamaica at the relevant date. It was further held that it seems plain on the facts of this case that 'Vapour Rub' cannot be regarded in Jamaica as a 'bona fide description' of the character or quality of the appellants' goods".
30. As regards, Trade Mark, 3707, the real controversy was as to whether the word VapoRub' was, or was not an invented word. The contention was that Trade Mark 3707 was liable to be removed from the Register of the Trade Marks, as while securing registration of the said mark, the respondent did not claim registration under the special provision of clause (5) of section 8 of the Trade Marks Law and no order of the Court permitting such registration was ever obtained and that in absence of such an order the word 'VapoRub' could only be eligible for registration under clause (3) as 'an invented word or invented words', or under clause
(4) as 'a word or word having no direct reference to the character or quality of the goods'.
31. Dealing with the issue, their Lordships observed that:- "the best standing interpretation (of the phrase 'invented word'), is contained in the words of Mr. Justice Parker in Philippart v. William Whiteley Ltd. (1908, 2 Ch. 274 at 279): "To be an invented word within the meaning of the Act a word must not only be newly coined, in the sense of not being already current in the English language but must be such as not to convey any meaning, or, at any rate, any obvious meaning, to ordinary Englishmen. It must be a word having no meaning or no obvious meaning until one has been assigned to it."
32. It was observed:-- "If this test is applied to the Jamaican conditions of 1941 it is true to say that the history of 'VapoRub' showed it to be a word newly coined about the year, 1911. But it was coined by putting together two ordinary words of the English language; and it is only common sense to infer that the word produced by this combination was intended, not to conceal, but actually to suggest the nature of the substance that it was to be applied to. Can that word be said to have had any obvious meaning? Taking into account the fact that it was coined as an appellation for an ointment of a particular kind and that the properties of such ointment were already widely known, their Lordships think that Savary, J. And the Court of Appeal were right in refusing to treat it was an invented word and in regarding it as covered by Lord Herschell's proposition in the Solo case (supra) at p.581, 'I do not think the combination of two English words is an invented word, even although the combination may not have been in use before."
33. "The Court expressed its conclusion that the word VapoRub' was in itself adapted to distinguish the respondents goods, apart from the circumstances that, by 1941, user had rendered it in fact distinctive; and from what has been said above, it will be clear that their Lordships find no fault with the conclusion that 'VapoRub' was adapted to distinguish for the purposes of the Act, and that the formalities that were omitted in 1941 were formalities and no more."
34. It was held that:-- "That has been passing-off. From all the accepted differences between the two causes of action, the significance of the word 'VapoRub' in the Jamaican market is a dominating element in the consideration of either; and it appears to their Lordships that its significance was such that the appellants did not effectively distinguish their goods from those of the respondents by the use of the word 'Karsote' or by the manner of the `get-up' of their jars."
35. In Messrs Kala Niketan v. Koral Bagh, New Delhi (AIR 1983 Delhi 161), the plaintiff who was carrying on business of selling Sarees as 'Kala Niketan', sought a decree for permanent injunction restraining the defendant firm from dealing in Sarees as `Kala Niketan' or any other identical or deceptively similar trade name. The plaintiffs business was being run under the name `Kala Niketan' for more than 20 years. During which period, the plaintiff achieved unique reputation, name and goodwill in the market. The trading style `Kala Niketan' was exclusively associated with him and it achieved name for fresh Sarees and durable material. The defendant adopted the same trade name 'Kala Niketan and started business in Sarees. It was held that trade name `Kala Niketan' was not descriptive of the Sarees in which the parties were dealing. It did not refer to sarees or its quality or character and that merely because the defendant was giving his address wherever the words `Kala Niketan' appeared, that does not distinguish the business of the defendant from that of the plaintiff. This alleged difference is not sufficient to avoid confusion and the name 'Kala Niketan' was not the common name in Sarees in the locality in which the plaintiff was carrying on his business and decreed the suit. In T.J. Balaji Chettiar v. Hindustan Lever Ltd., Bombay (AIR 1967 Madras 148), it was held that person who first designed or used trade mark first is its proprietor unless subsequently he has dealt with it and other has obtained rights thereto in lawful manner.
36. On the other hand, Mr. Abid S. Zuberi relied upon the following judgments:- In the case of Burberrys v. J.C. Cording & Co. Ltd. (RPC 1909 Page 693), the action was brought to restrain the use by the Defendants of the word 'Slip-on' for coats or overcoats, the plaintiffs alleging that the word had acquired a secondary meaning denoting their goods. No case of deception was proved, and a charge against the defendants of intending to deceive was withdrawn and the plaintiffs at the trial rested their case on the probability of deception. The plaintiffs' user commenced in 1894 and they had extensively advertised the word in connection with their overcoats. The chief ground on which the registration was opposed was that the word is an ordinary dictionary word and one commonly applied to goods. The following passages from the above cited judgment may be beneficial:-- "In this case the article to which the name is applied is a common cut of coat, there is nothing special in it. There is an attempt here to christen this article with a descriptive word and to claim a monopoly for it. Association of the word with Burberrys is not sufficient; it must be distinctive." The plaintiff claimed a monopoly of the word `Slip-on' in connection with coat and overcoat generally, and they based their claim on the contention that the word, as applied to coat or overcoat has become by buyers of their goods and cannot be used in respect of goods of any other trader without deceiving the public and injuring the plaintiffs in their business."
37. And further that:-- "Summing up what the plaintiffs have done, I think it may be stated as follows.---First they have adopted, as the name of a particular kind of coat which they intended to introduce to the trade and to the public, a name which aptly described, and which they intended to describe, one of the chief characteristics of the article to which it was applied. Secondly, by their advertisements, Catalogues and trade Circulars, they have identified the name so chosen with the article to which it was applied in such a manner that, besides describing the chief characteristic of the coat, it has come to connote also the cut and material. Thirdly, by these same advertisements, Catalogues, and trade Circulars, by the consequent word wide development of their business, by their labels, and by their claim to monopoly rights in the word, they have associated this name with the name of their firm in the minds both of the trade and of that section of the public which requires coats of that class to which they applied the word."
38. "The real question is whether under the circumstances above described there is any reasonable probability of deception if the defendants continue to use the word `Slip-on' in the way they have done and are doing. In considering this question it must be borne in mind that, upon the facts as I have found them, the word 'Slip-on' is and has always been used by the plaintiffs, primarily as a word describing the article, and that the word does in fact describe the article in the minds of both the trade and the public. The word has never been used by the plaintiffs primarily as a word distinctive of goods of their own manufacture. If it has come to distinguish their goods from those of others, it has done so by acquiring a secondary meaning without losing its descriptive character.
39. Though I do not agree with the argument that a word cannot be at the same time both descriptive and distinctive, I think the fact that it retains its prima facie descriptive signification increases the difficulty of proving that it is distinctive of the goods of any particular manufacturer. If a word is prima facie the name or description of an article, evidence that it is also generally associated with the name of a particular manufacturer is, in my opinion, by no means conclusive that it has become a distinctive word which cannot be used of the same article when made by others without risk of deception."
40. "If the word is descriptive or becomes the name of the article, it will be difficult, if not possible, to prove that it is distinctive of his own goods or that there will be any deception in its use by others, and apart from the Trade Mark Acts, the right of anyone to the exclusive use of a word is always limited by the possibilities of its use by others without any risk of deception."
41. "The name of the plaintiff firm is, I think, as well known as the word 'Slip-on' itself, and has always been advertised in connection with that word, and the plaintiffs' agents, as far as possible, identify the goods they sell as indeed it is their interest to do with the well-known firm by whom such goods are supplied. I think any ordinary man who knows that a 'Slip-on' is, and associates it with the plaintiff firm, would, if he read the advertisement, think that it referred not to Burberrys' goods but to coats made by some rival trader."
42. "It is of course a truism to state that unfair dealing of any short ought to be restrained by Courts of Justice, but there is another principle and one equally important, namely, that everybody dealing in an article of commerce is entitled to use any words which are or have become current in the English language as denoting or describing that article provided he can do so without deceiving the public to another's injury. I am speaking of course without reference to Trade Mark legislation."
43. In the case of Tapal Tea (Pvt.) Ltd. v. Lever Brothers (Pakistan) Limited (1997 MLD 1277), where the plaintiffs tea was being sold as 'Papal Tea Danedar Leaf Blend' and defendant's as 'Lipton Yellow Label Danedar Tea' and have been used by them since long in market place. It was held that:-- "the two names/marks distinguish the products of the parties in the same way as always in the past. The only common feature is the word "Danedar' and both the parties are using the word 'Danedar' in a descriptive sense referring to the granular texture of the product, described as 'Danedar' Leaf Blend' in the case of 'Tapal Tea' and as 'Danedar Tea' in the case of 'Liption Yellow Label'. It was further held that the product of the plaintiffs and the defendants as packed when compared as a whole are different and easily distinguishable. A comparison of the packet of the defendants with the packet of the plaintiffs shows that they are vastly different; there is no likelihood of defendants' packet of tea being purchased in the belief that it is the plaintiffs' packet of tea and there is no possibility that such confusion or deception is to take place. The brand of the defendants' product is essentially 'Lipton Yellow Label' comprising registered trade marks of Unilever plc which are used worldwide and have been used in Pakistan since long; whereas the brand of the plaintiffs' product is essentially 'Tapal Tea'; the products of the defendants and the plaintiffs will be called and recognised by their respective brands. Danedar is. a common word having a well-known meaning and means granular. It is used to describe the granular texture of products such as sugar and tea. The contention of the plaintiff that the word 'Danedar' is being used by the plaintiffs since 1987 and the word 'Danedar' has been advertised before acceptance as required under, section 15(1) of the Trade Marks Act, 1940 in the trade mark journal of August, 1994 at page No.185."
44. "A perusal of this journal at pages Nos. 186 and 187 shows that `Zafran Tea Leaf Blend' is also advertised before acceptance at pages Nos. 186 and 187 of the trade mark journal of August, 1994 as Danedar'. Not, only `Zafran Tea' is packed and produced as Danedar but the word 'Danedar' has been used by other companies, as such Kohinoor, Shahbaz and others with their respective trade marks. The word Danedar' is a common word and the contention of the plaintiffs, that they have coined the word Danedar', is hardly to be believed. Perusal of various dictionaries, as mentioned earlier, clearly shows that it is a common word which is in use as in 'Urdu and in Sindhi. As against the plaintiffs trade evidence in the shape of various affidavits there is defendants' trade evidence establishing the descriptive use of 'Danedar' in the tea trade for describing the granular texture of tea.. The contention of the plaintiffs, that they have spent a considerable amount by advertising the word 'Danedar' and thus spent Rs.42 million on sale promotion and advertising of the same, has not actually accrued any legal right in favour of the plaintiffs so that the defendants may be restrained from using the word Danedar'."
45. The plaintiffs injunction application was therefore, dismissed. In the present case also the dissimilarities are so glaring that there seems to be no probability of deception by the appellant's using the word 'crystal' in the way they are doing. It was in view of the foregoing that we allowed the instant appeal and set aside the impugned order, by our short order, dated 28-2-2006.