1. ' KHALID ALI Z. QAZI, J.---This is an application C.M.A. No,8633 of 2007, filed by the plaintiff, under Order XXXIX, Rules 1 and 2 read with section 151, C.P.C., which is reproduced as under:-- "For the reasons elucidated in the accompanying affidavit, viewed in conjunction with the facts, reasons and grounds set forth in the plaint and the documents annexed thereto, and in view of the fact that the actions being threatened and proposed by the defendant following the actions taken will cause irreparable loss to the plaintiff firm, it is humbly prayed that this Honourable Court may be pleased to restrain the defendant or any person(s) acting through, under or on behalf of the defendant from threatening or taking any coercive action and from interfering in any manner whatsoever with the dealings, affairs and contractual relations' of the plaintiff with the television channels airing the advertisement for the plaintiffs salt, other than through a Court in due process of law."
2. ' Urgent ad interim orders are respectfully solicited."
3. ' Brief facts of the plaintiffs case as per plaint are that the plaintiff is a partnership -firm registered under the Partnership Act, 1932, and has extensive expertise in the salt business and is engaged in the processing and production of high quality refined salts of various grades and types at its plant situated with the Hub Industrial Trading Estate in Baluchistan, which, in keeping with the plaintiffs unwavering commitment to quality and firm emphasis on acting in a socially responsible manner is specifically designed so as to be environmentally friendly and is perhaps the only industrial "plant in Pakistan to have achieved zero liquid discharge.' It is further contended by the plaintiff that the plaintiff is ISO 90012000 and HACCP certified and even otherwise the plaintiffs commitment to quality is duly evinced by the fact that the plaintiff is the only indigenous supplier of salt to the pharmaceutical sector they are needless to say only the salt conforming to the most exacting purity standards is utilized. It is further contended that the plaintiff has just recently entered the consumer market for food grade salt with the launch of Its fine grain edible salt in 2006 under the brand "Hub Salt". It is further contended that PDV or pure vacuum dried salt, which is the product of a vacuum evaporation process carried out by the plaintiff at its state of the art plant especially imported from Switzerland and designed to produce salt with 99.99 per cent of sodium chloride content. It is further contended that the plaintiff is the solitary manufacturer in Pakistan utilizing the same to date, and as .Such it follows a priori that the plaintiffs salt is presently the only domestically manufactured salt that is residue free. It is further that the domestically produced salt otherwise marketed by suppliers as edible salt, is invariably ' simply washed and the insoluble impurities .Present cannot be completely removed. It is contended that. The insoluble impurities that are present in the salt in such cases are bound to have an adverse effect upon human health when consumed regularly over a prolonged period. Furthermore, when salt is crystallized in, open solar evaporators in salt pits near the sea side or open lakes in desert areas the same is subject to further contamination as such areas are accessible to stray animals. It is further contended that, for the purpose of advertisement and promotion an advertisement was conceived wherein it was stated inter alia for the benefit of the consuming public in the ensuing television commercial that the plaintiffs salt was the only such product that was completely free Of residue and it was demonstrated as to how the claim may be put to the test vide a simple controlled experiment where four spoonful's of any of the consumers existing kitchen salt may be dissolved in a beaker of water, following which the same test should be similarly repeated with the plaintiffs salt so as to make a , readily comprehendible comparison as to the insoluble impurities present in the former and conspicuously absent from the latter. It is contended that this exercise was carried out with recourse to the broad term "aap kay kitchen ka namak" and a generic pack of salt bereft of any trademarks or any work in which the copyright may be held by the defendant or any other person.
4. The defendant products were never shown during the course of the subject advertisement other than for a scintilla of a moment while placed on a supermarket shelf amidst similar available products of the particular genre. It is contended that this momentary glimpse is so fleeting that it is not possible to register the existence of the defendants products, unless the footage of the subject advertisement is scrutinized in slow motion for the specific purpose. It is further contended that the subject advertisement merely highlighted a positive attribute of the plaintiffs salt and did not denigrate any particular product whether of the defendant or other supplier, the defendant has nonetheless taken umbrage to the same on the misplaced ground that it infringes the defendant's copyright and defames its products marketed as "National Refined Table Salt" and "National Refined Iodized Salt" and has served a legal notice dated 1-10-2007 the subject notice) upon the plaintiff through its legal counsel to that effect, which has been replied to by the plaintiffs counsel vide a letter dated 9-10-2007. It is contended that the subject notice is patently vexatious and misconceived and the same has not been confined in its scope and application to the plaintiff alone and was also specifically addressed to the advertising agency engaged by the plaintiff i,e, Manhattan Communications (Pvt.) Limited as well as various television channels i,e, Hum TV, Star Plus and World call Telecom Limited from Pakistan Electronic Media Regulatory Authority, and stringent civil and criminal action was unwarrantedly threatened separately against each entity. It is further contended that it is apparent that the defendant simply perceives the education of the consuming public per se to be a threat to its virtually monopolistic hold over the branded salt market and it is submitted that the defendant has accordingly addressed the television channels carrying the subject advertisement in most threatening terms not so much out of any conviction as to' the averments, contained therein as such as with the ulterior motive of coercing and intimidating the said television channels and thereby preventing the airing of the subject advertisement, thus effectively stifling the plaintiffs business. It is contended that the allegations levelled against the plaintiff in the subject notice are completely unfounded and bereft of substance having been aired by way of a pretext as part of what is an obvious ploy to .Gain the commercial and pecuniary advantage against the plaintiff through obvious threats of false implication and prosecution against the plaintiffs media partners. It is contended that the television channels airing the subject advertisement would obviously have no desire to be embroiled in what they will no doubt perceive-as a dispute inter se the plaintiff and the defendant and it is apprehended that being intimidated by the size and influence of the defendant they will accordingly summarily cease to broadcast the subject advertisement. It is submitted that it is already transpired in the case of Worldcall Telecom Limited vide their letter dated 5-10-2007 (received by the plaintiff towards close of business hours on 6-10-2007) that in view of the subject notice they are ceasing to air the subject advertisement forthwith. The plaintiff already stands prejudiced vide the untimely loss of this valuable media resource at a nascent stage in its venture in the edible salt market, which has been exacerbated by the fact that the Ramadan period in the buildup to Eid is always a' pivotal juncture from the marketing standpoint, particularly in the food industry. It is further stated that plaintiff has also been informed by its advertising agency that the other channels addressed in terms of the subject notice have also very recently been in contact with the said agency and expressed their reservations regarding the further broadcasting of the subject advertisement in view of the subject notice and further approaches that have apparently been made to them directly by the defendant, in order to procure the termination of their arrangements with the plaintiff. As such, "it is genuinely apprehended by the plaintiff that remained unchecked, the defendant would almost certainly abuse its position as a well established consumer oriented, company advertiser in order to carry on its policy of coercive persuasion in order to bring about the suspension of the subject advertisement by the television channels addressed in terms of the subject notice as well as such other channels through which the same is being aired. It is further contended that it is genuinely apprehended by the plaintiff that the defendant will further perpetuate its campaign of threats and intimidation to the detriment of the plaintiff without ever invoking the jurisdiction of any Court, thus resulting in irreparable loss to the plaintiff, and is liable to be permanently restrained in that regard.
5. ' In reply the defendant has filed counter-affidavit of Abrar Hasan duly authorized and constituted attorney of the defendant. It is pleaded by the defendant that the declaration prayed for is barred under sections 12, 42 and 56 of Specific Relief Act. It is pleaded that in order to obtain interim relief the plaintiff has come before this Court with unclean hands and not only misrepresented and falsely stated facts available on record before this Court but as admittedly patent from the record, has also violated the Copyright Ordinance, 1962 and Defamation Ordinance, 2002 as well as Pakistan Penal Code. It is further contended that the plaintiffs acts amount to unfair trade practice, false advertising and taking unfair advantage of the reputation of the distinguishing mark of a competitor and hence violates the Trade Marks Ordinance, 2001, Sindh Consumer Protection Ordinance thus, disentitling the plaintiff to any relief before this Court. It is contended that the plaintiff is liable not only to civil liability toward the defendant but is criminally liable under the law and is the admitted infringer of intellectual property rights, perpetrator of Defamation and in violation of several offences under Pakistan Penal Code, hence the plaintiff is not entitled to any discretionary or equitable relief nor the grant of interim relief. It is contended that plaintiff has misrepresented the facts of the case and has. Disclosed incorrect and incomplete facts before this Court with the intention to mislead this Court and thus is liable to be dismissed at its outset. It is further pleaded that the plaintiff has no cause of action, nor has any cause of action with any basis of law been prayed by the plaintiff and hence the plaint is liable to be rejected. It is further pleaded that the plaintiff has not made out a prima facie case nor has the plaintiff incurred irreparable loss and hence the ground for interim relief not having been met, the plaintiff is not entitled to any interim relief. It is further contended that the relief prayed for in the application by the plaintiff is the final relief, as prayed in the suit and as such the same cannot be granted. It is further contended that the plaintiff has admitted in paragraph-9 to the supporting Affidavit of the application under Order XXXIX, Rules 1 and 2, C.P.C. That the plaintiff did in fact reproduce and infringe the Copyright of the defendant thereby admitting the violation under Copyright Ordinance, 1962 and hence the suit is liable to be disposed of /dismissed under Order XII,C.P.C. It is further contended that since the dispute and cause of action arise under Copyright Ordinance, 1962, the appropriate forum having jurisdiction to entertain this matter would be the District Court as required under the law. It is contended that suit plaint has been instituted without any proper authority and no partnership deed has been filed. The suit and plaint have not been duly instituted in accordance with law by all the partners to the alleged partner Ship. It is further submitted that the contents of the application, under reply are incorrect, both on facts as well as the law. It is submitted that the alleged dispute between the parties partially concerns infringement of the defendant's copyrighted packaging material of its salt product namely National Refined Table Salt and partially pertains to defamatory statements being made against the said product. It is further submitted that the plaintiff intentionally infringed the Copyright of the defendant's packaging shown in the Offending Advertisement clearly infringes and reproduces the copyrighted layout, design and art work of the defendant. Photocopies of one of the infringing shots in the Offending Advertisement is attached as "A" and copyright registration in favour of the defendant is attached as "B" to the counter-affidavit.
6. It is further contended that the plaintiff is publicly making Defamatory statements with regards to the defendant's product. The Offending Advertisement falsely states that the defendant's product is harmful for human consumption. The defendant's product and its contents/ specifications are more than compliant with the West Pakistan Pure Food Rules, 1967 and the Codex International Standards. Photocopy of the relevant provisions of the Pure Food Rules and codex international .Standard and the Laboratory tests of the defendant's product by PCSIR are attached as Annexures C, D, E respectively. It is contended that the said product of the defendant is also approved from the Nutrition Division, National Institute of Islamabad as evident by the Analytical Report issued by the Nutrition Division, National Institute of Health dated 17-11-2007, clearly classifying the defendant's product to be "Satisfactory". Photocopy of the Analytical Report is attached as Annexure F. It is further stated that the plaintiff, has falsely stated that their product is "residue free" and "pure". The plaintiffs product admittedly contains insolubles and residues, which fact is admitted by the plaintiff on its packaging. It is contended that the .Plaintiffs 'product is not pure sodium chloride but as admitted on its packaging includes a number of additives and ingredients and is hence, by no means "pure". Moreover, the falsity of the plaintiffs statements is evident from the -laboratory tests conducted by the PCSIR dated 19-11-2007. Photocopy of the specifications on the packaging on the plaintiffs packaging and the Laboratory tests of the plaintiffs product by PCSIR are attached as Annexures and H. It is further contended that the plaintiffs products have been tested by the International Salt Research Institute are mala fide, fraudulent, false and baseless since no-such Institute exists as shown in the Offending Advertisement. Photocopy of the search on Google showing that no such Institute exists is attached as annexure I. It is pleaded that the plaintiff has made fraudulent and false representations and themselves been in flagrant violation of the Copyright Ordinance, the Defamation Ordinance and the Pakistan Penal Code. In addition, such act by the plaintiff amounts to unfair trade practice, false advertising and taking unfair advantage of the reputation of the distinguishing mark of a competitor and hence violates the Trade Marks Ordinance, 2001, Sindh Consumer Protection Ordinance thus, disentitling the plaintiff to any relief before this Court. It is further contended that the contents of para.'2 of the plaint are denied in its entirety unless specifically admitted. It is further contended that plaint does not establish any cause of action against the plaintiff and neither does the plaintiff have a prima facie case nor is the balance of convenience in the plaintiffs favour. The representations made by the-plaintiff as to the quality of its salt product are denied and the plaintiff is put to strict proof in relation to the same. The plaintiff is not the sole indigenous supplier of salt and neither is the plaintiff the only salt manufacturer conforming to the most exacting purity standards. The defendant's salt product has been tested by the PCSIR Laboratories which has determined its compliance with specifications laid down by the West Pakistan Pure Food Rules, 1967. In reply to the contents of Para.4 defendant denied with exception of the fact that the plaintiff has just entered into the salt market. This admission proves that the plaintiff does not have an existing consumer base and as such could not have suffered any loss as falsely prayed in the suit. It is submitted that the defendant is the manufacturer as well as the producer, distributor and exporter of various edible items inclusive of the said product. The defendant has been involved in the production of the said product since 1992 and the said product is in compliance to the prevailing industrial standards and specifications for salt products. It is further denied by the defendant that there is no proof nor has any been tendered by the plaintiff that P.V.D. Has become the legally acceptable standard for edible salt. There is also nothing on record to show, nor any evidence tendered, that ' indicates that the defendant's product is not of an acceptable standard. In fact, as mentioned above, the defendant's product is of an internationally acceptable standard as well as the relevant national standard. The vacuum evaporation process referred to by the plaintiff is not the sole method whereby salt can effectively be rendered residue free nor is it the only acceptable standard for salt products. The defendant utilizes the washing and cleansing process, for rendering the said product free of residue in accordance with the national and international standards. The National Foods Refined Table Salt is totally safe for human consumption, as it is prepared with the raw salt after a thorough washing and cleansing process. Raw salt is initially cleaned from any undesirable or foreign material further separators are installed which ensure removal of any iron particle if present. It is further submitted that the salt is grinded into a required particle size and then a full length washing cycle is carried out. Salt is washed till the required excellent quality product is attained. The quality parameters are strictly followed in order to ensure that each and every aspect of West Pakistan Pure Food Rules is being monitored closely and the final product in compliance with Pakistan Pure Food requirements. It is further contended that Silicone dioxide is added, which is also approved by West Pakistan Pure Food Rules, to the level of 1%. This ingredient is perfectly safe for human body and is allowed to be used in USA in all food stuff to about 2%.
7. Similarly, the plaintiffs product also has several other additives and non-sodium chloride (salt) content. The contents of Para.6 are also denied by the defendant and contended that the simple test in any kitchen will show that once the. Plaintiff s salt is dissolved in water, it too leaves residue that is visible to human eye. In any case this is not the correct or scientific manner, in order to judge or test the acceptability or legal compliance of the salt. A Laboratory test is the only acceptable and correct method which, as shown above, completely contradicts the statements and representations of the plaintiff in the Offending Advertisement and in the suit and the Affidavit. It is further contended that the plaintiff has admitted that their entire cause of action is based on surmise and assumption when in paragraph-7 they state "the salt in such case are bound to have an adverse effect upon human health". This is nothing more than baseless pure assumptions without any proof and hence demonstrates the falsity and mala fide of the plaintiffs case and the fact that no cause of action arises in favour of the plaintiff.
8. ' Moreover, the plaintiffs assumptions with regard to the defendant's processes are again nothing more than surmise, conjecture and assumption having no cause of action. It is further contended that the extraction of salt from open solar evaporators in salt pits near sea sides or open lakes and allegations as to contamination due to the fact that such areas as accessible to stray animals, it is submitted that the plaintiffs salt also utilizes the same process and is a preliminary requirement in relation to extraction of salt. It is further contended that any allegations raised against the composition/contents/ingredients of the said products are false, baseless and mala fide and defamatory, under the Defamation Ordinance, 2002 and section 499 of the Pakistan Penal Code. It is further contended that the plaintiff did in fact run the Offending Advertisement, which specifically incorporates and identifies the defendant's product and infringes the defendant's Copyrighted work. It is denied by the defendant that the packaging reproduced in the Offending Advertisement with which the plaintiffs salt is compared is identical in its copyrighted design, layout, art work, as that of defendant's product, the plaintiff stands in breach and infringement of the Copyright Ordinance, 1962. The said Advertisement not only refers to the attributes of Hub Salt (plaintiffs salt), but also specifically identifies the defendant's product with malicious intent to damage its market value and sale output as well as to illegally defame the defendant's product before the public at large, consequently damaging the well-established repute and goodwill of the defendant. It is further contended that the so-called (scientifically incorrect and misleading) 'test' performed within the said Advertisement is not sufficient to provide a correct comparison as to insoluble impurities as allegedly present in the defendant's product and is merely a misrepresentative marketing gimmick, unfair trade practice and false advertising taking unfair advantage of the reputation of the distinguishing mark of a competitor being utilized to cause irreparable damage to the business of the defendant by infringing the defendant's copyright and making false and defamatory statements about the defendant's product. It is also contended that the said Offending Advertisement falsely refers to a fictitious entity namely International Salt Research Institute, a Salt Research Institute which allegedly deems the defendant's product to be harmful for human consumption. It is denied that the packet of salt reproduced in the subject advertisement is generic or that the design, artistic work, layout and label does not infringe any copyright. In fact the defendant's product is shown along with the trade mark and copyright in their original packaging in one of the shots.
9. ' In another extended shot a lengthy comparison between the plaintiffs salt and a package identical to the defendant's copyrighted packaging in layout, label, artistic work and design in the copyright is illegally reproduced and shown. Hence, the Offending Advertisement deliberately and malafidely makes false representations about the defendant's product as well as defaming the defendant's product in violation of the law. Moreover, it is clear that either the packaging and property marks as well as trade marks of defendant have been interfered with when erasing the trade mark/name and property mark of the defendant on the comparison packaging which are offences under sections 463, 465, 470, 472, 473, 478, 479, 480, 481, 482, 483, 485 and 486 Pakistan Penal Code or the same layout, label, design, artistic work as that of the defendant's has been reproduced which is a violation of sections 60, 66, 66-A, 66-B and 66-D of Copyright Ordinance, 1962. Hence; in either case the plaintiff has committed criminal offences and as such has come before this Court with unclean hands. The extent of unclean hands with which -the plaintiff has come before this Court does not simply disentitle the defendant from any relief before this Court but also establishes the plaintiffs criminal offences which are severally punishable under the law.
10. Hence no interim relief can be granted to the plaintiff being themselves in violation of both civil as well as criminal provisions of law. The said Offending Advertisement specifically incorporates the defendant's product with the intention to cause irreparable damage to the business of the defendant. It is further contended that the entire packaging material of the said product is copyrighted and registered in the name of the defendant. The plaintiff has unlawfully republished and reproduced the copyrighted packaging material of the defendant's product, visually apparent within the said Offending Advertisement, by altering copyright measures adopted by the defendant and by copying, reproducing, publicly displaying and disseminating the same through electronic media such as Television Channels including but not limited to Hum TV, Star Plus and Worldcall Broadband Channels without authority and thus stand in clear violation of the Copyright Ordinance, 1962 as amended by the Copyright Ordinance, 2001. It is further contended that misrepresenting and alleging false attributes of the plaintiffs product in contradistinction to the defendant's product necessarily results in allegations of negative attributes being made against the defendant, which is what the plaintiff has deliberately and with mala fide intent done in the Offending Advertisement. The infringement of copyright is a matter of record which is before this Court. The certificates are conclusive evidence of infringement of Copyright by the plaintiff of the defendant's copyrighted label, artwork, layout and design when compared with identical works used by the plaintiffs in the Offending Advertisement. The said Offending Advertisement clearly identifies the defendant's product and not only identifies the alleged positive attributes of the plaintiffs salt but also specifically infringes the vested copyrights of the defendant within the said product. The Offending Advertisement also includes defamatory statements to the extent of alleging that the defendant's product as injurious to the human kidney and stomach and not suitable for human consumption. Additionally, without ascertaining the truth and authenticity of the facts in relation to the composition/ingredients of the defendant's product the plaintiff has also falsely alleged within the said Offending Advertisement that the defendant's product is defective due to the fact that they contain certain residuary elements which are harmful for human consumption. It is further contended that the legal notice dated 1-10-2007 was served upon the plaintiff to immediately notify the plaintiff as to the breach of Copyright within the defendant's product and to warn the plaintiff against carrying on with the copyright infringement, defamatory campaign and the contained violation of the law against the defendant's product through the airing of the Offending Advertisement. The reply rendered by the plaintiffs counsel to the legal notice dated 1-10-2007 vide letter dated 9-10-2007. Photocopies of the legal notice dated 1-10-2007 and 9-10-2007 are attached as Annexures K and L fails to take account of and is substantively silent on the issue of breach of copyright within the defendant's product and does not address the issues raised by the defendant as to the defamatory statements being made, circulated and disseminated against the defendant's product via electronic media such as Television Channels including but not limited to Hum TV, Star Plus and Worldcall Broadband Channels to the public at large. It is further contended that the issuance of the legal notice is a legal recourse available to the defendant as a first step towards initiating appropriate legal action in order to protect their legal rights and prevent the commission and violation of any law. The plaintiff to escape liability in relation to the same has initiated this false and frivolous litigation in order to deprive the defendant an opportunity to adopt due course of law by attempting an abuse of the judicial process before this Court based on false and fraudulent grounds. The defendant reserves the right to initiate appropriate legal proceedings against those involved in the breach of copyright and continuation of the defamatory campaign being carried out against the defendant's product. It is further contended that the issuance of a legal notice constitutes due process of law and does not in any way amount to unwarranted threats. It is the legal right and duty of the defendant to protect their rights and prevent any illegal and fraudulent activities perpetrated by the plaintiff and to do so by issuing legal notice under the law. The legal notice dated 1-10-2007 was served in compliance and under the law and constitutes legal recourse available to the defendant in order to prevent breach of law and commission of offences under the law. Any allegations and contentions made against and raised by the plaintiff against the defendant are specifically denied. It seems that Worldcall Telecom Limited has acted in compliance with the law by discontinuing the airing of the Offending Advertisement and have taken some steps to mitigate their risk/liability by preventing the breach and violation of the Copyright Ordinance, 1962 as amended by the Copyright Ordinance, 2001 and the Defamation Ordinance, 2002. It is further contended that the above-named television channels to ensure that in the course of ordinary business and contractual undertakings, to take due care and conduct appropriate checks in order to ensure that they when rendering their services they do not violate any law(s) or infringe upon the rights of any party. The airing of the said Offending Advertisement by the above mentioned television channels is in breach of the Copyright Ordinance, 1962 as amended by the Copyright Ordinance, 2001 and the Defamation Ordinance, 2002. In addition, it would also amount to encouraging, aiding and abetting and being a co- conspirator in the commission of unfair trade practice, false advertising and taking unfair advantage of the reputation of the distinguishing mark of a competitor and hence violates the Trade Marks Ordinance, 2001, Sindh Consumer Protection Ordinance thus, disentitling the plaintiff to any relief before this Court. It is further contended that respective channels to which the legal notice dated 1-10-2007 was addressed, will be acting in accordance with law if they comply with the terms of the legal notice dated 1-10-2007 and will be preventing violation of the ,Copyright Ordinance, 1962 as amended by the Copyright Ordinance, 2001 and the Defamation Ordinance, 2002. The subject application and the frivolous suit has been initiated by the plaintiff against the defendant in order to deprive the defendant from its legal right to initiate appropriate legal proceedings against the plaintiff and the infringing parties by adopting the due course of law.
11. ' I have heard the arguments of Mr. Yousaf Saeed, Advocate for the plaintiff and Mr. Zahid Jamil, Advocate for the defendant. Both sides have referred a number of ruling of apex Court as well as to the view expressed by leading authorities on the trade mark. I have gone through the ruling cited by both the sides. Mr. Yousaf Saeed vehemently assails the legal notice written to the plaintiff, their advertisers, TV channels and other authorities and submitted that the same was in complete disregard and violation of the Trade Mark Act, 1940, Trade Mark Ordinance, 2001, Copyright Ordinance, 1962, as well as the Principles of Law relating Intellectual Property Rights as laid down by Courts in England, India and Pakistan. Elaborating his arguments, he advanced the following ground in support of the injunction application:--
(i) That the legal notice dated 1-10-2007 for and on behalf of defendant and addressed to the plaintiff, their advertiser and TV Channels for threats of proceedings is misconceived, illegal and groundless threat which plaintiff alleged amounts to an unjustified threat.
(ii) That the plaintiffs advertisement shown on the TV commercials comes within the meaning of comparative advertisement under section 2(6) read with section 68 of the Trade Marks Ordinance, 2001 and therefore, there was no infringement of copyright of the defendant's product.
(iii) That since the defendant's legal notice dated 1-10-2007 was based on misstatement, contradiction, wrong information, baseless allegations and imputation of criminal offence therefore, the plaintiff is entitled for an injunction under section 52(2)(b) of the Trade Marks Ordinance, 2001.
12. ' To substantiate his contentions, he relied upon the following judgments and reports of the Superior Courts of England, India and our High Court and Supreme Court of Pakistan:--
(i) Prince PLCV Prince Sports Group Inc. (1998) FSR Volume 25, decided on 30-7-1997 by Mr. Justice Neuberger, High Court of Justice Chancery Division, U.K.;
(ii) Halsbury's Laws of England, Forth Edition 2000 Rassue Volume 48 Page Para 118, 119 and 120 in respect of groundless threats of Infringement Proceedings;
(iii) CM Row's. Law of Injunctions 8th Edition by K. Swami Paragraph 17.5 Imputation of criminal offence;
(iv) Muhammad v. Bism Nath AIR 1928 All: 316;
(v) 1976 RPC 308 (313);
(vi) 1998 FCR 21;
(vii) Country Link Development Corporation v. Habib Bank Limited and others PLD 2000 Karachi 269 (277);
(viii) Mst. Bushra Sadiq v. KDA and others 2001 MLD 1257 (DB);
(ix) 94(2001) DLT 30 case of Pepsi Cola (Dehli High Court);
(x) Pakistan Drug House (Pvt.) Ltd. v. Rio Chemical Company and another 2003 CLD 1531 (1538)
13. 1540;
(xi) AIR 1978 SC 1613 (1627);
(xii) AIR 1965 SC 980;
(xiii) AIR 1995 SC 1795 (1806);
(xiv) PLD 1984 SC 44 (46);
(xv) AIR 1939 Lahore 529;
(xvi) PLO 1960 Dacca 19;
(xvii) 1991 MLD 1243; (xviii) 1986 CLC 1908.
14. ' Mr. Yousaf Saeed submitted that plaintiff does not infringe any copyright and threatended notice will cause the plaintiff to suffer loss and damages. The plaintiff is entitled to declaratory and injunctive relief. The defendant's assertions are and at all times have been untrue. He relied upon in case of Jaybeam Limited v. Abru Aluminum Limited (1976) R.P.C. 308 decided on 15-5-1975 by Mr. Justice Whitford in High Court of Justice-Chancery Division. In this case injunction was granted to the plaintiff against the defendant. The facts of the case were that the defendant in March 1975 wrote letter to one consumer of plaintiff I.P.C. Limited in the inter alia following terms:--
(1) You will not insert any other advertisement, other than one approved by Abru, for light-weight metal stepladders in any future editions of your magazines.
(2) You will keep an account of all ladders sold by you in response to the offer in your magazine and that 15 per cent of the money so received will be paid into a joint account in the names of ourselves and your solicitors.
(3) Within 14 days of 30th June 1975 (the closing date of your offer) you will deliver to ourselves an account of all ladders sold by you in response to your offer.
(4) After 30th June, 1975 you will not accept any further orders for the step-ladders the subject of your offer".
15. ' The facts in present case are totally different and distinguishable from the facts of the all reported cases cited by learned counsel for the plaintiff due to simple reason that the plaintiff in para.10 of their plaint admitted about the disparagement in the advertisement.
16. ' Mr. Zahid Jamil learned Advocate for defendant controverted the arguments of Mr. Yousaf Saeed and submitted that the prayer clause of the suit did not contain anything against the impugned legal notice dated 1-10-2007. There is clear cut admission in the affidavit of the plaintiff about the infringement of copyright of defendant. He contended that in the TV commercial of the plaintiffs advertisement, the colour of packet is same, features are similar, blue line, rectangular box at the bottom of blue box yellowed area is same. In yellowed area only first line is rubbed----, the net weight 800 g, is same and the words Refined Table Salt is also same. It was contended that the plaintiffs admitted that the defendant's product was shown for a moment while placed on super market shelf amidst similar available product of the particular genre. Mr. Zahid Jamil further contended that packaging shown 'in the offending advertisement clearly infringes and reproduced the copy rights layout, design and artwork of defendant. The offending advertisement falsely states that the defendant's product is harmful for human consumption. Therefore, the plaintiff is publicly making defamatory statements with regards to the defendant's product.
17. ' Mr. Zahid Jamil relied upon the following case laws:--
(i) 94 (2001) DLT 30 case of Pepsi Cola decided by Delhi High Court;
(ii) - (1929) 2 K.B. 331 case of Cassidy v. Daily Mirror Newspapers Ltd. Decided by Court of Appeal on 13-5-1929;
(iii) (iii) (1905) 1 Chancery Division 519 in case of Hanfstaengl v. W.H. Smith & Sons;
(iv) Black's Law Dictionary page 448 definition of Defamation;
(v) All ER (1941) 2 Page 403 in case of King Features Syndicate Inc. v.
0. And M. Kleemann, Ltd.;
(vi) Syed Muhammad Ali v. Network Television Marketing (Pvt.) Ltd. And another PLD 2005 Karachi 399;
(vii) Adeeb Javedani v. Yahya Bakhtiar 1995 CLC 1246;
(viii) Abdul Ghafoor v. Syed Jawed Hussain Jaffrey and another PLD 2006 Karachi 691;
(ix) Eureka Forbes Limited, Kalkata v. Pentair Water India Private Limited 2006 Ind Law Kar. 505, decided on 20-12-2006;
(x) Dabur India Limited v. Emami Limited 2004 Ind Law Del 162, decided 28-5-2004 by Delhi High Court;
(xi) Altaf Goher v. Wajid Shamsul Hussain PLD M81 Karachi 515; (xii)Unreported Judgment of Dellii High Court in I.A. No,5445 of 2004 titled as Dabur India Limited v: Colgate Palmolive India Ltd. Decided on 9-9-2004.
18. ' In my view following facts are not in dispute:--
(a) That the defendants are copyright owner and have registered mark in the name and style of ..National Foods Refined Table Salt.. Under registration No,11534 dated 24-3-2002 and National Refined Iodized Salt. Under registration No,11687 dated 30-7-2002.
(b) That the defendant's products were shown for a Scintilla of a moment while placed on super market shelf in the advertisement of the plaintiff on electronic media.
(c) The defendant has largest share of the Food Salt Market A of its product countrywide.
(d) Legal notice dated 1-10-2007 may be treated as notice under section 8 of Defamation Ordinance, 2002.
(e) The advertisement campaign on the electronic media has an immediate impact on the viewers and possible purchaser's mind. The effect of the advertisement aired cannot be repaired readily and easily.
19. ' It is settled principle of law that a party would be entitled to relief under Order XXXIX Rules 1 and 2, C.P.C. Provided that it satisfies the 'court that it has a prima facie case; that balance of convenience is in his favour and the irreparable loss and injury could be caused to him if interim relief is not granted. The aforesaid three phrases are not Rhetoric phrases but elastic words to meet a wide range of situation in given set of facts and circumstances. The burden is always on the plaintiff/applicant to satisfy the court that a prima facie case exists in his favour. The court must further satisfy itself that non-interference by court would result in irreparable injury to a party seeking relief. Irreparable injury means that the injury must be a material one, one that court cannot adequately compensate by way of damages. The court is expected to exercise sound judicial discretion to find out the amount of substantial mischief or injury which is likely to be caused to the other party if the injunction is granted.
20. ' In the present case important questions have been raised which will have far-reaching consequences in their nature and impact on the trading commity as a whole. According to the plaintiff the legal notice dated 1-10-2007 given by the defendant to the plaintiff, TV Channels and advertisers is misconceived being groundless threats of infringement proceedings within the meaning of section 52 of the Trade Marks Ordinance, 2001 and plaintiff is entitled for an injunction.
21. Section 52 reads as under:-- ' Section 52. Remedy for groundless threats of infringement proceedings:--(1) Where a person threatens to bring an action against another person on the ground that the other person has infringed:---
(a) a registered trade mark; or
(b) a trade mark alleged by the person to be registered, any person aggrieved by the threat may bring proceedings for relief against the person making the threat.
(2) The relief may be applied for any of the following, namely:--
(a) a declaration that the threats are unjustifiable;
(b) an injunction against the continuance of the threats; or
(c) damages in respect of any loss he has sustained by the threats.
(3) The plaintiff shall be entitled to any relief specified in subsection (2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute, or if done would constitute, an infringement of the registered trademark concerned.
(4) If that is shown by the defendant, as provided under subsection (3), the plaintiff shall be entitled to any relief specified in subsection (2); if he shows that the registration of the trademarks is invalid or liable to be revoked in a relevant respect.
(5) The mere notification that a trade mark is registered, or that an application for registration has been made, shall not constitute a threat of proceedings for the purposes of this section.
(6) The provisions of this section shall not make a Lawyer, Advocate or Attorney liable to an action- for an act done in his professional capacity on behalf of a client.
22. From the perusal of the above section I find that the expression "the plaintiff shall be entitled to any relief specified in subsection (2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute, or if done would constitute, an infringement of the registered trade mark concerned" in section 52(3) (supra) makes it clear that if defendant shows a valid cause of initiating the proceedings, which were threatened, then the plaintiff in such situation shall not be entitled to any relief. In the present case, the plaintiff admitted in their plaint and in para.9 of supporting affidavit of application under Order XXXIX Rules 1 and 2, C.P.C. That in their advertisement packet of salt of the defendant was shown and can be seen that the lady picked up the defendant's packet and put off treating the same as dangerous to health and human consumption. From the above acts it is to be inferred that legal notice issued by defendant was in compliance of law and under the circumstances, the defendant was justified to take necessary action according to law. In the circumstances the plaintiff is not entitled for the relief. Therefore, the issuance of legal notice dated 1-10-2007 may be treated as notice required under section 8 of Defamation Ordinance 2002 therefore, it cannot be said to be a groundless threat.
23. ' I have seen the commercial on Laptop Computer in Court in presence of the learned counsel for the parties. From viewing of this commercial it is evident that plaintiff is making a comparison with the other products including the defendant's product. It appears that the offensive advertisement seems to be prepared in such a manner as to amount defaming the defendant and their goods which is not permissible under the law. I am unable to persuade myself to accept the submission of the learned counsel for the plaintiff that plaintiffs advertisement may be treated as a comparative advertisement and not disparagement. It is the specific case of the defendant that the above advertisement admittedly disparages, in fact, it would cause great damage to the marketability of the defendant's product.
24. Disparagement is defined in Webster's dictionary as an, act of depreciating, aspersing sighting or undervaluing derogation;----An unjust closing or comparison with what which is of less worth; degradation. Oxford dictionary defines disparagement as "bring disredition"; speaks slightingly of, depreciate". Black's law dictionary defines disparagement of goods as "A statement about competition goods which is untrue or misleading and is made to influence or tends to influence the public not to buy". Disparagement in the Chambers Dictionary means to dishonour by comparison with what is inferior; to take slightingly of, to belittle".
25. In Reckitt and Colman India Ltd. v. M.S. Ramachandran and another, reported in 1999 PTC 741, while dealing with disparagement, the Court laid down five (5) principles to decide whether a party is entitled to an injunction. The main principles are:--
(i) A tradesman is entitled to declare his goods to be the best in the world, even though the declaration is untrue.
(ii) He can also claim that his goods are better than his competitor, even though, such statement is untrue.
(iii) For the purpose of saying that his goods are the best in the world or his goods are better than his competitor he can even compare the advantages of his goods over the goods of the other.
(iv) He, however cannot, while saying his goods are better than competitor, say that his competitors goods are bad. If he says so, he really slanders the goods of his competitors. In other words he defames his competitors and their goods, which is not permissible.
(v) If there is no defamation to the goods or to the manufacturer of such goods no action lies, but if there is such defamation and action lies and if an F action lies for recovery of damages for defamation, then the court is always competent to grant an Order to injunction restraining repetition of such defamation.
26. The Court held, in the above case, that comparative advertisements were admissible. However, advertisement should not be in such a manner as to disparage the goods the competitor. Mere puffing of a goods without disparagement is not actionable. The advertisement must be issued in the light G of the aforesaid test. Reliance may be placed on 94 (2001) D.L.T. 30 in case of Pepsi Cola Inc. And another v. Hindustan Coca Cola and others in I.A. No,3097 of 2001 in Suit No,635 o 2001 decided in September, 2001.
27. ' I have given due consideration to the arguments advanced by the learned Advocates for the parties, gone , through the material available on the record, relevant laws, case law cited at the bar. However, all these contentions require deeper appreciation of evidence which can properly be thrashed out at the time of trial. From the tentative, assessment of the material available on the record, I am of the considered view that plaintiff has no prima facie case at this stage. Balance of convenience is also not in favour of plaintiff as great inconvenience will be caused to the owner of registered intellectual properties in exercising their legal rights to deal with the property as per law.
28. No irreparable loss will be caused to the plaintiff, if the injunction is refused because the loss, if any, can be compensated in the shape of H damages.
29. ' These are the reasons for dismissal of C.M.A. No,8633 of 2007 on 19-12-2007 through short order announced in Court. In the light of this order the C.M.A. No,9084 of 2007 also become infructuous.
30. Any opinion expressed in this order will not in any manner affect the merits of the suit.
31. ' Adjourned to 10-1-2008, as per roster.