1. ' MRS. QAISER IQBAL, J.----This order governs C.M.A. 6872 of 2008, under Order XXXIX, rule 1 and 2, C.P.C. Seeking injunctive order against the defendant for infringing the plaintiffs trademark 'FOLIQAM Pearls' in his color scheme, calligraphy, label, packaging and design of the Capsules.
2. ' The facts relating for the purpose of the disposal of the application are that the plaintiff is affiliated with Messrs Matrix Pharma Private Limited, which covers the entire value chain within its own organization, being sole proprietorship concern for its major products enumerated as under:--
(i) Overine-F-(Colmiphene Citrate)-for Induction of Ovulation easily;
(ii) Lostaz-(Cilostazol)-provides dual action, that is inhibition of platelet aggregation and increase in vasodilation;
(iii) Hyalgan-(Hyaluronic Acid Sodium Salt)-for the patients of Knee Osteoarthritis;
(iv) Bfflor-(Saccharomyces Boulardii)-For Anti-diarrheal; etc. ' The plaintiff has introduced 'FOREVA Pearls' most demanding Nutritional Food Supplement to reduce amount of Folic Acid necessary for a healthy body and life particularly nutritious to pregnant woman preventing other congenital abnormalities consisting of (Food Grade) Folic Acid (Vit-B-9) 400 mcg (Food Chemical Codex-IV Spces). During the period 2006 to 2008 the plaintiffs sales exceed millions, the sales figures are as follows:-- Year Sales in Rupees 2006-07 18,027,529 2007-08 21,526,218 ' It is averred that trademark 'FOREVA Pearls' had earned good reputation and goodwill and the products and services of the Matrix. The plaintiff applied for the trademark registration; filed an application under class 5 and is also a registered proprietor of the design of the CAPSULE in class 3 under application No,13293-D filed in the patent office and holds copyright inartistic work in label designing under No,Copr-1754 with the Central Copyright Office, Karachi. In the second week of June, 2008 plaintiff learnt about the identical mark 'FOLIQAM Pearls' marketed and distributed under identical deceptively trademark and packing by the defendant No,1 managed by defendants Nos.2 to 6 set up on the basis of ex-employees of the plaintiff whereby obtained trade secrets and have started their own business.
3. ' In rebuttal defendants have filed counter affidavit denied the allegations of the plaintiff explained that none of the employees of the plaintiff connect with the business of defendant No,1, which is a sole proprietorship concern exclusively run by Mr. Farooq Shaikh who had a past marketing sale business in Pharma business, worked with Ciba, Hilton Pharma to the neonexus whereas defendants Nos.3 to 6 are employees of the defendants Nos.1 and 2. The wife of Mr. Farooq Shaikh, Professor Aisha Khan being gynecologist/ surgeon is serving in DOW Medical University as well as in OMI, Ziauddin Hospital Clifton and Parklane Hospital Clifton. The food supplement is imported from China and is advised by the gynecologist recommended for pregnant women. The defendants Nos.1 and 2 opened an LC in April, 2007, started marketing its product 'FOLIQAM Pearl' with distinct trademark, trade name, color scheme, design, calligraphy, and are continuously importing and selling in the market by user for almost one year without any objection from any quarter.
4. Defendants have launched six products, in competition with the plaintiff in respect of only one product. On market search from trademark registry the defendant No,1 had applied for registration of 'FOLIQAM' on 28-5-2007, the plaintiff had fraudulently passed the trademark only to create confusion and to cause damage to the reputation and goodwill of the defendants and had launched on small scale 'FOLIQAM' in large pack of 5 pouches under defendant's brand name in market. The defendants Nos.1 and 2 received notice under section 27 of the Trademark Ordinance 2001 issued in collusion with the plaintiff on the basis of forged and subsequent application for registration of 'FOLIQAM', affidavit in rejoinder was filed by the plaintiff.
5. ' Ms. Iqra Saleem learned counsel for plaintiff has contended that the plaintiffs right has been infringed on account of the acts of the defendants by using the trademark similar to that of the plaintiff thus the crucial question is whether the use of the word 'FOLIQAM' in the trading style of the defendant has infringed the trademark of the plaintiff? Learned counsel for the plaintiff further contended that the use of the word 'Pearls' by the defendant's in course of their business is an act of infringement of the right in terms of sections 39, 46(2) and (3), 67 of the Trademark Ordinance, 2007 and sections 7 and 8 of the Registered Designs Ordinance XLV of 2000. It came to the knowledge of the plaintiff in the second week of June, 2008 that an identical mark Foliqam Pearls has been marketed and distributed detriment to the plaintiff proprietor and commercial interest in its products by imitating deceptively similar trademark and packing. It is urged that the design of the capsules offered for marketing by the plaintiffs bears specific variations and cannot be adopted by the defendants, they are guilty of impeachment of using a registered trademark without the plaintiffs consent which has been creating deception in the minds of the wearying customers and would cause loss to the plaintiffs goodwill as well as trademark. Reliance is placed on:--
(1) Abdul Jabbar and another v. Ahmad Jan PLD 1973 Karachi 289.
(2) Zafar Farooq v. Raja Dil Nawaz Khan 2000 YLR 2351.
(3) Messrs Mehran Ghee Mills (Pvt.) Limited and others v. Messrs Chiltan Ghee Mill (Pvt.) Limited and others 2001 SCMR 967.
(4) Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant 1987 SCMR 1090.
(5) Bayer A.G. And another v. Macter International (Pvt.) Ltd. 2003 CLD 794.
(6) Pakistan Soap Factory v. Chittangong Soap Factory and another PLD 1970 SC 460.
(7) Oil and Gas Development Corporation v. Ltd. Col. Shujauddin Ahmed PLD 1970 Karachi 332.
(8) RPC 1957 Page 181.
(9) Seven up Company v. Assistant Registrar of Trademarks II and another 1992 CLC 694.
(10) Messrs Ghulam Muhammad Dossul & Co. v. Messrs Vulcan Co. Ltd. And another 1984 SCMR 1024.
(11) Abdul Wasim v. Messrs Haico through Sole Proprietor Partner and 2 others 2002 CLD 1623.
(12) Formica Corporation v. Pakistan Formica Ltd. 1989 SCMR 361.
(13) Ghulam Muhammad Dossal and Co. v. Vulcan Company Ltd. And another 1986 MLD 886.
(14) Messrs Team Nayyer (Pvt.) Ltd. And another v. Tariq Ahmed Sultani 2008 CLD 94.
(15) Messrs Select Sports A.S. Company v. Messrs Tempo Enterprises PLD 1998 Lahore 69.
(16) Messrs Hotel Galaxy (Private) Limited through Chief Executive and 2 others v. Messrs Days Inn Worldwide Inc. Through Signatory/Chief Executive 2004 CLD 1590.
(17) Messrs ADT Services AG through Attorney and another v. Messrs ADT Pakistan (Pvt.) Ltd.
6. Through Promoter and Director and 4 others 2005 CLD 1546.
(18) S. Muhammad Din and Sons v. Sh. Nabi Bakhsh and. Sons 1987 CLD 759.
7. ' Learned counsel for defendant's has contended that defendant No,2 has created its own brand which is distinctive in get up, color scheme, design calligraphy of the plaintiff in following terms:-
(1) Attractive and eye catching pack with red and dark pink color dominating.
(ii) One big and one small size' swa ns on front and back panels of the box. Objective of this was to create an identity of Foliqam.
(iii) Being proud of name Aqmar, we have prominently and boldly written the name Aqmar on all the four panels of the box.
(iv) Since Pink is more accepted color by females, we put our best efforts to develop Foliqam softgel capsules in pink color. This helped us to claim that our product Foliqam is totally different from the competitor.
8. ' Learned counsel for defendant's has also pointed out comparison on 'Foliqam' Bottles Pack v.
9. 'FOREVA' Bottle Pack. It is urged that from the cursory look of both the brands there are no similarities and both the brands are quite distinct and it cannot be said that the product is creating deception in the market.
10. I have considered the arguments advanced at bar. A review of the case-law cited at bar the principles set out for decision of the application are:--
(i) The plaintiff must establish its business consisting of a I class of goods;
(ii) The goods so sold has created a good-will in the mind of wary person;
(iii) And the goodwill owned by the plaintiff on account of the use of similar trademark by the defendants shows substantial damage to the plaintiffs business and goodwill.
11. ' For almost one year the defendants Nos.1 and 2 are continuously using bona fide concurrent use of its products 'Foliqam Pearls' not a single incident of deception has been placed on record by the aggrieved party. The plaintiff was intending to launch 'Foliqam Pearls' in use of the defendants Nos.1 and 2 for the last 10 months within the knowledge of the plaintiff as is established from annexures B-3, B-4, B-5, B-6, B-7, B-8 and B-37 annexed with the counter-affidavit on the back . Of 'FOREVA PEARLS' has been changed by Matrix in January, 2008 and 'FOREVA PEARLS' is available in pack of 60 each Softgel in blister form. It will not be out of place to mention that the mark of Foliqam is too old.
12. It is being used by the pregnant women of congenital abnormalities, which is sold in the market by many other companies such as Zafar, Nabil, Qasim, Abbot, Agb, Rg, Barbell, Hodgoson and others. It has also been pointed out that softgel capsules are imported by another competitor Forlive in rounded shape in pink colour capsules similar to that used by the defendants Nos.1 and 2 and there is nothing to suggest that the middle line in the capsules code certain right of registration as in all the capsules as middle lines are used to fill as a common features.
13. ' It has also revealed that the products of both the parties have not been registered under trademark registry and the applications are pending, thus the only question involved is in respect of passing off the products clothed with misrepresentation coupled with damages and goodwill.
14. Much of the emphasis has been placed on unreported order passed in case of Messrs Hero Motor Ltd. By a Single Bench of this. Court in Suit No,952 of 2005, in case of Bayer A.G. And another v.
15. Macter International (Pvt.) Ltd. 2003 CLC 794, adverting to the question of deception of question as to mark used by the defendants while determining the Test Phonetic similarity of trade name of pharmaceutical product. Generic name of a pharmaceutical product could not function as a trade name to indicate its origin, points to be considered by Court in arriving at the conclusion of fact as to whether deception or confusion was likely to be caused enumerated. Whether the defendants are selling the goods so marked by design calculated to lead the public to believe that they are the plaintiffs goods. It has further been observed as under:-- "The ultimate test is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff. The court has to compare the two marks with the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standard. The persons, who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject for consideration. The purpose of comparison is for determining whether the essential features of the plaintiffs trademark are to be found used by the defendant. When two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles with the plaintiffs registered trade mark that it is likely to deceive to cause confusion in relation to the goods in respect of which It is registered." .
16. ' That above rule would be applicable in judging the case of infringement but while dealing with the cases of drugs sold on prescription by the doctors, chemists and druggists, these factors assume much significance.
17. ' In the case of Abdul Wasim v. Messrs Haico through Sole Proprietor/Partner and 2 others 2002 CLD 1623, dictum laid down is that if the plaintiff could not claim any infringement of the trade mark which was not registered at the best plaintiff's claim fell on passing off action recognized in terms of section 20 of the Trademark Act, the right, if any, that could be claimed by the plaintiff was of 'passing-off action' on the basis of tendency of application as the right is always sub-servant to the right of exception as provided under sections 10(2), 22, 25 and 26 of Trade Marks Act, 1940.
18. So far as the question of the deception and confusion created in the minds of the general public is concerned besides the packing, logo and label, prima facie, it' is required to be judged with similarity has affected the business of the parties marketing the drugs, not a single instance has been produced to substantiate that with the use of product any loss has been caused to the plaintiffs business. It is not the plaintiffs case that he had sustained any loss due to the use of the similar product in the market with colour and scheme design and calligraphy marked by the defendant. This issue came up for hearing before Division Bench of this Court in High Court Appeal No,248 of 2006 for the use of the Trade Mark 'Master'. It was observed that the 'Master' is public juris owned by the public and not by a private person and when a thing is a private property anyone can make use of it as held in cases of 1987 CLC 1448, Multani Sohan Halva, Hussain Aghahi Multan v. Registrar of Trademarks, Karachi and another 2001 SCMR 967, Messrs Mehran Ghee Mills (Pvt.) Ltd.
19. And others v. Messrs Chiltan Ghee Mills (Pvt.) Ltd. And others. The plaintiff has emphasized much on the word 'Pearls' which is commonly used throughout the world. The label and the bottle used by the defendant is strikingly different with dominating features and brightly coloured therefore it will not effect the mind of the D public and would not cause loss to the business word goodwill of the plaintiff.
20. After the examination of the marks labels of both the parties as incorporated in the United Kingdom v. Mehran Bottlers (Private) Limited Karachi PLD 2000 Karachi 192, the well-established principles noted for deciding the question of similarity of the two marks I am of the view that over all similarities the touchstone and after adjudging both from the point of first impression of person of average intelligence the structure label, Phonetic, similarity or dissimilarity and then the wary purchasers should not put in a state of wonder what I am of the view that there is no possibility for an average wary customer to be deceived or confused from a product as the same is imported from the foreign country and both the labels E are distinct on account of colour scheme and the variation in the labels of both the parties, therefore, I am not inclined to grant of injunctive relief as claimed by the plaintiff, consequent thereof C.M.A.6872 of 2008 is hereby dismissed.