' NADEEM AZHAR SIDDIQI, J.---By this common order I propose to dispose of section 10, C.P.C.
Applications filed in all the above connected matters. Since the facts are identical in all the above four cases, therefore, it will suffice if facts of only one case are narrated for disposal of the said applications.
1. In all the above cases, the respondent/defendant No,1 has filed an application under section 10 of Code of Civil Procedure, 1908, praying that the proceedings in the above matters may be stayed pending decision of Suit No,571 of 2008 filed by the respondent No,1 and pending before the District Judge, Peshawar, being earlier in time.
2. Facts relevant for disposal of these applications are that the petitioner company claims to be established in Pakistan in the year, 2000 and trading inter alia as manufacturer and merchant of tissues/tissue papers. It applied for registration of the trade mark "Jasmine Tissues" and "Lilly Tissues" in its favour. The applications were numbered as 212860 and 212858 in Class 16 and acceptance letter for advertisement of the same were issued and the said trade marks were published in Trade Mark Journal dated 1-9-2007 in Class 16. It is claimed that as no objections were received from any quarter the said trade marks were registered in the name of the petitioner and certificates of Registration of Trade Mark and original Trade Mark Certificates in the name of the petitioner were issued on 1-3-2008 by respondent No,3. Subsequently, the petitioner came to know that Respondent No,1, with the connivance of respondent No,3, has obtained the registration of said trade marks in its favour accordingly, the petitioner sent a legal notice to respondent No,1 on 11-3- 2008 which was not replied. The petitioner sent another legal notice to respondent No,1 calling upon it to desist from using its trade marks and to pay a sum of Rs,85,000,000 as damages on various counts. Since the respondent No,1 failed to pay any heed to the same, the petitioner filed the above mentioned J. Ms. With the following prayer in the J.M. No,18 of 2008:---
(a) Expunge from the Register of Trade Marks, Registration of the Trade Mark registered under No,184817 in Class 16 in the name of the respondent No,1 and direct the respondent No,3 to rectify the Register of Trade Mark accordingly.
(b) Declare the entry of trade mark "Jasmine Tissues" registered under No,184817 in Class 16 in the name of the respondent No,1 as invalid under section 80 of the Trade Mark Ordinance, 2001.
(c) Grant ad-interim orders and suspend the operation of the registered certificate of Trade Mark under No,184817 in Class 16 in the name of respondent No,1 till the final decision of this application.
(d) Cost of the proceedings be awarded.
(e) Any such other relief as this Honourable Court may deem fit and proper under the circumstances of the case."
' Petitioner also filed two suits, bearing Nos.571 of 2008 and 572 of 2008. The prayer in Suit No,572 of 2008 reads as under:--
(a) For permanent injunction, restraining the defendants by themselves or through their servants, agents, dealers, affiliates or otherwise whosoever from infringing the Trade Mark "Jasmine Tissues" of the plaintiff registered inter alia under Application No,212860 in Class 16 and 212861 in Class 3 and from manufacturing, marketing, selling, offering for sale, advertising or otherwise passing of the defendants products by themselves or through their servants, agents, dealers, affiliates or otherwise whosoever as and for the product of the company or their affiliates having a business connection with the plaintiff, by use of the said Trade Mark consisting or comprising the word "Jasmine Tissues" or any other mark similarly or likely to be similar or closely resembling the plaintiff trade mark "Jasmine Tissues" as to be likely (to) deceive or cause confusion.
(b) For an order that the defendant do account for the profit wrongfully made by it by the use of the Trade Mark "Jasmine Tissues" which is similar and imitation of plaintiff Trade Mark "Jasmine Tissues" along with specific calligraphic style and get up.
(c) That the defendants to surrender to this Honourable Court all dies, blocks, films and other material used for in relation to the defendants products under the adopted mark of "Jasmine Tissues" and all goods infringing the Trade Mark registered inter alia under Application No,212860 in Class 16 and 212861 in Class 3 for destruction by this Honourable Court.
(d) That the defendants jointly or severally to pay to the plaintiff sum of Rs,85,000,000 (Rupees Eighty Five Million) as damages with interest thereon at 14% per annum from the date of the suit till payment.
(e) Cost of the suit.
(t) Such other relief as this Honourable Court may deem fit and proper under the circumstances of the case."
3. The above J.M. No,18 of 2008 and Suit No,572 of 2008 are in respect of trade mark "Jasmine Tissues" while J. M. No,14 of 2008 and Suit No,571 of 2008 are in respect of trade mark "Lilly Tissues".
4. For the sake of convenience and clarity, from here onwards I will only refer to the facts of J.M.
No,18 of 2008.
5. This J.M. Came up for hearing on 12-5-2008 when notices were ordered to be issued to the respondents in response to which respondent No,1 filed counter affidavit to the main application as well as the listed application under section 10, C.P.C. For stay of the proceedings in this J.M., as stated above.
6. I have heard Mr. Nadeem Qureshi and Mr. Ahmed Hasan Rana, Advocates for the petitioner and Mr. Amir Javed and Mr. Saleem Merchant, Advocates for respondents Nos.1 and 3 respectively. None appeared for respondent No,2.
7. Learned counsel for respondent No,1 stated that respondent No,1 is the prior user of the trade mark "Jasmine Tissues" since 2003 and is also holding prior registration of the said trade mark vide application dated 18-4-2003 whereas the petitioner applied for registration of the said trade mark in its favour in 2005. However, when the petitioner issued legal notice to respondent No,1 in respect of the said trade mark the respondent No,1 filed Suit No,5/1 of 2008 in the Court of District Judge Peshawar being Special Court under Trade Marks Ordinance, 2001 for restraining the petitioner from alleging, proclaiming or using the trade marks "Jasmine Tissues" and "Lilly Tissues" and to further restrain the petitioner from threatening the distributors of respondent No,1 and damaging its market/customer good will and credibility. He prays that since the suit of respondent No,1 pending before the competent court at Peshawar is earlier in time, therefore, in view of the provisions of section 10, P.P.C. This J.M. Along with J.M. No,14 of 2008 and Suits Nos.571 of 2008 and 572 of 2008, may be stayed.
8. Apart from the above, learned counsel further stated that in view of provisions of sections 73(4)
(a), 80(4)(a) and 96(2)(a) of the Trade Marks Ordinance, 2001, in case the petitioner wanted to file any proceedings/application for rectification or correction of Register or for declaration of the trade mark as invalid on the ground that the same was registered in breach of Section 14 of the Trade Marks Ordinance or any other application the same should have been filed before the District Judge at Peshawar where the proceedings concerning the same trade marks are pending.
The learned counsel has relied upon the following reported cases:---
(1) Muhammad Younus v. Shaukat Ali, 2003 CLD 1037, (2) Standard Finis Oil Co. Ltd. v. National Detergent Ltd. And others 1984 CLC 781 and (3) National Distribution Company v. National Detergent Ltd. PLD 1983 Kar.
402.
9. Learned counsel for respondent No,1 also touched the merits of the case but I would refrain from making any observations on the merits of the case so as not to prejudice case of any of the parties.
10. Mr. Nadeem Qureshi, learned counsel for the petitioner, submitted that for staying a subsequent suit there are five ingredients and in case any one of them is absent, stay under section 10, C.P.C.
Cannot be granted. He submitted that the relief claimed in the proceedings pending before District Judge, Peshawar are altogether different from the relief claimed in these proceedings and that since the Trade Marks were registered at Karachi the proceedings pending at Peshawar are not maintainable and on the basis of proceedings which are not maintainable the proceedings pending at Karachi cannot be stayed. The learned counsel has relied upon the following reported cases:--
(1) Salim Industries v. Burhani Trading Co. And others 1982 CLC 973, (2) Habib Bank Ltd. v. Ali Mohtaram Naqvi PLD 1987 Kar. 102, (3) Mahmood Ahmad v. Karachi Road Transport Corporation PLD 1970 Kar. 41, and (4) Dr. Haider Ali Mithani and another v. Ishrat Swaleh and others PLD 1999 Kar.
81.
11. Mr. Saleem Merchant, learned counsel for respondent No,3, stated that the first application for registration of the said trade mark was made by respondent No,1 on 18-4-2003 while the first application by the petitioner in respect of the same was made on 24-8-2005. On 16-6-2007 registration certificate was issued to respondent No,1 while registration certificate was issued to the petitioner on 1-3-2008. He stated that the application of the respondent No,1 was accepted for advertisement on 1-4-2005 but the same was published on 20-6-2006. He then submits that the petitioner did not file any opposition to the same.
12. Before proceeding any further, it is advisable that first the objection regarding maintainability of the suit before District Judge, Peshawar may be decided. So far as the objection regarding maintainability of the suit on account of its filing before District Judge Peshawar, while the trade mark was registered at Karachi is concerned, the same is not tenable as in view of the provisions of clause (c) to section 20, C.P.C. a suit can be instituted in a Court within the local limits of whose jurisdiction the cause of action, wholly or in part, arises. In the instant case, admittedly, legal notices were sent to the defendant No,1 at its address at Peshawar and thus cause of action if not wholly then in part accrued to the defendant No,1 at Peshawar and as such the defendant No,1 was justified in filing the suit before District Judge Peshawar who is otherwise competent to take cognizance of cases relating to trade marks in view of section 117 of the Trade Marks Ordinance, 2001 which provides that no suit for infringement of a trade mark or otherwise related to a right in a trade mark shall be instituted in any Court interior to a District Court having jurisdiction to try the suit.
13. In order to analyze and appreciate the respective contentions of the parties in respect of the listed application under section 10, C.P.C., it would be advantageous to reproduce section 10, C.P.C., which reads as under:-- "Section 10. Stay of Suit.--- No Court shall proceed with trial of any suit in which the matter in issue is also directly and substantially in issue in a previously instituted suit between the same parties, or between parties under whom they or any of them claim litigating under the same title where such suit is pending in the same or any other Court in Pakistan having jurisdiction to grant the relief claimed, or in any Court beyond the limits of Pakistan established or continued by the Federal Government and having like jurisdiction or before the Supreme Court."
14. From the above quoted provisions of section 10, C.P.C., and after perusal of case law available on the subject, it can be gleaned that the main ingredients for invoking the provisions of section 10, C.P.C. Are as under:---
(1) The matter in issue in both suits must be directly and substantially the same in both the proceedings.
(2) That the previously instituted suit is pending in a Court of competent jurisdiction.
(3) The Court before whom the previous suit is pending must be competent to grant relief in the subsequent suit.
(4) Both the suits, i,e, the previous and the subsequent suits must be between the same parties or their representatives.
(5) The parties must be litigating under the same title.
15. The intention and spirit behind the scheme of section 10, C.P.C. Appears to avoid duplication of trial on the same cause of action and to obviate conflict of decisions as well as unnecessary labour on adjudication of a common suit.
16. Apart from the above, the mechanism provided in the Trade Marks Ordinance, 2001 also envisages that multiplicity of proceedings must be avoided. In this connection section 73 of the Trade Marks Ordinance deals with Revocation of registration of a trade mark, subsection (4)(a) thereof reads as under:--- "73. Revocation of registration.
(4) An application for revocation may be made by an interested party to the Registrar, except-
(a) if proceedings concerning the trade mark in question are pending in the High Court, or a District Court, the application shall be made to the High Court, or, as the case may be, the District Court;"
17. Similarly, section 80 of the Trade Marks Ordinance deals with grounds for invalidity of registration and subsections (4)(a) thereof reads as under:--- "80. Grounds for invalidity of registration.
(4) An application for declaration of invalidity may be made by an interested party either to the Registrar or to the High Court or a District Court, except that--
(a) if proceedings concerning the trade mark in question are pending in the High Court or a District Court, the application shall be made to the High Court or a District Court."
18. In the same manner, section 96 of the Trade Marks Ordinance deals with rectification or correction of Register, clause (a) of subsection (2) thereof reads as under:-- "96. Rectification or correction of Register:--
2. An application for rectification may be made to the Registrar, except that---
(a) if proceedings concerning the trade mark in question are pending in the High Court or a District Court, the application shall be made to the High Court or a District Court."
19. A perusal of the above quoted provisions of the Trade Marks Ordinance clearly shows that the intention of the legislature is to avoid multiplicity of proceedings is in all the above quoted provisions the mandatory word "shall" has been used. Thus, in case any one wants to file an application in respect of a trade mark and some proceedings are already pending in respect of the same trade mark in any Court, the application has to be filed in the same Court where the proceedings are pending and the same cannot be filed in any other Court.
20. In view of the above quoted provisions of clause (a) of subsection (2) of section 96, clause (a) of subsection (4) of section 80 and clause (a) of subsection (4) of section 73 of the Trade Marks F Ordinance, 2001, all the above applications/proceedings should have been filed before the District Judge Peshawar where the proceedings are already pending in respect of the said trade marks.
21. A perusal of the prayer clause of the instant J.M. Reveals that the petitioner seeks expunction of trade mark registered under No,184817 in favour of the respondent No,1 from the Register of Trade Marks, declaration of entry of trade mark in question in the name of respondent No,1 as invalid, and suspension of the operation of the registered certificate of Trade Mark under No,184817 in Class 16 in the name of respondent No,1 till final decision of this application.
22. On the other hand, the prayer clause of the suit filed by the respondent No,1 before District Court, Peshawar reveals that the plaintiff therein has prayed for (a) a declaration that the plaintiff/respondent No,1 is the exclusive registered manufacturer as well as prior registered user of the Trade Mark under the name and style of Jasmine Tissues and Lilly Tissues vide Registration No,184187 and 192484 dated 8-4-2003 and 8-3-2004 respectively and (b) that the alleged subsequent registration of the same trade mark in favour of respondent No,1/petitioner herein, its use by said respondent is illegal, without jurisdiction and of no legal effect,(c) declaration that any assertion, proclamation or declaration of respondent No,1 (petitioner herein) against the registered trade marks of petitioner (respondent No,1 herein) and (d) permanent injunction against respondent No,1 (petitioner herein) in respect of the said trade marks.
23. So far as the contention of the learned counsel for the petitioner II that the reliefs claimed in the suit at Peshawar and this JM are different, the same will not be a hindrance in passing an order under section 10, C.P.C. As in view of the above quoted provisions of Trade Marks Ordinance, the petitioner is at liberty to file any application concerning the said trade marks before the District Judge at Peshawar where earlier suit concerning to the trade marks are pending and the same will be decided on its own merits.
24. So far as the prayer clauses in the suits are concerned, the same also depend on the fate of the suit pending before the District Judge Peshawar as without deciding the rightful owner of the said trade marks no decree in the said two suits can be passed.
25. The upshot of the above discussion is that in case the suit at Peshawar is decided in favour of the defendant No,1 then the same will operate as res judicata in this J.M. As well as in the other J. M.
And the suits filed by the petitioner herein before this Court and, therefore, no purpose will be served by proceeding with same separately as it would be an exercise in futility. However, if the suit filed by the defendant No,1 at Peshawar is dismissed, and in case applications for invalidity and rectification or correction in the Trade Marks Register are filed by the petitioner in that Court where proceedings concerning the trade marks are pending, the petitioner may be able to obtain the relief claimed in these J.Ms. And the suits. Otherwise, the petitioner will be at liberty to proceed with this J.M. And the other cases filed by him before this Court.
26. Now, reverting back to the provisions of section 10, C.P.C. And the ingredients required for passing of an order thereunder, as enumerated above. The matter in issue in both the cases i,e, question of proprietary of the trade mark "Jasmine Tissues" and "Lilly Tissues" is the same, the previously instituted suit filed by defendant No,1 at Peshawar is pending before a competent Court, as observed above, who is also competent to grant the relief in the subsequent suit, both the cases are between the same parties and they are litigating under the same title. Thus, all the five ingredients, requisite for passing of an order under section 10, C.P.C. Are present.
27. Even otherwise, it is well settled principle of law that if all the above-mentioned conditions are fulfilled then the subsequent suit must be stayed under provisions of section 10, C.P.C. However, in case any one of the above mentioned conditions are not present even then the subsequent suit can be stayed under section 151, C.P.C. In the interest of justice as held in a number of authorities, provided that the decision in the previously instituted suit would attract the provisions of section 11, C.P.C. Reliance is placed on Salim Industries Limited v. Messrs. Burhani Trading Company and another 1982 CLC 973.
28. In view of the above, this application as well as applications filed under section 10, C.P.C. In J. M.
No,14 of 2008 and in Suits Nos.571 and 572 of 2008, are allowed and the proceedings in this JM as well as in the above mentioned JM and the suits, are stayed till disposal of the Suit No,571 of 2008 pending adjudication before District Court Peshawar.
29. The interim order passed in these proceedings will continue to operate till the final disposal of the suit filed by the respondent No,1 before the District Judge Peshawar. It may, however, be clarified that if the said suit is decided in favour of the respondent No,1 i,e, Messrs International Marketing Company, then the interim orders shall be treated as withdrawn without any further orders in this regard and the respondent No,1 will be at liberty to use the said trade marks. But, if the said suit is dismissed then the interim orders will remain operative and binding on Respondent No,1 till disposal of the above JMs and Suits.