' KHALID ALI Z. QAZI, J.---C.M.A. No,7989 of 2005: This is an application under Order XXXIX Rules 1 and 2 read with section 151, C.P.C. Praying therein to restrain the defendant from manufacturing, selling, supplying, exporting, distributing and/or marketing matchboxes by using the plaintiffs exclusive trademark i,e, "Three Coins Safety Matches" pending final disposal of the instant suit.
2. It is imperative to narrate brief facts necessary for disposal of the listed application as stated in the memo. Of plaint are that the plaintiff is a partnership firm involved in the export of general merchandize and pharmaceutical products since 25-6-1998. It is further added that, the plaintiff after obtaining the search report from the Registrar of Trade Mark, has applied for the trade mark 'Three Coins Safety Matches" in the clause (34) of the Pakistan Trade Mark Act,. 1940 under No,188222 dated 4-10-2003 of Trade Mark Registry, Karachi, therefore the plaintiff is proprietor of the trademark "Three Coins Safety Matches" and is user of the trade mark since January, 2003. It is stated that it has come to the knowledge of the plaintiff that the defendant is producing and manufacturing the same brand in Peshawar and has dispatched from Peshawar to Karachi a cargo of one consignment and is currently in the process of dispatching two more containing matchboxes for the purpose of exporting to a foreign customer. The goods sought to be sold and exported by the defendant are phonetically and visually identical to the plaintiffs trademark which is likely to cause confusion and deception amongst the unwary consumers and traders.
3. It is further alleged in the plaint that the plaintiff has exported the safety matches with its exclusive trade marks on it to the several countries and therefore, earned, created, and established goodwill associated with its trademark amongst its customers. The customers recognize "Three Coins Safety Matches" as the plaintiffs brand. The defendant is unlawfully capturing the plaintiffs market share by selling/exporting matchboxes using plaintiffs trademark.
4. It is further alleged that since the defendant has sold out/is selling the safety matches in the name of "Three Coins Safety Matches" which is the plaintiffs trade mark, so the defendant has damaged plaintiffs repute and goodwill in the market, therefore, the ,plaintiff is also entitled to the damages amounting to Rs,5,000,000.
5. The defendant by filing written statement has disagreed the averments alleged by the plaintiff supra and stated that the answering defendant since April, 2003 is doing business of safety matches under the trademark i,e, 'Three Coins Safety Matches" and is sole agent of the various Traders locally and internationally for the sale and manufacturing of the product under the trademark (un-registered) "Three Coins Safety Matches" and is in process for applying for registration in Pakistan. It may be noted that Asim Match (Pvt.) Limited, the answering defendant is proprietor of the product since last two years and has been manufacturing and marketing and selling quality product throughout world, including Pakistan. By virtue of high quality of product it has acquired wide reputation and considerable goodwill in its business. Goods bearing the trademark i,e, "Three Coins Safety Matches" of the answering defendant are very populated and in great demand among the consumer public and traders alike.
6. It is further stated by the defendant that over the said years the trademark 'Three Coins Safety Matches" has developed a very large market in Pakistan and outside of Pakistan also for its products which are sold under the said trademark. The said trademark adopted after conducting thorough search in the market and in the trademarks register. The said trademark has also been continuously and extensively used by it since last two years. Due to the long and extensive use of the trademark "Three Coins Safety Matches" by Asim Match and by virtue of it's quality the said Trademark in Pakistan it has become distinctive of the Asim Match product so much so that the said trademark has become associated in the minds of consumers throughout Pakistan and outside Pakistan as emanating from Asim and the product in relation to which it is used as the product of Asim Match.
7.. It is further submitted that the plaintiff is neither in fact a real user of the product nor real exporter of the product but he is doing business in a nature that he collects the famous unregistered trade mark from the market and just for making a ground for registration of the trade mark exports few consignments and files the application in Trade Mark Registry and then takes advantage of the established market of the real user, manufacturer and exporters of the various trademark, filed the suits of above titled nature and takes the undue advantages with mala fide intentions. Any direction to the plaintiff to such effect if, may be given to the plaintiff to file details of the application and suits which he has filed will clearly reflects such position.
8. I have heard Mr. Shahzad Ashraf learned counsel for the plaintiff and Mr. Neel Keshav, learned counsel for the defendant, perused the material available in the record and the relevant case-law on the subject.
9. Mr. Shahzad Ashraf, learned counsel for the plaintiff has reiterated the same facts as stated in the memo. Of plaint. However, he contended that the suit has been filed for permanent injunction and damages as the defendant is using duplication of the plaintiffs mark which would thus deceive the common man causing losses and damages to the plaintiff. He also contended that both the packets are more or less identical, therefore, this is enough for the Court to grant injunction. In support of his arguments, learned counsel has placed reliance on the cases of Tapal Tea (Private) Company Limited v. Shahi Tea Company 2002 CLD Karachi 113 and Messrs Mehran Ghee Mills (Pvt.) Limited and others v. Messrs Chiltan Ghee Mill (Pvt.) Limited and others 2001 SCMR 967.
10. On the other hand, Mr. Neel Keshav learned counsel for the defendant argued that the answering defendant is doing business of safety matches since April, 2003 and is sole agent of various traders locally and internationally for the sale and manufacturing of the product under the trademark (Unregistered) "Three Coins Safety Matches" and is in process for apply for registration in Pakistan. He contended that due to the long and extensive use of the trademark "Three Coins Safety Matches" by defendant and by virtue of its quality they said trademark in Pakistan it has become distinctive of the defendant's products so much so that the said trademark has become associated in the mind of consumers throughout Pakistan and outside Pakistan as emanating from Asim Match. He vehemently contended that the plaintiff is neither in fact a real user of the product nor real exporter of the product but he is doing business in a nature that he collects the famous unregistered trade mark from the market and just for making a ground for registration of the trade mark exports few consignments and files the application in Trade Mark Registry and that takes advantage of the established market of the real user, manufacturer and exporters. Of the various trade mark, files the suits of the above nature and takes the undue advantage with mala fide intention. He also contended that the trademark of plaintiff has not yet been registered, therefore not only the application but the suit is also liable to be dismissed with compensatory cost. In support of his contentions, learned counsel has placed reliance upon the cases of Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant 1987 SCMR 1090, Anwer v. The Goldan Pen Manufacturing Company PLD 1955 Sindh 345 and Dabur India Limited v. Hilal Confectionary (Pvt.) Limited PLD 2000 Karachi 139.
11. I have given due consideration to the arguments advanced by the learned counsel for the parties and perused the material available on record, which goes to show that packets of both the parties have the same colour, get up and design, which appears to be in the words "Three Coins Safety Matches". So far the objection raised by the defendant regarding non-registration of plaintiffs product is concerned, it is noted that the application for registration of trade mark of the plaintiff is pending before the competent authority. It seems that trade mark "Three Coins Safety Matches" is being used by the plaintiff since January, 2003 and while the defendant is also using the same trade mark since April, 2003. It would also be seen that the defendant did not care to file any objection/opposition on there plaintiff s application for registration of its trademark in the Karachi Registry or in Trade Mark Journal. As regards the cases cited by the learned counsel for the defendant in support of his contentions, in my humble opinion are not applicable on present case as the facts are distinguishable.
12. In the case of Mehran Ghee Mills (Pvt.) Ltd. (supra), it was held by Honourable Supreme Court of Pakistan that to constitute infringement it is not necessary that whole of the mark to adopt. The infringement will be complete if one or more dominating features of a mark are copied of. If there is a striking resemblance, ex facie it would lead towards the conclusion that the mark has been infringed. In present case, the defendant admitted in written statement that he is doing business of Safety Matches under the disputed trademark since April, 2003.
13. In the supra case, it was also considered whether temporary injunction could be granted in spite of the fact that trade mark has yet not been registered. The Honourable Supreme Court held that under section 23 of the Act, registration of a trade mark is a prima facie, evidence of its validity. On this point, in the case reported as P.L. Anwar Basha v. M. Natarajan AIR 1980 Madras 56, the following was held:-- "A suit for infringement of trade mark when an application for registration is pending on the date of plaint is competent even if the trade mark is registered pending the suit because under section 23 of the Act the date of registration should be taken to be the date of application which the certificate of registration has to bear."
14. It is noted, that admittedly, the application for registration of trade mark of plaintiff is pending before the competent authority vide No,188222 dated 4-10-2003 while the defendant has not filed any opposition before the competent authority and has not filed their own application for the registration of disputed trade mark in their favour. Under the circumstances the suit is maintainable for the alleged infringements. A strong prima facie case is established, balance of convenience is in favour of the plaintiff and plaintiff will suffer irreparable loss if injunction is not granted.
15. In the light what has been discussed above, C.M.A. No,7989 of 2005 is granted with no orders as to costs. Interim order passed earlier is confirmed.