AMIR HANI MUSLIM, J.---Through C.M.A. No,230 of 2006 and 7942 of 2006, listed at serial Nos.1 and 3 respectively, the plaintiff seeks restraining order against the defendant No,1, inter alia, on the ground that the plaintiff is the owner of trade mark 'EXIDE' and defendant No,1 is manufacturing the same in Pakistan under the orders of one Messrs Chloride Batteries South East Asia (Pvt.) Limited, which is foreign based Company also claims to be the owner of the trade mark of EXIDE Batteries registered in Singapore.
2. The learned counsel for the plaintiff has submitted that the defendant No,1 has admittedly manufactured batteries under their trade name 'EXIDE' in Pakistan. In this respect, he has filed with the plaint a number of documents, inclusive of Certificate of Registration in favour of the plaintiff issued by the Assistant Registrar of Trade Marks, reflecting that the plaintiff is the owner of the registered trade mark 'EXIDE'.
3. On the other hand, the learned counsel for the defendant No,1 has submitted that manufacture of batteries under the trade mark 'EXIDE' does not amount to infringement of the right of the plaintiff unless it is shown that the batteries are sold in Pakistan. He submitted that their principal Messrs Chloride Batteries South East Asia (Pvt.) Limited, Singapore, is the owner of registered trade mark 'EXIDE' and has placed orders of defendant No,1 to supply them batteries under their trade mark which they have manufactured and exported. The learned counsel for the defendant No,1 further submits that they have not infringed the rights of the plaintiff under the law and they themselves are the manufacturers of the batteries under the name of VOLTA and OSAKA.
4. The two other C.M.As. Nos.7623 of 2006 and 7856 of 2006, which are listed at serial Nos.2 and 4, are filed by the defendants Nos.2 and 3 for deletion of their names as according to Mr. Raja Muhammad Iqbal, Advocate, the Federal Government has not been impleaded as party and instead Collector and Deputy Collector of Customs have been impleaded as the defendants Nos.2 and 3 and plaint against them be rejected.
5. Admittedly, the plaintiff is the owner of the registered trade mark 'EXIDE' in Pakistan and it is also an admitted fact that the defendant No,1 has received orders from Messrs Chloride Batteries South East Asia (Pvt.) Limited, Singapore, for the manufacture of the batteries in the name of 'EXIDE'. The documents filed along with the written statement and the counter-affidavit by the defendant No,1 show that Messrs Chloride Batteries South East Asia (Pvt.) Limited, Singapore, is the registered owners of trade mark 'EXIDE' in Singapore.
6. The learned counsel for the defendant No,1 submits that under the Trade Marks Ordinance, 2001, manufacture of goods/batteries in the trade name of 'EXIDE' in no way infringe the rights of the plaintiff unless it is shown that the batteries are sold and or used in Pakistan. His next contention was that under section 53 of the Trade Marks Ordinance, 2001, exports of goods manufactured in Pakistan is permissible and the law does not bar export of 'EXIDE' batteries under the Trade Marks Ordinance, 2001, irrespective of the fact that the owner of such registered trade mark has not consented to the export. He has also relied upon section 39(2) of the Trade Marks Ordinance, 2001, which speaks of exclusive rights of registered owner, which only restricts the use of the mark in Pakistan without his consent. The learned counsel for the defendant No,1 submits that the restriction of use under section 39(2) of the Trade Marks Ordinance, 2001, does not extend to cover use of such item outside Pakistan.
7. On the other hand, the learned counsel for the plaintiff has relied upon section 5(2) of the Trade Marks Ordinance, 2001, which speaks of application in Pakistan of a trade mark to goods or services to be exported from Pakistan. Additionally, he has also relied upon section 40(1) of the Trade Marks Ordinance, 2001, which speaks of infringement of registered trade mark. He has submitted that once a trade mark is registered in the name of a party in Pakistan than any other party cannot even manufacture the same in Pakistan and according to him the stand taken by the learned counsel for the defendant No,1 that it only restricts the sale, is contrary to the language of section 40(1) of the Trade Marks Ordinance, 2001.
8. I have heard the learned counsel and have perused the record. It is correct that the defendant No,1 has received the orders but the question is whether the provisions of Trade Marks Ordinance, 2001, permits him to manufacture batteries in the trade name of the plaintiff in Pakistan, which is admittedly owned by the plaintiff. Section 40 of the Trade Marks Ordinance, 2001, covers the instances and provides details of the infringements. Under section 40(1) of the Ordinance a person shall infringe a registered trade mark if such person uses in the course of trade, a mark which is identical with the trade mark in relation to goods or services, which are identical to those, for which it is registered. In this section the words used 'if such person uses in the course of trade, a mark which is identical' does not exclude manufacture of the goods in Pakistan though the word 'user' has been mentioned. The word 'use' in the course of trade would preclude the manufacturer from manufacturing such goods in Pakistan if such trade mark is owned by a party in Pakistan.
9. The argument of the learned counsel for the defendant No,1 that section 53 does not preclude them from exporting batteries under the trade mark 'EXIDE' but restriction has been imposed for import only does not appeal to reason. His further submission that section 53 read with section 39(2) of the Trade Marks Ordinance, 2001, make it clear that manufacture in Pakistan on the orders of owners of trade mark in Singapore would in no way violate the rights of the plaintiff is also without force. In the face of the language of section 40(1) of the Trade Marks Ordinance, 2001, such an argument by the learned counsel for the defendant No,1 if accepted would defeat the rights of the owner of trade mark granted under section 40 of the Ordinance.
10. Additionally, the provisions of Trade Marks Ordinance, 2001, are to be read in addition to not in isolation of the law for the time being in force. Section 15(c) of the Customs Act prohibits and restricts import as well as export of goods. Infringement of the right of an owner of trade mark under the Trade Marks Ordinance, 2001, are also covered and such infringement is made subject to the action under section 32 of the Customs Act. The trade mark of the principal of the defendant No,1 which has been registered under Singaporean Law would be subordinate to the provisions of the Trade Marks Ordinance, 2001 in Pakistan and on the basis of such a claim the defendant No,1 cannot manufacture batteries in the trade name of plaintiff, which, ex facie, would be violative of provisions of section 40(1) of the Trade Marks Ordinance, 2001.
12. For the afore-said reasons, I am of the view that the defendant No,1 in law has no authority to manufacture batteries under the trade name of `EXIDE' on the strength of an order placed from abroad. C.M.As. No,230 of 2006 and 7942 of 2006 are allowed and the defendant No,1 is restrained from accepting any such order by which right of plaintiff as owner of registered trade mark `EXIDE' is infringed in terms of section 40 read with section 39 of the Trade Marks Ordinance, 2001.
13. In regard to C.M.As. Nos.7623 of 2006 and 7856 of 2006 filed by the defendants Nos.2 and 3 for rejection of plaint on the ground that plaintiff has failed to implead the Federal Government are concerned, the plaintiff is granted two weeks' time to amend the title of the plaint by impleading the Federal Government as party. In case the plaintiff fails to amend the title of the plaint within afore-said period, suit against defendants Nos.2 and 3 shall stand dismissed.