1. ' MRS, SYEDA TAHIRA SAFDAR J.---The appellant, feeling aggrieved of order dated 18-2-2011, of Additional District Judge-IV, Quetta, whereby the application filed under the provisions of Order XXXIX, Rules 1 and 2, Civil Procedure Code (C.P.C.), was granted in favour of respondent No,1, thereby the appellant is restrained from "launching/bringing the product in the name of "FRUTTI" (INSTANT JUICE POWDER) and the respondent No,2/ defendant No, 2 is restrained from releasing the said product in favour of the respondent No,1 /defendant under sections 39 to 41 of the Trade Marks Ordinance 2001, subject to furnishing surety by the plaintiff-applicant in the sum of Rs,10,20,000 in accordance with the section 55 of the Trade Marks Ordinance 2001 before the court."
2. ' The appellant assailed the order on the ground that despite the fact that the respondent No,1 filed the suit without having any vested right, legal title or character about the consignment of 3348 cartons of "FRU'TTI" Flavored Instant Drink Powder, the suit has been filed only to harass, and blackmail the appellant. It is further contended that the trial court having no jurisdiction in the matter, while respondent No,1 had already availed the remedy before Collector Customs, Balochistan, by way of filing complaint, which was entertained, and found baseless. The main suit was not maintainable, and liable for dismissal. It is further contended that the consignment in question was lawfully imported by the appellant having different trade mark product, which has already been observed by the Customs Authorities. Despite the fact respondent No,1 with mala fide intention filed instant suit for illegal gains. It is also contention of the appellant that the Trade Mark Registry, Karachi had never issued any registration certificate in . Favour of respondent No,1, rather only the application submitted by respondent No,1 was processed. It is further contended that the trial court while misinterpreting the relevant provisions of law, made an order thereby restrained the appellant, which caused irreparable loss to him. It is, therefore, prayed that impugned order be set aside, while application for interim injunction be dismissed.
3. ' The learned counsel for the parties are heard at length, and documents attached with the appeal are perused. The learned counsel for the appellant argued that the product, imported by the appellant, is absolutely different from the product, which has been imported by respondent No,l.
4. Further, there is non-compliance of the legal requirements on part of respondent No,1, as no undertaking/ surety was given by the respondent No,1 while filing the complaint as required, thus he is not entitled for the relief claimed. It was further argued that the respondent No,1 is not the owner, rather his status is only of a distributor of the goods, while as per relevant provisions of law only owner can give notice for infringement of registered trade mark. It is argument of the learned counsel that the appellant is lawful importer of the goods in question, thus entitled to utilize the same. It is further his argument that the provisions of Trade Marks Ordinance, 2001 are not applicable in respect of imported goods. It was his argument that the suit was incompetent, which was required to be dismissed, and he (appellant) has made no violation of law by importing the goods in question, thus no restraining order can be made to deprive him from his legal right.
5. Replying to the arguments advanced by learned counsel for the appellant, the learned counsel for the respondent No,1 strongly asserted that the trade mark has already been registered in favour of respondent No, 1 under relevant law. Further, there is also a Certificate of Registration of Copy Right bearing No,220J0-COPR in his favour. It is further contended that the product in question, which has been imported by the appellant, is similar to that of the product of respondent No,1, to which extent Trade Mark has already been registered. It was his argument that the appellant is not holder of a registered trade mark, therefore, not entitled for any relief. He strongly refuted the arguments and asserted that there is no concealment of facts, nor there is any mala fide on his (respondent No,1) part. In addition, surety, as required under impugned order, has already been filed by him.
6. ' According to the record, the respondent No,1 /plaintiff filed a suit seeking declaration, and permanent injunction thereby claiming himself to be sole distributor of product known as "FRUTTI"
7. AND "TOP JUICES" (INSTANT JUICE POWDER) for Pakistan, with contention that the product has been imported after completing all the legal formalities, while huge amount is being invested in the business. It is further pleaded that respondent No,1/plaintiff applied for registration of trade mark to the Government of Pakistan, Intellectual Property Organization Trade Mark Registry, whereupon Trade Mark with registration No,245780 was allotted to him, publication was also made in same respect in daily newspapeRs, It is his contention that the produce i.e. "FRUTTI" AND "TOP JUICES"
8. (INSTANT JUICE POWDER) is already registered, therefore, no one can use the same name, as required under law, but the defendant/appellant is trying to introduce a low standard product in the market just to defame his company, and loss to his name, and logo. It is also pleaded that having knowledge of the same, the matter was reported to the concerned Authorities, but no concrete steps were taken in same respect by the concerned Authorities, resultantly instant suit has been filed by the plaintiff/respondent No,l. In reply defendant No,1 (present appellant) strongly contested the plea taken by the plaintiff/respondent No,1 in the suit, and denied issuance of any registration certificate by Trade Mark Registry Karachi in favour of the plaintiff/respondent No,l. The plaint was accompanied by an application under the provisions of Order XXXIX, Rules 1 and 2, C.P.C.
9. For grant of interim injunction, which was allowed by the learned trial court through order dated 18- 2-2011 in terms as mentioned hereinabove, which is impugned in present appeal. In present case, the matter in dispute is use of similar Trade Marks. The plaintiff/ respondent No,1 claimed his right being possessor of a registered Trade Mark, which has been infringed, by the act of the appellant, therefore, claimed violation of his right existed in his favour under provisions of Trade Marks Ordinance, 2001. Section-39 of the Trade Marks Ordinance, 2001, is relevant in the matter in hand, as it describes the rights conferred by registration of a trade mark in favour of a person. It reads as under:- "39. Rights conferred by registration.---(1) A registered trade mark shall be personal property.
(2) The proprietor of a registered trade mark shall have exclusive rights in the trade mark which are infringed by use of the mark in Pakistan without his consent.
(3) Without prejudice to the rights of the proprietor of a registered trade mark to obtain any relief under any other law for the time being in force, the proprietor shall also have the right to obtain relief under this Ordinance if the trade mark is infringed.
(4) References in this Ordinance to the infringement of a registered trade mark shall be to any such infringement of the rights of the proprietor.
(5) The rights of the proprietor shall have effect from the date of registration: Provided that no infringement proceedings shall begin before the date on which the trade mark is in fact registered.
(6) The rights conferred by registration of trade mark under this Ordinance shall extend to trade mark registered under the Trade Marks Act, 1940 (V of 1940)"
10. ' While section 40 of the Trade Marks Ordinance, 2001, is also very much relevant, which describes the instances, whereby infringement of a registered trade mark has been made. The section reads as under:-- "40. Infringement of registered trade mark.---(1) 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 good or services which are identical with those for which it is registered.
(2) A person shall infringe a registered trade mark if such person uses in the course of trade a mark where because:--
(a) the mark is identical with the trade mark and is used in relation to goods or services similar to the goods or services for which the trade mark is registered; or
(b) the mark is deceptively similar to the trade mark and is used in relation to goods or services identical with or similar to the goods or services for which the trade mark is registered, there exists a likelihood of confusion on the part of public, which includes the likelihood of association with the trade mark.
(3) A person shall infringe a registered trade mark if the person uses in the course of trade a mark which is identical with, or deceptively similar to the trade mark in relation to:--
(a) goods of the same description as that of goods in respect of which the trade a mark which is registered;
(b) services that are closely related to goods in respect of which the trade mark is registered;
(c) services of the same description as that of services in respect of which the trade mark is registered;
(d) goods that are closely related to services in respect of which the trade mark is registered.
(4) A person shall infringe a registered trade mark if the person uses, in the course of trade, a mark which:--
(a) is identical with or deceptively similar to the trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered. Where the trade mark is a well-known trade mark, or has a reputation in Pakistan, and the use of the mark, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
(5) A person shall infringe a registered trade mark if the person uses such registered trade mark as his trade name or part of his trade name.
(6) A person shall infringe a registered trade mark if the person uses such registered trade mark as his domain name or part of his domain name or obtains such domain name without the consent of the proprietor of the registered trade mark, with the intention of .Selling such domain name to another including the proprietor of the registered trade mark.
(7) A person who applies a registered trade mark to material intended to be used for labeling or packaging goods shall be treated as a part to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.
(8) In all legal proceedings, a person who sells or offers or exposes goods for sale, or puts them on the market or has in possession for sale or any purpose of trade or manufacture any goods bearing a mark which infringes a registered trade mark shall be treated as a party to infringement of a registered trade mark, unless he proves that:
(a) having taken all reasonable precautions, he had no reasons to suspect the genuineness of the mark; and
(b) on demand made by Tribunal, he gave all the information in his power with respect to the persons from whom he obtained such goods; or
(c) he had, otherwise acted innocently.
11. ' In view of subsection (5) of section 40 of the Ordinance the right of proprietor accrues from the very date when the registration has been effected, while proviso to the subsection specifically speaks that no infringement proceedings begin before the date on which the trade mark is in fact registered. Therefore, the act of infringement only took place when there is a registered Trade Mark, and in absence A thereof the act of infringement is no where. In present case, though the respondent No,1/plaintiff claimed registered trade mark bearing No,245780 in respect of product "FRUTTI AND TOP JUICES", issued in his favour, but contrary to it the document, which has been referred as a Registration Certificate bearing date 214 2008 having No,245780 reveals that the mentioned number is only number of the application submitted for registration of trade mark. It is further noted in the bottom of it that:-- "Note:-- THIS IS AN ACKNOWLEDGEMENT RECEIPT OF APPLICATION AND NOT REGISTRATION CERTIFICATE."
12. ' This clarifies that it is not a Registration Certificate, rather only an acknowledgment receipt of the application submitted by the applicant for the purpose.'Further, reliance has also been placed on a Certificate of Registration of Copy Right bearing registration No,22010-COPR by the respondent No,1, original also produced as a Certificate of Registration of Trade Mark, but it is also not properly referred or relied, rather it is only a Certificate of Registration of Copy Right, and not of a Trade Mark.
13. The plaintiff/respondent No,1 misquoted the documents and by misrepresenting them tried to mislead the court, which shows mala fides on his part. Furthermore, the annexed letters with the memo of appeal bearing dates 3-11-2010 and 16-11-2010 clearly disclosed that the trade mark has not yet been registered in favour of respondent No, 1 /plaintiff. The trial court has failed to consider this aspect of the case. In absence of a Certificate of Registration of Trade Mark, no right accrued in favour of respondent No, 1 /plaintiff, infringement of which can be claimed. No prima facie case existed in favour of respondent No,1 /plaintiff at this stage, while balance of inconvenience is also not in his favour. In absence of two ingredients suffering of irreparable loss is out of question.
14. ' The trial Court has not properly appreciated the facts, thus arrived to the conclusion, which is not in accordance with the law and facts, thus not sustainable. In view of the above discussion, the appeal is hereby accepted, impugned order dated 18-2-2011 of Additional District Judge-IV, Quetta, is hereby set aside. The application made under Order =CM, Rules 1 and 2, Civil Procedure Code
(CPC) stands dismissed.
15. ' No orders as to costs.