1. C.M.A. Nos. 495 and 496 of 2011 ' SYED HASAN AZHAR RIZVI, J.---In this suit for declaration, appointment of receiver, injunction, rendition of accounts, injunction and damages filed against defendants for infringement of trade mark copyright of the plaintiffs in respect of their product 'POINTER' being sold in the market under the trademark 'DOLLAR", the plaintiff has filed C.M.A. No, 496 of 2011 under Order XXXIX, Rules 1 and 2 read with section 151, C.P.C. And has prayed for grant of temporary injunction pending the decision of the suit to restrain the defendants, their agents, men, representatives and stockiest from purchasing, selling, importing, marketing, manufacturing, trading, displaying etc. The imitated/ infringed product under the name and style of 'SCOT' which is deceptively similar to the registered product of the plaintiffs vide registration No,12247-D or infringing/imitating the registered product of the plaintiffs in any manner whatsoever. This application is also supported by an affidavit of Abdullah Feroz authorized person of the plaintiffs to which counter-affidavit has been filed by the defendants.
2. ' The case of the plaintiffs as disclosed in the plaint as well as in the affidavit in support of the application for grant of injunction is that the plaintiffs have engaged in the business of manufacturing, trading, marketing, selling, supplying and/or exporting large variety of high quality stationery items and writing materials etc. Including ball points pens, fountain pens, pencils, markers, officer supplies and other allied goods since 1954. In order to distinguish high quality products from those of their competent due the plaintiffs right from inception of business has been continuously using the trademark DOLLAR and logo which is distinctive of plaintiffs business. The plaintiffs starting from a very modest scale have grown as the foremost exporters of the country marketing and selling high quality products in a large number of countries around the globe. The high quality of the products price competitiveness and exceptional after sale service standards have resulted in a universal acknowledgement of these products and the plaintiffs have always been welcomed highly appreciated in national as well as in the international market resultantly plaintiffs export graph is increasing day by day and plaintiffs are playing pivotal role in their own capacity by earning foreign exchange for national exchequer. With the aim to work together in close cooperation with other partners in each country in spirit and purpose worldwide. The products of the plaintiffs are being exported worldwide and sold in more than 50 countries in all 5 continents. Acknowledgment of aforesaid role the Prime Minister conferred upon the plaintiffs with the BEST EXPORT PERFORMANCE AWARD 2006-2007. The plaintiff in order to distinguish their products from those of the other competitor/traders they adopted numerous trademarks/copyrighted and industrial design filed several applications for protection of trademarks under the Trade Marks Act 1940 and Trade Marks Ordinance 2001 as well as the copy right label design under the Copy Right Ordinance 1962, the industrial design under the Patent and Design Act 1911 (now Registered Design Ordinance 2000) with the competent authorities which marks/label and design are being used by the plaintiff for their high quality products during the course of trade not only in Pakistan but also in international markets. In order to promote and publicize their product the plaintiffs have spent substantial amount of money, time and labour under registered Design No,12447-D in respect of Pointer/Pen and has been using and applying the said trademark in the course of trade in a very peculiar, distinctive and distinguishing shape/design having colour scheme, design, livery and/or get-up. The products sold by the plaintiffs under the registered design No,12247-D in respect of PENS in the local market as well as international market has attained a high reputation. The use of a similar design/shape or any trifling variation thereof by any other person/trader etc. Without the prior consent/written permission of the plaintiffs during the course of the trade, shall be an act of misrepresentation to the potential customers of the plaintiffs and to the public at large who will be duped and deceived as such it amounts to an infringement of the statutory rights of the plaintiffs resulting in damaging the goodwill and reputation of the plaintiffs registered design which is irreparable in nature. Very recently, plaintiffs came to know through their own resources acquired the knowledge that certain other traders with mala fide intention to reap profits out of the goodwill of the plaintiffs and in order to cause wrongful loss to the plaintiffs are manufacturing and selling inferior quality products being exact imitation of plaintiffs' trademark and copyrighted work 'DOLLAR'. Plaintiffs made thorough market search and found that the defendant No,1 who is conducting sales and illegal trade covering whole of the Karachi region for the illegal activities of the defendants Nos.2, 3 and 4 and as such it took few more days for the plaintiff to get the concrete documentary evidence from the defendant No,1, which are the sale receipts in respect of the infringed goods under name and style of SCOT which is deceptively similar to the registered design of plaintiffs issued by the defendant No,
1. It is pertinent to mention that the defendants Nos.2, 3 and 4 are also committing criminal offence by terming their product to be registered either with the Registrar of Design or with the Trade mark or any other competent authority for protection of intellectual property rights and as such in this regard the photographic representation of the imitated product of the defendants Nos.2, 3 and 4 which clearly is appended are using trademark with exactly identical and deceptively similar packaging, design, colour scheme, get-up and livery without registration with the Registrar of Copyright Karachi. In the meantime plaintiffs who cover whole of the Pakistan in connection with the sale of their products also received knowledge from their resources that apart from Karachi the defendants Nos.2, 3 and 4 have also lodged a massive campaign of the sale of infringed products under name and style of SCOT which is deceptively similar to the registered design of plaintiffs in Multan and Lahore Region also whereupon it revealed that the headquarter of the main operation is situated in Lahore and as such plaintiffs from their own resources were able to trap purchase the infringed goods under name and style of SCOT which is deceptively similar to the registered design of plaintiffs from the defendants Nos.2, 3 and 4 and in this regard a fax was sent to plaintiffs from their Territory Sales supervisor (Multan) and as such plaintiffs came to know about the names and the base of operations of the defendants Nos.2, 3 and 4. Apart from Lahore the defendants Nos.2, 3 and 4 have also lodged a massive campaign of sale of infringed goods in Multan also and as such the defendant No,7 is spear heading the illegal operation of the defendants Nos.2, 3 and 4 in Multan region and whole of the stock is in custody and available with the defendant No,8. The defendants Nos.2, 3 and 4 are neither manufacturing the infringed product nor have validly imported the infringed goods and as such the same leaves only one logical conclusion that in furtherance of their' criminal activities the stock of infringed goods under name and style of SCOT which is deceptively similar to the registered design of plaintiff have been smuggled through illegal means into Pakistan and in this regard the defendants Nos.2, 3 and 4 has not even a single documents to prove that whether the infringed goods under name and style of SCOT which is deceptively similar to the registered design of plaintiff have been either manufactured or validly imported and as such upon failure of the defendants Nos.2, 3 and 4 to give the valid proof of either manufacture or import will further aggravate their criminal activity.
3. ' Under these circumstances, the plaintiffs have prayed for grant of temporary injunction till the disposal of the suit on the grounds that being the owner of registered trademark and copyright, there is strong prima facie case in favour of the plaintiffs, and they shall suffer irreparable loss if the injunction is not granted. The plaintiffs have further stated that balance of convenience is also in favour of the grant of injunction.
4. ' Counter-affidavit to this application as well as written statement has been filed by Mutaher Hakeem Goreja the defendant No,2, denying and disputing the claim of the plaintiffs. The defendant No,2 has raised preliminary objections Viz: (i) this Court has no jurisdiction to try and decide this case, since the defendant No,1 is dummy party and has nothing to do with this business of the defendant No,2, who are doing their legal business out of the range of jurisdiction of this Court. The receipt filed with the plaint is only paper with stamp of dummy party and defendant No,1 was made party only take benefit from the jurisdiction of this Court, (ii) the plaintiffs have no cause of action against the defendants as the design on the basis of which this suit has been filed was not new and original at the time of foiling the application for registration of the subject design under No,12247-D as required under section 3(2) of the Registered Designs Ordinance, 2000, (iii) the Design registered under No,12247-D is a pirated copy of the prior published Design, which is known to the world prior to 1994 and a Germany company A. HAUSER GmbH & CO. KG, Hauptstabe 11, D78559 Gosheim, Germany was manufacturing and selling the pointer/ball point with the same Design. According to the knowledge of the defendants No,2 the plaintiff has purchased the old machinery along with the alleged Design, which was known to the world when it was so purchased by the plaintiffs, (iv) the design of the defendant No,2 is different form the Design of the plaintiffs.
5. Hence the allegation of the infringement is not there as the defendant No,2 are using their own design, (v) the plaintiffs have approached this Court with unclean hands, with ulterior motive and on the basis of trade revelry otherwise the defendant No,2, is doing its legal business and it is the plaintiffs who are copying the design of the German Company, from whom they have purchased the machinery and (vi) the entry of design No,12247-D dated 9th May, 2005 is liable to be cancelled under section 10 of the Registered Design Ordinance, 2000 and for this purpose, the defendant No,2, has already moved an application under section 10 of the Registered Design Ordinance, 2000. It is also known to the defendant No,2 that another company namely Brothers Industries have also filed cancellation petition No, J.M.41 of 2008 in this Court, which is pending adjudication.
6. ' Besides the above noted preliminary legal objections, the defendant No,2 stated that in order to distinguish its products from the goods/products of the other manufacturers and traders, the defendant No,2 adopted 'trademark CAMEL, SCOT Fine Writer, and are selling its products under the said Trade Mark. It has further stated that HAUSER, Germany has also provided machinery to another Pakistani Company namely Brothers Industries, Karachi along with the mould/dye for manufacturing of different design of Ball Point and Roller Ball Point, particularly known as 737 Mayor Roller ball, 742 ACTEUR ROLLER, 744 VENTUREA ROLLER, 232 ACTEUR Liner, 234 VENTURA Liner and 241 Calligraphy. It has also been stated that defendant No,2 has created a completely different design from cap to end plug, which are being produced by the German Company long ago, but surprised to learn that the plaintiff No,2 has got registration of the well known design, which was known to the world prior to 1994 and have the subject suit in order to restrain the answering defendants from .Selling and marketing Pointer/Soft Liner with the alleged Design. It has also been stated that the answering defendants have invested heavily in the subject design with substantial outlays towards product formulation, research, development and market analysis, as well as through public awareness campaigns. It has further been stated, that the prime and the basic question would be whether the design/ patent was validly registered or not. All the allegations levelled against the defendants are false. The defendant No,2, therefore, prayed that the present application may be dismissed with compensatory costs.
7. ' Counter-affidavit to this application has been filed by Nisar Muhammad, defendant No,1, denying and disputing the claim of the plaintiffs. It has been stated that defendant No,1 is a simple low level selling general supplier and upon scrutiny and market survey the defendant No,1 came to lay his hands over the pen SCOT subject matter of this lis and on seeing handsome profit margin purchased the goods from the defendants Nos.7 and 8. In order to dislodge the claim of the plaintiffs the defendant No,1 has stated that the shape used by the plaintiffs consists of descriptive matter. The word "Pointer" appearing thereon is a descriptive word within the meaning of Trademark Act, 1940 hence no monopoly rights over the word can be conferred upon any party. It has been further stated that the defendant No,1 had simply sold the product of the defendants Nos.2, 3 and 4 in Karachi as an ordinary trader/general supplier who earns his living by selling products of others on a meagre profit margin as the product of the defendants Nos.2, 3 and 4 fetch a good margin hence the defendant No,1 purchased and sold the same in ordinary course. The defendant No,1 submitted that the balance of convenience is not in favour of the plaintiffs and prayed for dismissal of application against him.
8. ' In rejoinder to the counter-affidavit while denying the case set-up by the defendant No,1, it has been stated that by the plaintiffs that the defendants Nos.2, 3, 4, 7 and 8 are one and the same and as such the counter affidavit has been filed malafidely only with the intention to delay the proceedings and to avoid conviction for perjury only on behalf of the defendant No,2.
9. ' I have heard Mr. Abbadul Hassnain, learned counsel for the plaintiffs, Mr. Muhammad Asghar, learned counsel for the defendant No,1 and Ms. Saira Shaikh, learned counsel for the defendants Nos.2, 7 and 8.
10. ' Mr. Abbadul Hassnain learned counsel for the plaintiffs has contended that plaintiffs are engaged in the business of manufacturing, trading marketing, selling supply and exporting large variety of high quality stationery items and writing material etc. Including ball points pens, fountain pens, pencils, markers officer supplies and other allied goods since 1954 and started using the trademark. "DOLLAR. Thereafter, the plaintiffs adopted registration of a unique and peculiar design in respect of Pointer/Pen under No,12247-D dated 9-5-2005 and it has been registered with the Registrar of Design, Patent and Design Government of Pakistan, Karachi. He has further contended that the defendants have dishonestly adopted and undertaken the use of the registered design Pointer Pen under a shape/design, which is identical and deceptively similar to that of the plaintiffs.
11. Learned counsel has therefore urged that the plaintiffs being the registered proprietor of the trademark "DOLLAR", has got the exclusive right to use the same in the course of trade and the defendants are infringing their rights by using a Pen deceptively similar with the registered design of the plaintiffs, hence it is fit case for grant of temporary injunction till the decision of the suit. He has referred open view comparison of the plaintiffs registered product and infringed product of the defendant No,2 SCOT Fine Writer and stated that both of them are similar with each other in all respect. The plaintiff has, therefore, vehemently urged that there is not only a strong prima facie case in favour of the plaintiffs but balance of convenience is also in their favour and the plaintiffs shall suffer irreparable loss unless the defendants are restrained through an injunction as prayed.
12. ' In rebuttal, MRs, Saira Shiakh learned counsel for the defendants Nos.2, 7 and 8 has advanced her arguments on the same line as taken in the written statement and counter-affidavit filed against the application for grant of temporary injunction. She has argued that the plaintiffs are not entitled for grant of relief by way of temporary injunction as they have neither a prima facie case in their favour nor the balance of convenience. The apprehensions of irreparable loss are also un-called for and in fact the plaintiffs have not come to the Court with clean hands. At the very outset learned counsel argued that law relating to trademarks is different from the law relating to the registration of designs. Learned counsel has, therefore, vehemently urged that the design already having been published and not being new or novel was got registered by the plaintiffs through misrepresentation, for cancellation whereof the defendant No,2 has filed J.M. Under section 10 of the Registered Design Ordinance, 2000 in this Court in February, 2011. Learned counsel in support of her submissions that the design should be new, novel and original and should not have been in use prior to date of application for registration, has referred to the cases reported as Tajuddin v. Haji Mushtaq and another (1985 CLC 2182) and Dwarkadas Dhanji Sha v. Chhotalal Ravicarandas & CO.
13. (AIR 1941 Bombay 188), where injunction was refused while taking into consideration such ground amongst otheRs, ' I have given due consideration to the arguments advanced by the learned counsel for the parties and perused the material available on record with their able assistance and the case law cited in support of their respective contentions.
14. ' Indeed, it is a case of infringement and the Registered Design Ordinance XLV of 2000, which was promulgated on 7-9-2000 is in the field and the rights of the parties are to be determined as per requirement of the said Ordinance. Section 30 of the Ordinance says that subject to the provisions of the Ordinance the holder of a valid patent in Pakistan, shall have the following rights, namely:--
(a) where the subject-matter of patent is a product, the holder of valid patent may prevent third parties not having the owner's consent from the acts of making, using, offering for sale, selling, or importing for these purposes that product: and
(b) where the subject matter of a patent is a process, the holder of a valid patent may prevent third parties not having the owner's consent from the act of using the process, and from the acts of using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.
15. ' It is an admitted position that plaintiffs' product is duly registered with the Registrar of Design under Registered Design Ordinance and plaintiff are lawful proprietors of the Design No, 12247-D dated 9th May, 2005 and using the same since its registration at national and international level and as such plaintiffs enjoy full protection of their registered design and defendants are infringing the registered design of plaintiffs . The defendants have failed to produce that they have ever imported the infringed design SCOT and the case law cited by the learned counsel for the defendants are not applicable to the case in hand. The defendants have failed to place on record any document showing Messrs Brothers Industries, Karachi or HAUSER Germany have challenged the plaintiffs' registered Design No,12247-D. Before competent authority. An open view comparison available at Page 1299 clearly indicates that both were similar to each other and capable of creating confusion and deception in the mind of general public. Further, resemblance in two designs would be sufficient to establish infringement, but similarity thereof to each other in all respects would not be necessary. To fortify this view, reference can be made to the case of Messrs Team Nayyer (Pvt.) Ltd. And another v. Tariq Ahmed Sultani (2008 CLD 94).
16. ' Thus, I have come to a conclusion that there is a prima facie case in favour of the plaintiffs to justify grant of injunction. Balance of convenience also appears to be in favour of the plaintiffs who shall suffer irreparable loss if injunction is refused. Resultantly, this application is granted.
17. ' Civil Miscellaneous Application No,495 of 2011 is dismissed having become infructuous as the plaintiffs have E affixed the maximum court fee on the plaint.