1. ' MUHAMMAD TASNIM, J.---This is an application (CMA No,8445 of 2007) under Order XXXIX, Rules 1 and 2, C.P.C. Filed by the plaintiffs with the following prayer:-- "For the reasons disclosed in the accompanying affidavit this Hon'ble Court may be pleased to grant temporary injunction to the plaintiffs during pendency of the suit restraining the defendant and his salesmen, agents, dealers, retailers, distributors from infringing the registered trade marks 'ANCHOR' under No,12078, 'ANCHOR' (ticket) under No,19187, and 'ANCHOR' device under No,32742 and ANCHOR box under No,61083 all in class-23 or otherwise from passing off or enable others to pass off his embroidery threads not being the manufacture of the plaintiffs without clearly distinguishing his embroidery threads from those of the plaintiffs by use of ticket and card box forming Annexures 'E' and 'F' to the plaint or by use of any clourable imitation of any of them as the defendant is threatening to infringe the registered trade marks of the plaintiff and/or to pass off his goods/embroidery threads as and for the goods of the plaintiff by causing confusion and deception in the trade and mis-leading the customers into believing that the embroidery threads are the goods of the plaintiffs or such goods emanate from or originate from the plaintiffs or the defendant has some business connection with the plaintiffs."
2. ' The facts leading to this suit as per plaint are that the plaintiff No,1 is a well-known and reputable manufacturer and merchants of threads of all kinds including embroidery threads which it has been selling for number of years throughout the world. The plaintiff No,2 is a company carrying on business at Karachi as manufacturer of all kinds of threads which it has been selling throughout Pakistan. It is subsidiary of plaintiff No,1 and is authorized. User of the trade mark of plaintiff No,
1. It is the further case of plaintiffs that plaintiffs- companies have earned reputable business from United Kingdom and other countries including Pakistan as manufacturers and merchants of various products and amongst such products are yarns and threads of all kinds. The product of the plaintiffs are marketed and sold throughout the. World including Pakistan carrying the well-known ANCHOR trade mark. The plaintiff No,1 is the proprietor of Trade Mark ANCHOR (World), ANCHOR Ticket, ANCHOR Device and has secured registration thereof in Pakistan under Trade Mark Act, 1940 (now Trade Mark Ordinance 2001). Trade Mark ANCHOR is being used by the plaintiff ever since 1876. Following are the registered trade mark:- Mark Registration No,Class Date Goods A A Anchor (Word)12078 23 1-6-1942 "Threads of all kinds B Anchor (Ticket)19187 23 22-10-1952 "Yarns and threads of all kinds"
3. C Anchor 27099 23 6-3-1957 "Thread of all kinds D Anchor Device32742 23 25-5-1990 "Goods of all kinds E Anchor Box 61083 23 1-8-1974 "Yarns and threads of all kinds"
4. F Anchor Band61082 23 17-8-1874 "Yarns and threads of all kinds"
5. G Anchor in Urdu Script12079 23 "Yarns and threads of all kinds"
6. ' It is the further case of plaintiffs that the defendants are carrying on business and manufacturer, dealer, retailer and supplier in, inter alia, all kinds of threads. As per plaint, the case of plaintiffs is that the defendants have adopted confusingly similar colour, scheme, design, shades, appearance letterings, get-up and positioning of the device of plaintiffs' trade marks to cause confusion in the trade in order to ride upon the reputation and goodwill of the plaintiffs. It is further case of the plaintiffs that defendant has adopted imitated and copied similar colour scheme, shades number, appearance, positioning of letters, get-up, design and all the essential and distinctive features of the plaintiffs' trade marks. The plaintiffs per their notices dated 28-5-2007 and 27-8-2007 asked the defendant to refrain from committing infringement of the registered trade mark but failure to get any positive reply present suit has been filed. Along with the plaint the application under disposal was also filed and the same was taken-up by this Court on 9-10-2007 when after hearing the learned counsel for the plaintiffs passed the following order:-- "It is inter alia contended by the learned counsel for the plaintiff that the plaintiff is a registered trademark owner of trademark ANCHOR and label device of anchor with words 'pearl Cotton' since June 1942 and that such registration of the plaintiff is continuing.
7. ' He has referred to annexures A-1 to A-16, B and C. He has stated that the defendant has started imitating the trademark of the plaintiff by way of annexures F & G though using the word GOLDEN but with same type of packing, colour scheme, design and word. He states that such action of the defendant is wrongful and causing severe loss to the plaintiff.
8. ' Issue notice to the defendant for 24-10-2007. Till then the defendant is restrained from using the trademark complained of."
9. ' After service -of the notice defendant appeared and filed its counter affidavit denying the allegations made by the plaintiffs in the plaint and submitted that the trade mark of the defendant is registered vide Registration No,157366 dated 27-8-1999 and since then not a single objection regarding infringement from any corner were reported. It was further claimed that there is a marked difference of colour and other features etc. Between the two Trademarks. It was further claimed in the counter-affidavit that the claim of plaintiffs is trade mark "ANCHOR" is not close resemble with the Trademark of the defendant "S" Golden" in this regard allegation of colour scheme style, artistic feature and packing etc. The defendant further submitted that no deceptive measure has been adopted by the defendant to cause any confusion to the general public. In the counter-affidavit it was stated that since trade mark of defendant is registered with the Trade Mark Registry hence no illegal act is being committed by it.
10. ' In support of the application Mr. Monawwer Ghan learned counsel for the plaintiffs, has submitted that defendants have adopted confusingly similar colour scheme, design, shades, appearance letterings, get-up and positioning of the device of plaintiffs' trade marks which is causing confusion amongst the ordinary illiterate customer. He further submitted that an ordinary person will be misled if defendants are not restrained from their illegal activity. Learned counsel for the plaintiffs further submitted that plaintiffs are marketing their product in the present packing since long and have earned reputation in the market. He further submitted that defendants by adopting illegal means are trying to get advantage of reputation earned by the plaintiffs due to their good quality product. He further submitted that there is close similarity as regard to colour scheme and features of both the packing being marketed by plaintiffs and defendants. Learned counsel for the plaintiffs has further submitted that since the plaintiffs are internationally known companies in threads and allied materials ever since 1876 and have earned reputation worldwide if sub- standards items are allowed to be marketed under the garb of plaintiffs' trade mark or in same colour, scheme and get-up it will seriously prejudice the interest of the plaintiffs. He further submitted that irreparable loss will be caused to the plaintiffs' reputation which they have earned due to their quality products. In the end learned counsel for the plaintiffs submitted that interim order passed on 9-10- 2007 be confirmed and the application under Order XXXIX, Rules 1 and 2 C.P.C. Be allowed. In support of his contention learned counsel for the plaintiffs has placed reliance following reported cases:--
(1) Telephone Soap v. Messrs Lever Brothers (1994 CLC 2135);
(2) Bandenawaz Ltd. v. Registrar of Trade Marks, Karachi and another (PLD 1967 Karachi 492);
(3) Seven-up Company v. Kohinoor Thread Ball Factory and 3 others (PLD 1990 SC 313);
(4) Messrs Western Brand Tea, Karachi v. Messrs Tapal Tea (Pvt.) Limited Lahore and another (PLD 2001 SC 14);
(5) Messers Mehran Ghee Mills (Pvt.) Limited and others v. Messrs Chiltan Ghee Mill (Pvt.) Limited and others (2001 SCMR 967);
(6) Messrs Chas A. Mendoza v. Syed Tausif Ahmed Zaidi and others (PLD 1993 Kar. 790);
(7) Bashir Ahmad v. Registered Firm Hafiz Habibur Rehman and another (1980 CLC 1268);
(8) Messrs Burney's Inustrial and Commercial Co. Ltd. v. Messrs Rehman Match Works (PLD 1983 Karachi 357);
(9) Abdul Jabar and another v. Ahmad Jan (PLD 1973 Kar. 289);
(10) Rexona Proprietary Ltd. v. Majid Soap Works (PLD 1956 Sindh 1);
(11) Akhtar and others v. Messrs Soofi Soap Factory (PLJ 1973 Lah. 208);
(12) James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd. (AIR 1951 Bombay 147).
11. ' Conversely, Mr. Khaleeq Ahmed, learned counsel for the defendant, has submitted that defendant's trade mark is registered along with colour scheme and no deception to the customer is being caused by the product of the defendant to the plaintiffs. Learned counsel for the defendant further submitted that the plaintiffs are marketing their products under trade mark "ANCHOR", whereas defendants are marketing their products under trade mark "S" GOLDEN. He submitted that trade mark "S" GOLDEN of the defendants and trade mark ANCHOR of the plaintiffs is phonetically and visually different and the word "S" GOLDEN" has no resemblance with "ANCHOR" and there is no likelihood of any confusion or deception to the purchaser. Learned counsel for the defendant further submitted that both the boxes are different in colour scheme and they are different in lettering style. He further submitted that plaintiffs have failed to make out any prima facie case for grant of injunction. Learned counsel for the defendant further submitted that ad interim order passed on 9-10-2007 be recalled and present application be dismissed. In support of his contention learned counsel for the defendant has placed reliance on the following reported cases:--
(1) Samreen Liaquat Malik v Messrs Aqmar Health Foods and others (2008 CLD 1243);
(2) Sardar Tahir Mahmood v. Ikram-ul-Haq (1991 MLD 164);
(3) Muhammad Abid and others v. Nisar Ahmed (2000 SCMR 780);
(4) Yusuf Hussain Shirazi and another v. Lt. Col. Muhammad Alam Shaikh (PLD 1966 (W.P.) Karachi 472); and
(5) Abdul Wasim v. MessRs, Haico and others (2001 CLD 1623)
12. ' I have heard the learned counsel for the parties and have gone through the record as also case law cited at the bar by the counsel for the parties.
13. ' Now taking up first submission of Mr. Monawwer Ghani, learned counsel for the plaintiff, that the defendant has adopted confusingly similar colour, scheme, design, shades, appearance letterings, get-up, which is causing confusion amongst the ordinary illiterate customer and there is likelihood that such customer will be misled if the defendants are not restrained from marketing their product under the impugned trademark. A bare perusal of the box of the defendant, which no-doubt does not carry trade mark "ANCHOR" or the word "ANCHOR". The trade mark "S" GOLDEN of the defendants is phonetically different from trade mark ANCHOR of the plaintiffs, but insofar as the label device of the defendant on the box is concerned, it is confusingly similar to the label device of the plaintiffs on their box. If the trade mark label device of "S" GOLDEN is compared with trade mark ANCHOR label device of plaintiffs it seems to have been copied initiated, adopted similar to the plaintiffs colour scheme, design, shade, lettering, get-up, positioning and packing appearance.
14. ' The point in issue has come-up for consideration before a learned Single Judge of Lahore High Court (as he then was) in the case of Telephone Soap (supra) wherein the learned Single Judge observed that similarity in colour, scheme and get-up by which an ordinary illiterate customer would be misled for taking product manufactured by defendant as that of plaintiff, would prima facie be a case of passing off. In the instant case, I have myself examined both the boxes of the product of the parties and found that no doubt there was a vast difference in trade mark ANCHOR and trade mark "S" GOLDEN appears in the trade mark of the defendant, but the dispute has to be decided considering overall get-up of both the trade marks. There is close similarity as regard to colour, scheme and other features of both the trademarks, including words "Pearl Cotton", "Fast Colour" and "Couleur Solide" which are appearing on both the Boxes.
15. ' In the case of Bandenawaz Ltd. (supra) learned Single Judge of this Court (as he then was) has held as follows: - "6. In the light of the above pronouncements, it has to be decided whether there is any resemblance between the two devices before me. The resemblance may be visual or phonetic. The basic device in the two marks is the same, i.e. a Deer. Notwithstanding the dissimilarities with regard to the shapes of the Deers, the two devices shall in all probability be known in the market as Deer marks or Deer Brands. The goods of the appellants will be confused with the goods of the Shell Company of Pakistan. I am, therefore, of the opinion that there is such resemblance between the two devices that the registration of the appellants' trade mark will result in causing deception or confusion in the public. I may here refer to cases where the comparison between the leading features of the two marks led the Courts to conclude that notwithstanding the points of difference, the two marks bore such resemblance as was likely to cause deception and confusion. In Worthington's Trade Mark (14, Ch. D8, 13(A)), a triangle with a double line with the name of the brewery inscribed inside it and having conspicuously thereon a figure of a church was held to be similar to a plain triangle coloured red. In Pomril Ltd's Application ((1901) 18 RPC 181) the device of the side of an apple cut vertically into half with the word "Pomril" across it and a registered trade mark consisting of the representation of an apple with the words "Apple Brand", both marks being for cider, were declared similar. The picture of a girl in dancing dress sitting upon a bed and pulling up her stockings, with the words "Cabret Girl", and the picture of a lady in ballet dress with a wreath of flowers in her hands and the word "Carnival" or "Columbine" underneath were held to her close resemblance to each other in the Distributing Corporation (London) Ltd.'s Application ((1927) 44 RPC 225)."
16. ' Similarly, in the case of Messrs Mehran Ghee Mills (Pvt.) Limited (supra) the Hon'ble Supreme Court of Pakistan while dealing with the point in issue has held as under:-- "15. The question that whether there has been an infringement or not is to be decided by comparing and placing the two marks together and then to determine about their similarity or distinctiveness. If the two marks are absolutely identical no further probe is needed and infringement is established. Essential features of the marks shall be looked into for effectively deciding the issue of infringement. To constitute infringement it is not necessary that whole of the mark be adopted. The infringement will be complete if one or more dominating features of a mark are copied out. If there is a striking resemblance, ex facie, it would lead towards the conclusion that the mark has been infringed. There is mark degree of similarity between two marks of this case.
17. Mark/Label of respondent No,1 has virtually been adopted by petitioner in same colour scheme, design and get-up to pass off its (petitioner's) goods, as that of the respondent No, 1."
18. ' The Hon'ble Supreme Court of Pakistan in the case of Messrs Western Brand Tea, Karachi (supra) while dealing with the point in issue has observed as under:- "7. It is cardinal principle of law and fair commercial trading, that deceptive measures should not be adopted to adversely affect goodwill and recognition earned by other organizations in trading specific commodity. Bare visual look on the wrappers wherein the petitioner (herein) packed their tea, reflects complete resemblance providing similarity of design, scheme and colour which can certainly affect the product of respondents Tapal Danedar Tea. The illiterate customers with particularity can be conveniently misled on looking at wrappeRs, Both the Courts have appropriately considered relevant legal and factual aspects, therefore, in our opinion findings arrived at in the impugned judgment do not suffer from any material defect or legal infirmity."
19. ' Applying the above rule as laid down in the above reported Judgments it would be seen that cardinal principle of law and fair commercial trading, that deceptive measures should not be adopted to adversely affect good will and recognition earned by other organizations in trading specific commodity. Bare visual look on the Box wherein the defendants packed their product, reflects complete resemblance providing similarity of design, scheme and colour which can certainly affect the product of the plaintiff. The illiterate customers with particularity can be conveniently misled on looking at the Box.
20. ' In this view of the matter, if the defendants are allowed to market their product under the impugned box as there is similarity in colour, scheme and get-up by which an ordinary and/or illiterate customer would be misled for taking the product of the defendants as that of plaintiffs, would prima facie be a ease of passing off. Therefore, the plaintiffs have made out a prima facie case for grant of injunction.
21. ' With regard to the Judgment cited by the learned counsel for the defendants in the case of Petromark (Pvt.) Ltd. (supra) wherein an eminent Judge of this Court while dealing with the point in issue has observed at page 19 as under:- "I had the benefit of seeing the original label and the containers of lubricating oil manufactured by the plaintiff and defendant both and have examined the same in the light of guiding principles laid down in J.N. Nichols (Vimto) PLC (supra) and Mehran Ghee Mills (Pvt.) Ltd. (supra). It was noted that not only the shape and design of the container was different but also the colour scheme of the rival containers was different. Though both the labels/composite marks were comprised of common disclaimed, non-distinctive and descriptive features that were organized, arranged, place and presented in different fashion, composition and colour scheme. Therefore, in my humble opinion plaintiff was neither able to demonstrate any exclusively, nor distinctiveness nor non- descriptiveness in their label, rather features namely `E-4', or plus and or device of motor-cycle, appears from material brought on record, to be commonly employed and used by the lubricant tradeRs, As noted above, plaintiffs label is not consisting of each part independently but consist of combination and arrangement of various components in a particular manner and fashion thereof as a whole, which combination or arrangement of similar components is not shown to have been adopted by the defendant."
22. ' From the perusal of the extract of the above quoted Judgment, it would be seen that on examination by the Court in the light of guiding principles laid down in J.N. Nichols (Vimto) PLC and Mehran Ghee Mills (Pvt.) Ltd. It was noted that not only the shape and design of the container was different but also the colour scheme of the rival containers was different. Though both the labels/composite marks were comprised of common disclaimed, non-distinctive and descriptive features that were organized, arranged, placed and presented in different fashion, composition and colour scheme. Therefore, the learned Judge formed the opinion that the plaintiff in that case was neither able to demonstrate any exclusively, nor distinctiveness nor non-descriptiveness in their label, rather features namely 'E-4', or plus and or device of motorcycle, appears from material brought on record, to be commonly employed and used by the lubricant tradeRs, In this view of the matter, learned Judge dismissed stay application filed by the plaintiff.
23. ' The ratio of the above Judgment will not be applicable to the case in hand as Judgment cited by the learned counsel for defendant is distinguishable on facts as not only shape and designs of the containers was different, but also the colour scheme of both the containers were different.
24. ' The next case relied upon by the learned counsel for defendants in the case of Rabia Bai v.
25. Zeeshan Farooqi (2004 CLD 1163) wherein the learned Judge of this Court (as he then was) while dealing with an application under Order XXXIX, Rules 1 and 2, C.P.C. Rejected the application and vacated interim order earlier passed and in doing so the learned Judge has observed that a look at the wrappers, packaging, colour scheme and calligraphy of the two labels being used by the plaintiff and defendant would show that the same are neither identical nor can be said to similar in all respects, and both appear to be distinctive from each other because the wrapper being used by the plaintiff has a peculiar colour scheme and calligraphy. Learned Judge further observed that it also bears the photograph of the brother or cousin of the plaintiff with a blue background which is an important distinguishing feature whereas the wrapper and label being used by defendant does not bear any such photograph. Word "Tasty" which find place on the wrapper of plaintiff in bold letters with a particular calligraphy and colour scheme is also not available on the wrapper being used by the defendant.
26. ' The ratio of this Judgment will also not be applicable to the instant case for the reason stated hereinabove.
27. ' The other Judgment cited by the learned counsel for defendants on the case J.N. NICHOLS (VIMTO)
28. PLC v. Mehran Bottlers (Private) Limited (PLD 2000 Karachi 192) wherein a learned Single Judge of this Court (as he then was) while taking into consideration a case of Hiralal Parbhudas v. Ganesh Trading Company reported in AIR 1984 Bombay 218 and other several decisions of the Indian Supreme Court summed up well-established principles to be observed in deciding the question of similarity of two marks in the following manner:--
(a) What is the main idea or the salient feature?
(b) Marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole.
(c) Overall similarity is the touchstone.
(d) Marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection.
(e) Overall structures, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied.
(I) The purchaser must not be put in a state of wonderment.
(g) Marks must be compared as a whole, microscopic examination being impermissible.
(h) The broad and salient features must be considered for which marks must not be placed side by side to find out differences in design.
(i) Overall similarity is sufficient.
29. ' Keeping in view the established principles, it is noted that Vimto being the trade mark of the plaintiffs is being used by the defendants of course by prefixing their trade mark Pakola. Under the circumstances, an unwary purchasers, not the intelligent purchaser, is always likely to be deceived for the reason that he will only demand Vimto and is not supposed to provide necessary details about the two trade marks. A strong prima facie case is made out in favour of the plaintiffs and in such situation the balance of convenience goes into the backgrounds. This is for the reasons that the defendants cannot be permitted to take advantage of their own mischief by raising the plea of balance of convenience. Under the circumstances, the plaintiffs are likely to suffer irreparable loss."
30. ' The above judgment cited by the learned counsel for defendants does not help him, on the contrary it supports the case of the plaintiffs.
31. ' The other judgments cited by the learned counsel for the defendants are also distinguishable on the facts and do not improve the case of the defendants.
32. ' A bare look to box marketed by the defendant would show that it has complete resemblance providing similarity of design, colour, scheme and get-up by which an ordinary and/or illiterate customer would be misled for taking product of defendant as that of plaintiffs. It is the plaintiffs who have to suffer irreparable loss in case the defendants are not restrained from infringing the trade mark of the plaintiffs and passing their goods as goods of plaintiffs during the pendency of the suit, therefore, I am of the view that there is likelihood of confusion and deception if the defendants are allowed to market their product under the impugned trade mark.
33. ' During the course of hearing an offer was made by the Court to the defendants that they may continue to market their product in a box having different colour than the box of the plaintiffs.
34. Learned counsel for the plaintiffs agreed to this proposal, however, learned counsel for the defendants refused to agree with the proposal of the Court and they maintained that their trade mark "S" GOLDEN is registered with the Trade Mark Registry and they wish to market their product if the same colour scheme which has been impugned in this case.
35. ' Keeping in view the rule laid down by the Hon'ble Supreme Court of Pakistan in the above quoted judgments, a prima facie case has been made out by the present plaintiffs for grant of injunction.
36. There is an imminent threat to the reputation of the plaintiffs which they have earned in last so many yeaRs, The defendants cannot be allowed to take advantage of the goodwill of the plaintiffs by marketing their product in a box in the same colour, scheme and get-up by which an ordinary and/or illiterate customer would be misled for taking the product of the defendants as that of plaintiffs.
37. ' In view of what has been discussed above, the plaintiffs have a very strong prima facie case for grant of injunction. Even otherwise, the substantial monetary loss will be caused to the plaintiffs if the injunction already granted is not confirmed. Accordingly, I allow this application (C.M.A. 8445 of 2007) and confirm interim order already passed by this Court on 9-10-2007 whereby the defendants were restrained from using the trade mark complained of.
38. ' In view of above order, C.M.A. No,9055 of 2007 filed by the defendant under Order 'MIX, Rule 4 read with section 151, C.P.C. Has become infructuous, which is accordingly dismissed having become infructuous.
39. ' Office is directed to list this case for settlement of issues on 22-11-2010 with direction to the parties to file their proposed issues in the office prior to next date of hearing. If parties agree evidence can be ordered to be recorded on commission,