' SALMAN HAMID, J.---Through this application, moved under Order XXXIX, Rules 1 and 2, read with section 151, C.P.C. (CMA), the plaintiff has prayed for a restraining order against the defendants Nos.
1 and 2 from using the imitated trade mark LUNIMARC and the imitated Archer Device which according to it is in infringement of its well-known trade mark LUMINARC and the Archer Device and ARC. Ex parte interim order in favour of the plaintiff was passed by this court on 2-2-2011.
2. It is claimed by the plaintiff that it began using LUMINARC as its trade mark for glassware etc. In France in the year 1948 and that such mark has been in continuous use since its adoption. It was claimed that the plaintiff also has a copyright under the provisions of the Copyright Ordinance 1962 in the artistic representation of its trademarks LUMINARC, ARC and Archer Device, the stylized designs, devices, being artistic and literary works. Therefore use of this artistic and literary works unauthorized by third parties would constitute copyright infringement of plaintiff's rights. The trade mark LUMINARC, ARC and the Archer Device, according to the plaintiff are leading famous and well- known brands in almost all the countries of the world including Pakistan and that the plaintiff is selling these brand names for decades. The plaintiff also claimed that it is actively marketing its products by extensive sale promotions and advertisements through, multimedia in numerous countries including Pakistan which products have substantial reputation and good-will throughout the world, including Pakistan and are well known and has a popular household name in the field of glasswa re and utensils and allied products. It was also asserted that the persons/people living in Pakistan use and have purchased as well as have knowledge of the plaintiffs products under trademark LUMINARC, ARC and the Archer Device and have knowledge of the products under the said trade mark that it originates from the plaintiff, The plaintiff urged that the reputation and good-will of trademarks and company are no longer territorial or confined within the national borders and in country and that the good-will and reputation in fact travel across international borders and have become of international character. To protect its interest and rights in the well- known trade mark LUMINARC. ARC and the Archer Device in Pakistan. The plaintiff stated that it had applied for registration of aforesaid trade marks in or about October, 2010 by way of Application Nos.28951 and 28955 in Class 21. It was further mentioned that on account of prior adoption use and worldwide promotion of trademarks LUMINARC, ARC and the Archer Device, the plaintiff is the sole proprietor thereof and has exclusive right to use the said trade mark in respect of all products in various countries, including Pakistan. It was mentioned that in the event of such trademarks being used by anyone else in any manner which are identical thereto or even mere resemblance to it shall deceive and cause confusion in the consumers. It was argued that such act having been committed by the defendants Nos.1 and 2, without permission or consent of the plaintiff, has fallen within the meaning of section 67 of the Trade Marks Ordinance, 2001 (2001 Ordinance) which speaks about unfair competition. It was also mentioned that the trademark LUMINARK, ARC and the Archer Device are protected in terms of the provisions of section 86 of the 2001 Ordinance being well known and is protected against the acts of unfair competition by third party.
3. Having argued and asserted as much, it was mentioned by the plaintiff that it (plaintiff) came to know through an advertisement in Trade Mark, Journal No,675 of April 1, 2007 (published on April 26, 2007), wherein at page 1933 it was mentioned that the defendant No,1 had filed an application No,202150 in Class 21 dated October 19, 2004, seeking registration of the trade mark LUNIMARC with Archer Device. It was asserted by the plaintiff that defendant No,1 has imitated trade mark LUNIMARC which was nothing but the replacement of the letter "M" with the letter "N" in earlier part and the letter "N" with the letter "M" in later part of plaintiffs reputed and well known trade mark LUMINARC.
' It was also urged that the defendant No,1 also imitated Archer Device which was a clear imitation of plaintiffs Archer Device in reverse position with little variation i,e, in the case of plaintiff the Archer is running while in the case of defendant No,1 he was standing with change of weapon to falsely suggest that the defendant's product originates from France. It was also mentioned that the plaintiff opposed the grant of registration of the applied imitated trade mark LUNIMARC and the imitated Archer Device by filing Opposition No,762 of 2007 with the Registrar of Trade Marks on July 25, 2007. It was claimed that in January, 2011, the plaintiff came to acquire knowledge that the defendant No,1 with mala fide intentions and to dodge and deceive the plaintiff and the law, are manufacturing products under the imitated trade mark LUNIMARC and the imitated Archer Device from China to show that such are plaintiffs products and were making efforts to import the same into Pakistan through defendant No,3. Thus the present suit was filed after intimating the defendant No,3 about such infringement.
4. Rebutting the above stand of the plaintiff, it was asserted by the defendant No,1 that the present suit is not maintainable inasmuch as that Melamine Emporium, Karachi, have not been made a party as it is such person/company, which was importing the above products/ goods from China. It was also alleged that the present suit was not maintainable under section 86 of 2001 Ordinance which became effective in 2004 when the Federal Government made the Rules i,e, Trade Marks Rules, 2004. (2004 Rules) by exercising powers under section 132 of 2001 Ordinance. It was also mentioned that the plaintiff is not entitled for protection under section 86 of the 2001 Ordinance inasmuch as subsection (4) thereof provides that right conferred under subsection (3) of section 86 shall be subject to the provisions of section 81 of the 2001 Ordinance. It was denied that the trade mark LUMINARC of the plaintiff is a well-known trade mark. It was also mentioned that the trade mark LUMINARC of the plaintiff is not a registered trade mark or in use in Pakistan and therefore, the plaintiff is not entitled to any protection in respect thereof. It was also mentioned that the trade mark of the defendant No, 1 i,e, LUNIMARC with device of Swordsman is in use by the defendants Mos. And 2 since more than a decade. It was also asserted that the power of attorney was not a properly executed document and, therefore, the case on its basis was not maintainable.
It was also asserted that the plaintiff have no market/sale of its product in Pakistan. It was also asserted that the device Archer of the plaintiff is also not registered. Even application for its registration has not been filed; while the device. Swordsman of the defendants Nos.1 and 2 is a registered trade mark. It was also mentioned that the application for registration of trade mark of the defendant i,e, LUNIMARC was filed on 19-10-2004 and it was accepted by the Trade Mark Registry and was notified in the Trade Mark Journal against which the plaintiff filed its Opposition which is under adjudication before the Registrar of Trade Mark since 1-4-2007 and, therefore, the urgency to file the application to get the restraining orders, while the application was still pending, was not justified. It was lastly asserted that the ex parte injunction order was obtained by the plaintiff through misrepresentation inasmuch as that the suit was filed about four years after filing of the Opposition to the application, before the Registrar of Trade Marks and the mala fides of the plaintiff were patent. It was, therefore, asserted that not only injunction application be dismissed but also the plaint be rejected under Order VII, rule 11, C.P.C.
5. Heard arguments of learned counsel for the plaintiff and the defendants Nos. 1 and 2 and have also gone through the file with their able assistance. The 2001 Ordinance was promulgated on 14- 4-2001 when it was felt expedient to amend and consolidate the law relating to trademarks and unfair competition and to provide for registration and better protection of trademarks and for the prevention of the use of fraudulent marks and for matters ancillary thereto or connected therewith.
It may be pertinent to note that the promulgation of 2001 Ordinance came about with a certain background as reflected in the case of Soneri Travel and Tours Ltd. v. Soneri (Bank Limited (2011 CLD 193), wherein a Division Bench of this Court (judgment authored by Mr. Justice Munib Akhtar, J) it was mentioned that: "multilateral trade negotiations round known as the Uruguay round culminated in the establishment of the World Trade Organization (known as the WTO) by means of the Marrakesh Agreement, which came into effect on 1-1-1995. Along with the Marrakesh Agreement, the states party to the same (known as member states, and including Pakistan) also entered into a number of other agreements, one of the most important of which (and of particular relevance for present purposes) was the Agreement on Trade-related Aspects of Intellectual Property Rights (Commonly known as TRIPS). As its name suggests, TRIPS relates to intellectual property rights including patents, trademarks and designs. Developed countries had to bring their national legislation in conformity with the WTO and other related agreements, including TRIPS, more or less immediately, but developing countries like Pakistan were given certain grace periods in this regard, which in the case of TRIPS extended up to 5 years. Part I of TRIPS lays down certain general provisions and basic principles, while section 2 of Part II specifically deals with trademarks and related rights. Article 2 (which is to be found in Part I) provides that in respect of Part II,' member States have to comply with Articles 1 through 12, and 19 of another agreement, the Paris Convention for the Protection of Intellectual Property, as amended (commonly known as the Paris Convention). Thus, in order to comply with their obligations under TRIPS, the member States also had to be in compliance of the Paris Convention. Pakistan became a signatory to the Paris Convention on 22-7-2004. It was in order to comply with its obligations under TRIPS that Pakistan repealed its then existing intellectual property laws, being the Patents and Designs Act, 1911 and [Trade Mark Act 1940] the 1940 Act, and replaced them with the Patents Ordinance, 2000, the Registered Designs Ordinance, 2000 and the 2001 Ordinance respectively. This is therefore the backdrop to the 2001 Ordinance, and in order to understand and apply its provisions properly, it is necessary to keep in mind the relevant provisions of TRIPS and the Paris Convention. If the 1940 Act and the 2001 Ordinance are compared, it will be seen that the latter statute introduces many new legal concepts (based of course, on TRIPS and the Paris Convention) which were not to be found in the 1940 Act, the 2001 Ordinance in many cases uses new. And different, statutory language.
Thus, even in respect of facts and circumstances which may be the same as, or similar to those as arose under the 1940 Act, the application of the 2001 Ordinance may yet yield different results.
Cases decided under, or in relation or with reference to, the 1940 Act must therefore be reread and reappraised carefully before they are applied to the provisions of the 2001 Ordinance, even if those provisions may appear at first sight to be equivalent to those under the former enactment."
6. Having brought forth the background and/or the reasons of 'repeal of the Trade Marks Act, 1940 and promulgation of 2001 Ordinance, it would also be important, for the purposes of decision of this CMA to look into the provision of sections 67 and 86 of the 2001 Ordinance, which reads as under:--
67. Definition of unfair competition and provisions relating thereto--- (1) An "unfair competition" means any act of competition contrary to honest business practices in industrial or commercial matters and without prejudice to the generality of the foregoing, such acts may include
(a) all acts of such nature as to create confusion by it any means whatsoever with the establishment, goods, services or industrial or commercial activities of a competitor;
(b) false allegations in the course of trade of such a nature as to discredit the establishment, goods, services or industrial or commercial activities of a competitor;
(c) indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, manufacturing process, characteristics, constituents, quality or the suitability for their purpose of the goods or services;
(d) any act or practice, in the course of industrial or commercial matters that results in the disclosure, acquisition or use by others of information without the consent of the person lawfully in control of the information in a manner contrary to honest industrial or commercial practice so long as such information relates to sale or manufacture of goods or provision of services and
(i) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, general known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
(ii) has commercial value because it is secret: and
(iii) has been subject to reasonable steps under circumstances, by the person lawfully in control of the information, to keep it secret;
(e) making of false or deceptive statements in the course of trade;
(f) misleading advertising: or
(g) fraudulently registering or apply for registration of a trade mark.
"86. Protection of well-known trade mark.---(1) Reference in this Ordinance to a trade mark which is entitled to protection as well-known trade mark shall be to a mark which is so entitled under the Paris .Convention and which is well known in Pakistan as being the trade mark of a person who-
(a) is a national of a Convention country; or
(b) is domiciled in or has a real and effective industrial or commercial establishment in; a Convention country, whether or not that person carries on business, or has any goodwill, in Pakistan and references to the proprietor of such a mark shall be construed accordingly.
(2) For the purposes of this Ordinance, the Tribunal while determining whether a trade mark is well known, without having to require registration or actual use in the form of sales of goods or services under the trade mark in Pakistan shall consider the following factors as relevant criteria for establishing the well-known status of the trade mark; namely.--
(i) the amount of Pakistan or worldwide recognition of the trade mark;
(ii) the degree of inherent or acquired distinctiveness of the trade mark;
(iii) the Pakistan or worldwide duration of the use and advertising of the trade mark;
(iv) the Pakistan or worldwide commercial value attributed to the trade mark;
(v) the Pakistan or worldwide geographical scope of the use and advertising of the trade mark;
(vi) the Pakistan or worldwide quality and image that the trade mark has acquired; and
(vii) the Pakistan or worldwide exclusivity of use and registration attained by the trade mark and the presence or absence of identical or deceptively similar third party trademarks validly registered or used in relation to identical or similar goods and services.
(3) The owner of a trade mark which is entitled to protection under the Paris Convention as a well- known trade mark shall be entitled to restrain by injunction the use in Pakistan of a trade mark which, or the essential part of which, is identical or deceptively similar to the well known trade mark
(a) in relation to identical or similar goods or services, whether the use is likely to cause confusion or
(b) where such use cause dilution of the distinctive quality of the, well known trade mark
(4) Rights conferred under subsection (3) shall be subject to the provisions of section 81 and nothing in the said section shall affect the continuation of any bona fide use of a trade mark begun before the commencement of this Ordinance."
7. In the case of Soneri Tavel and Tour (supra), a Division Bench of this court observed that: "if the 1940 Act and the 2001 Ordinance are compared, it will he seen that the latter statute introduces many new legal concepts (based of course on TRIPS and the Paris Convention) which were not to be found in the 1940 Act, the 2001 Ordinance in many cases uses new, and different, statutory language. To my understanding sections 67 and 86 of 2001 Ordinances (reproduced above) are new legal concepts which, it seems, were not available in the Trade Marks Act 1940. It is, to my understanding, also, are provisions of law which stand on their own and exclusively deal with unfair competition and well known trademarks. These sections, it seems are over and above section 40 of 2001 Ordinance, which speaks about the infringement of registered trade mark only and yard stick of its measure is altogether different and distinct to sections 67 and 86 of the 2001 Ordinance.
8. It is the case of the plaintiff that its trademark is a well-known trademark; therefore, it is entitled to protection under section 86 of 2001 Ordinance. A bare perusal of above reproduced section would show that under the Paris Convention, [section 85(a) of 2001 Ordinance] a protection is given to the Industrial Property and that by way of clause (b) thereof [section 85 of 2001 Ordinance], a Convention country means a country other than Pakistan, which is a party to the Paris Convention. It is no body's case that the plaintiff is not a Convention country. This being so the plaintiff, prima facie is entitled to protection claimed by it under section 86 of 2001 Ordinance.
Clause (b) of subsection (1) of section 86 would show that whether or not a person member of the Convention country and/or Paris Convention carries on business or has any good-will in Pakistan and references to the proprietor of a mark,. Shall be construed accordingly. Subsection (2) of section 86 of the Ordinance 2001 provides that while the Tribunal [as per section 2(b) of 2001 Ordinance, Tribunal means the Registrar or as the case may be, High Court or a District Court before which the proceedings concerned are pending] without having to require registration or actual use in the form of sales of goods or services under trademark in Pakistan, shall have protection if the criteria for establishing the well known status of the trade, as mentioned from clauses (i) to (vii) of subsection (2) of section 86 of 2001 Ordinance, are met.
9. Subsection (3) of section 86 of 2001 Ordinance provides that the owner of a trade mark which is entitled to protection under the Paris Convention as a well known trade mark shall be entitled to restrain by injunction the use in Pakistan of a trademark which, or the essential part of which, is identical or deceptively similar to the well known trade mark, which would be (a) in relation to identical or similar goods or services, whether the use is likely to cause confusion or (b) where such use cause dilution of the distinctive quality of the well known trade mark.
10. Per section 2(xiii) of 2001 Ordinance, dilution means the lessening of the capacity of a well known trade mark to identify and distinguish the goods or services regardless of the presence or absence of competition between the owner of the well known trade mark or other parties, .Or likelihood of confusion or deception. It has come on record particularly page 545 (Annexure J to the plaint) wherein the trademark of the defendant No,1 is available which amongst others also say, 'France Home Set". This prima facie shows that the defendants Nos.1 and 2 are trying to pass off their goods firstly by using the well known trade mark of the plaintiff and secondly it is also mentioned to mislead the consumer that the product is of the plaintiff made in France. At this stage test of deceptively similar, which means as per section 2(xii) of 2001 Ordinance such near resemblance between it and another trade mark that it is likely to deceive or cause confusion becomes important inasmuch as that on the face of it the trade mark of defendants No,1 is deceptively similar in relation to trade mark of the plaintiff which resemblance between the plaintiffs trade mark and defendant Nos.1 and 2's trade mark will likely to deceive and cause confusion in common consumers' mind. This narration of events, prima facie show that the defendants Nos.1 and 2 have also fallen prey to the provisions of section 67(f) and (g) and subsections (2) and (3) thereof. It also prima-facie shows that the imitated word LUNIMARC is deceptively similar not only in spelling by also phonetically and is invariably also pronounced to be read as LUMINARC, a well know name/word associated With the plaintiff, used by it internationally since 1948. Same is the position with the Archer device. Prima facie the intent of the defendants Nos.1 and 2 seems to be to cash on from the plaintiffs well know trademark: which is not permissible under the law (2001 Ordinance).
11. Under the circumstances, defendants Nos.1 and 2's contention that by virtue of section 4 of section 86 of 2001 Ordinance that the rights conferred under subsection (3) shall be subject to the provisions of Section 81 when it comes to protecting the right of the plaintiff shall have no bearing inasmuch as that the defendant No,1 are in use, continuously before the commencement of 2001 Ordinance in 2004, bonafidely hardly meets the test when compared to the documents filed by the plaintiff in support of their case. It would be noted that even under section 81 of the 2001 Ordinance, which was relied upon by the defendants Nos.1 and 2, it is mentioned that where the owner of an earlier trade mark, or other earlier rights, as acquiesced for a continuous period of five years from the date of registration in Pakistan being aware of that use there shall cease to any entitlement on the basis of that earlier trade mark or other right. The test, therefore, is whether the use was bona fide, whether the owner of the trade mark had acquiesced after knowledge for a continuous period of five years when he became aware of such opposition. To answer these questions, it may be relevant to observe that according to the defendants Nos.1 and 2's own showing they got their mark registered in 2004 and when in the Trade Journal such trademark was published in 2007, the plaintiffs immediately in 2007 filed their Opposition. Such being the position, the benefit of section 81 and/or the benefit of subsection (4) of section 86 of 2001 Ordinance seems to be a far cry and cannot be extended to the defendants Nos.1 and 2. At this stage perhaps the definition of misleading advertisement as contained in section 2(xxxv) of the 2001 Ordinance would be advantageous to reproduce which means, "any advertising which in any way, including its presentation, deceives or is likely to deceive the persons to whom it is addressed or whom it reaches and: which, by reason of its deceptive nature, is likely to affect their behaviour or which, for those reasons, injures or is likely to injure a competitor". Analyses of this definition would prima facie establish that all the promotion made by the defendants Nos.1 and 2 with regard to their products were aimed at to pass of the same from the well known products of the plaintiff, which by virtue of section 86 of 2001 Ordinance stand on a higher pedestal and seemingly require preferential treatment. The various case-law cited by the learned counsel for plaintiff and defendants Nos.1 and 2 may not be of any use and I once again rely upon the Soneri Travel and Tour case wherein Division Bench of this court held that the 2001 Ordinance in many cases uses new, and different statutory language. Thus, even in respect of facts and circumstances which may be the same as, or similar to, those as arose under the 1940 Act, the application of the 2001 Ordinance may yet yield different results. Cases decided under, or in relation or with reference to, the 1940 Act must therefore be reread and reappraised carefully before they are applied to the provisions of the 2001 Ordinance, even if those provisions may appear at first sight to be equivalent to those under the former enactment."
12. Defendants Nos.1 and 2's contention that since the plaintiffs prima facie is not registered in Pakistan is of no force if gauged from the language of subsection (2) of section 86 of the 2001 Ordinance, which specifically says that the Tribunal while determining whether a trade mark is well known would look into it as such, without having to require registration or actual use in the form of sales of goods or services under the trade mark in Pakistan and shall consider only the factors as relevant criteria to come to the close whether the trademark was well known. It would be seen from the seven factors mentioned in subsection (2) of section 86 of Ordinance 2001 that such are to be seen either in relation to mark of such well known product in Pakistan or worldwide. The plaintiffs, for the purposes of injunction, have shown prima fade that their trademark is well known worldwide. The criteria of "or well know world wide" at this interlocutory stage, prima facie has been met. Since the basic test of prima facie case having been achieved by the plaintiff, and looking at the peculiar embodiment of section 86 of 2001 Ordinance, which according to me is quiet liberal when it B comes to be gauged from the plaintiffs point of view, the ex parte injunctive order passed by this court on 2-2-2011 is hereby confirmed.
13. The other contention of learned counsel for the defendants Nos.1 and 2 regarding power of attorney and filing of the suit on its basis need not to be looked into at this interlocutory stage; nevertheless I have examined the power of attorney and 'am of the view that it fulfills the test and on its basis, the present suit could have been filed. Still if there is some lacuna in the power of attorney which, on the face of it, is not visible can always be taken care of and cured by the principal by way of rectification. Shortcoming of the power of attorney, as depicted by the defendants Nos.1 and 2 are not fatal and can always be cured at the later stage.
14. The CMA is disposed of in terms hereof, i,e,, injunction order passed on 2-2-2011 is hereby confirmed.