SADIQ HUSSAIN BHATTI, J. - We propose to dispose of these two connected appeals by this common order as the same have arisen out of a common judgment dated 12.11.2010 passed by the learned single Judge in Suits No. 1282 of 2007 and 1283 of 2007, whereby the applications under Order XXXIX, rules 1 and 2, filed by the respondents in the above suits were allowed while the applications under Order XXXIX, rule 4, CPC, filed by the appellants were dismissed and the interim order passed earlier were confirmed.
2. Brief facts of the case are that respondents filed Suits No. 1282 of 2007 and 1283 of 2007, claiming therein that respondent No. Is a well-known and reputable manufacturer and merchant of threads of all kinds which it has been selling throughout the world for a number of years while respondent No. 2 is a company carrying on such business in Karachi and is a subsidiary of respondent No. 1.
They are using trade mark "ANCHOR" on their goods which is their registered trade mark. According to the respondents/plaintiffs, their products are of high quality and are sold in boxes featuring their trade mark and distinctive colour scheme. They claim that their products are recognized and asked for by the ordinary purchaser by the distinctive colour scheme, appearance and get-up of the wrapper wherein the goods are packed. It is further the case of the plaintiff that their goods as extensively advertised in. Pakistan on a substantial scale and by reason of the extensive advertisement and superior quality of their goods the respondents/plaintiffs have acquired a valuable reputation and goodwill in respect of their goods. The respondents claimed that on or about 11.5.2007, the respondents/plaintiffs discovered that the appellants are also manufacturing and selling threads in balls and skeins packed in boxes deceptively similar to that of the respondents/plaintiffs which are likely to deceive and/or cause confusion among the ordinary purchasers of the respondents'/plaintiffs' products. The respondents/plaintiffs called upon the appellants/defendants to refrain from doing such acts without any fruitful result. Ultimately, they filed the said two suits in which they also filed applications under Order XXXIX, rules 1 and 2, CPC seeking interim stay till decision of the suits. These applications were heard by a learned Single Judge who allowed the same vide the impugned Orders. It is against these orders that the present High Court Appeals have been filed.
3. Learned counsel for the appellants contended that there is absolutely no infringement of the registered trade of the respondents on the part of the appellants. It was submitted that the trade mark of the appellants, namely, "Butterfly" and "S Golden" are totally different from the respondents' registered trade mark of "ANCHOR" both visually and phonetically. It was also contended that the colour scheme of respondents is not registered, therefore, no cause of action accrued to the respondents. It was next contended that the appellants cannot be prevented from using their own registered trade mark.
4. On the other hand, Mr. Munawar Ghani, learned counsel appearing on behalf of the respondents, submitted that his case is not that of the infringement of the registered trade mark of the respondents by the appellant but it is the case of passing of as the grievance of the respondent was that the appellants are packing their products in a pack which is strikingly similar to that of the respondents, In this way the appellants are deceiving ordinary purchaser into believing the goods of the appellants to be that of the respondent and thus are causing huge 1 losses to the respondents.
5. The contention of the learned counsel for the appellants that there is no infringement of the registered trade mark of the respondents as the registered trademarks of the appellants, namely, "BUTTERFLY" and "S GOLDEN" are totally different, phonetically as well as visually, from that of the respondents registered trade mark of "ANCHOR" need not be discussed as it is not the case of the respondents that the appellants are infringing their registered trade mark. The main contention of the learned counsel for the respondents was that it is the case of passing of as the appellants are packing their products in a pack which is almost identical in appearance to that of the respondents, In this way the appellants are deceiving ordinary purchaser of the products of the respondents into believing the goods of the appellants to be that of the respondent. Therefore, the case of the respondents is that of 'passing off and not of infringement of their registered trade mark by the appellants.
6. The learned Single Judge, while dealing with this aspect of the case, has held as under:- "Now taking up first submission of Mr. Munawer 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 A 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.
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 produce manufactured by defendant on that of plaintiff, would prima facies 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.
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 RPC225)."
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. 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."
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 respondent 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."
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 goodwill 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."
7. The learned single Judge, while disposing of the application under Order XXXIX, rules 1 and 2, CPC, filed by the respondents, has relied on the case of Messrs Western Brand Tea, Karachi v. Messrs Tapal Tea (Pvt.) Limited, Lahore and another (PLD 2001 SC 14) wherein the Hon'ble Supreme Court has deprecated the use of deceptive measures.
8. We have examined the two packs produced during the course of arguments by the learned counsel for the respondent and a perusal of thereof reveals that the colour scheme, label design and pattern of the two packs is almost identical and an ordinary person cannot differentiate between the two at a cursory glance. There is no doubt that colour per se cannot be a trade mark.
However, where colours have been formed into device or devices or where device or devices are used in a backdrop of any colour combination, mark as a whole may form a distinctive mark. In the instant case though the marks of the appellants i.e. "GOLDEN (S)" and "BUTTERFLY" in HCA No. 280 of 2010 and HCA No. 282 of 2010, respectively, are phonetically and visually quite different and distinctive from the respondents registered trade mark "ANCHOR". However, when all the three packets are kept side by side - for example in a showcase of the shopkeeper, an ordinary purchaser would not be able to distinguish between the three on account of the identical size of the packs in the backdrop of yellow colour with typical rectangular border running across the packing, they will tend to cause confusion in the mind of unwary purchaser. It is also to be noted that the goods of the opposing parties are to be offered in same and common outlets/sale points, therefore, if the packets are mixed with each other an unwary buyer may be deceived, In the case of LIPHA LYONNAISE INDUSTRIELLE PHARMACEUTIQUE through Authorized Signatory v. REGISTRAR OF TRADE MARKS and another (2009 CLD 1289) a converse situation was discussed in the following words by a learned single Judge of this Court:- "27. The boxes in which the products are sold not only show dissimilarity in spelling of the suffixes but also each have different chemical names underneath. The colouring used on the respective boxes is also different (one green and the other red and blue). Furthermore, there is already a registered product in the market known as Gluconil which is also for the treatment of diabetes.
Since these are pharmaceutical products, the public, who purchases the product, may also have the benefit of the pharmacist's advice or even have been prescribed the respective product in writing by a doctor. This is especially relevant in this particular case, as both the products on their respective boxes State that the dosage is to be as prescribed by the Physician and that they are to be sold on the prescription of a registered Medical Practitioner."
5. In the above cited case, the learned single Judge emphasized that even if the prefixes are similar but since the colouring of the boxes are different; therefore, an ordinary person cannot be deceived. Thus, a particular colour scheme plays a vital part in the identification of a product and it is particularly so when such product is used mainly be illiterate persons.
6. We do not find any infirmity in the impugned orders passed by the learned Single Judge of this Court which are impugned herein and, accordingly, vide our short order dated 27th February, 2013, we dismissed these two appeals. These are the reasons for the same.