1. ' SAJJAD ALI SHAH, J.---In Suit No,1453 of 2011 plaintiff seeks an order restraining the defendant from using trade mark "MASACOL" on the ground that such mark being colourable or slavish imitation of plaintiff registered trade mark "ASACOL", whereas in Suit No,1468 of 2011 same plaintiff seeks a similar order against the same defendant in respect of trade mark. "ASACOL". Since the parties are same, both the trade marks are/were used in respect of same drug, facts of the case are common, therefore, both the applications (C.M.A. No,12140 of 2011 in . Suit No,1453 of 2011) and (C.M.A. No,12226 of 2011 in Suit No,1468 of 2011) were heard together and are being decided through this common order.
2. ' Briefly, plaintiff claims to be the registered proprietor of trade name "ASACOL" which has been registered in plaintiffs name in various countries including Pakistan vide Registration No,97788 in Class 5 on 13-3-1988. It is claimed that the drug "ASACOL" is used for the treatment of mild to moderate Ulcerative Colitis and inflammatory Bowel and was first marketed by the plaintiff in Pakistan through Messrs Saitex Pharmaceuticals (Pvt.) Ltd. After obtaining drug registration from Ministry of Health. The plaintiff upon acquisition of Messrs Saitex Pharmaceutical (Pvt.) Ltd. By the defendant entered into a Distribution Agreement with the defendant on 1-11-1999 for the import and sale of "ASACOL" and got the drug registration transferred to defendant's name. The defendant thereafter kept the said drug importing from plaintiff and selling it in Pakistan. The defendant in the year 2009 first informed the plaintiff that they have lost the import license and thereafter informed that Ministry of Health has refused to renew the import license in respect of the stated drug and stopped its import. The plaintiff thereafter learnt that the defendant had obtained trade mark "ASACOL" in its own name under Registration No,168904 in Class 5 by filing an application on 8-2- 2001 and has further got trade mark "MASACOL" in respect of the same drug registered in its own name on 28-6-2005. The plaintiff further learnt that the defendant got their drug Registration No,009581 of "ASACOL" transferred to its own name and in violation of Distribution Agreement which was otherwise valid upto 14-11-2012 was manufacturing and selling the said drug under trade name "MASACOL". It is asserted that all the stated acts of the defendants were in clear violation of the Distribution Agreement which consequently was terminated by the plaintiff on 16-12-2011.
3. ' On the other hand, the defendants have not denied the Distribution Agreement dated 1-11-1999 whereby the defendants were to import and sell "ASACOL" tablets. The defendants have further admitted the registration of trade name "ASACOL" as well as "MASACOL" in their name on 8-2-2001 and 28-6-2005 respectively. However, the case of the defendants is that right from beginning till year 2008 Ministry of Health was very reluctant to give license for the import of "ASACOL" on the ground that such drug can be locally manufactured. However, the license was finally renewed in December 2008 for 12 months with the condition that no further extension for import will be granted and the defendants thereafter would locally manufacture the drug. It is claimed that the plaintiff through out were kept informed as to concern of Ministry of Health and were communicated the condition of last renewal. The defendants imported the drug during the validity of license and the stock so imported lasted till mid 2010 and thereafter since the drug could not be imported, therefore, the Distribution Agreement stood frustrated. The defendants thereafter started manufacturing the drug locally and selling the same under the trade name "MASACOL". As to the trade name's, it is the case of the defendants that they applied for trade name "ASACOL" in their own rights on 8-2-2001 which was known to the plaintiff as they filed objections in the year 2006 which were subsequently abandoned. As to trade name "MASACOL" it is the case of the defendants that since the Ministry of Health was very reluctant to extend import license for "ASACOL" and was advising the defendants to locally manufacture the drug, therefore, the defendants as abundant caution sought trade mark "MASACOL" in the year 2005 but did not sell their drug "MASACOL" until after mid 2010 when the entire stock of the plaintiff was exhausted and no more import was possible.
4. ' Mr. Moen Qamar, learned counsel appearing on behalf of the plaintiff, has contended that the registration of trademark "ASACOL" by the defendant in its own name and its local manufacturing is in violation of the Distribution Agreement. Per counsel, the adoption of resembling trade mark "MASACOL" by the defendant is totally dishonest and, therefore, the defendants be restrained from selling the drug under the trade name "MASACOL". Reliance has been placed on the judgments of the Hon'ble Supreme Court of Pakistan in the cases of Seven-up Company v. Kohinoor Thread Ball Factory and 3 others (PLD 1990 SC 313), Messrs Alpha Sewing Machine Company v. Registrar of Trade Marks and another (PLD 1990 SC 1074), Kabushiki Kaisha Toshiba (also trading as Toshiba Corporation) v. Ch. Muhammad Altaf (trading as Murad Industries (Regd.) and another (PLD 1991 SC 27) and National Detergents Limited v. Nirma Chemicals Works and another (1992 M LD 2357).
5. ' It was further contended that the defendant has been infringing plaintiffs world reputed registered trade mark "ASACOL" through its imitated trade mark "MASACOL" and further got drugs registration No,009581 of the plaintiff in respect of "ASACOL" transferred to its own imitated trade mark "MASACOL". Counsel in order to plead that such similarity of the trade mark "ASACOL" of the plaintiff and the "MASACOL" of the defendant amount to infringement has placed reliance on Messrs Mehran Ghee Mills (Pvt) Ltd. And others v. Messrs Chiltan Ghee Mill (Pvt.) Ltd and others (2001 SCM R 967); The Wellcome Foundation Limited v. Messrs Karachi Chemical Industries (Private) Limited (2000 YLR 1376); Muhammad Saeed Mughal v. Messrs National Aviation Services (Pvt.) Limited (2001 YLR 2004); MOD International (Pvt.) Ltd. v. National Detergents Ltd. (1993 M LD 605); and National Detergents Ltd. v. MOD International (Pvt.) Ltd. (1993 M LD 590).
6. ' On the other hand, Mr. Faisal Siddiqui, learned counsel appearing on behalf of the defendant, has contended that the defendant on 8-2-2001 applied for registration of trade mark "ASACOL" and such fact was well within the knowledge of plaintiff, who initially filed objection to the registration, but abandoned such opposition in 2006 and ultimately defendant was granted registration of trade mark "ASACOL" on 12-2-2008 which under section 2(xi) read with section 33(3) of the Trade Marks Ordinance, 2001 is deemed to be registered from the date of application and consequently plaintiff under section 90(4) of the Trade Marks Ordinance, 2001 are barred from seeking injunction against the defendant from using the trade mark "ASACOL". Additionally, to plead acquiescence reliance has been placed on Ashok Kumar Sahu v. Union of India and others (AIR 2006 SC 3324) and Messrs Power Control Appliances and others v. Sumeet Machines Pvt. Ltd. And Sumeet Research and Holdings v. Sumeet Machines and another (1994 (2) Supreme Court Cases 448). It was next contended that plaintiff cannot plead infringement of its trade mark "ASACOL" through defendant's trade mark "MASACOL" as the defendant in their own right hold registration of trade mark "ASACOL" and the plaintiff had already initiated rectification proceeding seeking cancellation of trade mark "ASACOL" from the defendant's name by filing Judicial Miscellaneous Application No,105 of 2011 and unless such application is decided defendant cannot be restrained from using trade mark "MASACOL". It was further contended that defendant infact had applied for registration of trade mark "MASACOL" on' 28-6-2005 and the trade mark was actually registered on 2-3-2010 and the drug under the trade mark "MASACOL" is in the market since after mid 2010, which was well within the knowledge of defendant, but they did not react immediately and moved injunction application on 19-12-2011 i,e, after delay of 18 months, therefore, the plaintiff is not entitled to injunction on account of laches. Reliance has been placed on Al-Karam Textile Mills (Pvt.) Limited v.
7. Mehtah Chawala and 3 others (2007 CLD 966). It was next contended that "ASACOL" can no more be imported for want of import license nor it is in the market since last two years and further it is a pharmaceutical product and always sold on prescription, therefore, defendant cannot argue the similarity or deception to an un-weary purchaser. Reliance was placed on Getz Pharma (Pvt.) Ltd. v.
8. Farooq & Sons (2007 CLD 957), Lipha Lyonnaise Industrielle Pharmaceutique v. Registrar of Trade Marks and another (2009 CLD 1289), Bayer A.G. And another v. Mac ter International (Pvt.) Ltd. (2003 CLD 794), The Welcome Foundation Ltd. v. Khawar (1989 MLD 2516) and Tri-Star Industries (Pvt.) Ltd. v. Sayyed Engineers (Pvt.) Ltd. (2007 CLD 802). It was lastly contended that defendant has not committed any breach of distribution agreement as it stood frustrated in mid 2010 till the imported stock of the "ASACOL" lasted whereafter the defendant introduced their product "MASACOL" and further that since plaintiff himself had quantified the losses, therefore, not entitled to injunction.
9. Reliance was placed on Exide Pakistan Limited, Karachi v. Pakistan Accumulator (Pvt.) Ltd.
10. Islamabad and 3 others (2003 CLD 1117), Bolan Beverages (Pvt.) Limited v. Pepsico Inc. And 4 others (PLD 2004 SC 860) and Tahir Zaman v. Jin Wei (M) SDN BHD and others (2004 CLD 603).
11. ' In response Mr. Moen Qamar contended that the limitation of three years as provided under section 90(4) of the Ordinance, 2001 against the grant of an injunctive order would commence from the actual date of registration of trade mark coupled with continuous use of such trade mark for a period of three years and since the plaintiff has filed rectification petition well within three years of actual date of registration, therefore, the defendant cannot plead bar as provided under section 90(4) of the Ordinance, 2001. .
12. ' I have heard the learned counsel for the respective parties and carefully perused the record of the cases as well as case-laws cited at bar.
13. ' The first question which requires determination is the entitlement of the plaintiff to seek an injunctive order against the use of trade mark "ASACOL" by the defendant keeping in view the bar as contained under section 90(4) of the Trade Marks Ordinance, 2001.
14. ' The record reflects that the plaintiffs trade mark "ASACOL" was registered in Pakistan on 13-3-1988 and the defendant was importing "ASACOL" from the plaintiff under a distribution agreement. The defendant during the subsistence of such distribution agreement on 8-2-2001 applied for the registration of trade mark "ASACOL" in its own rights which application was given Registration No,168904 in class-5. The record further reflects that the plaintiff in the year 2005 through Messrs United Trade Mark and Patent Services, Lahore (their trade mark agent) filed Opposition No,298 of 2005, against the registration of trade mark "ASACOL" in the name of defendant which subsequently was abandoned and as evident from the certified copy of letter dated 12-10-2006 of the Trade Mark Registry the ' Registrar after necessary intimation to the plaintiff released the application which ultimately was allowed on 12-2-2008. The plaintiffs now after a lapse of six years has initiated rectification proceeding (J.M. No,105 of 2011) pending adjudication before this Court.
15. ' Before deliberating upon the controversy it would be of valuable assistance to reproduce the relevant provisions of Ordinance, 2001, which would require frequent referral.
16. ' Section 2(xi) of the Ordinance, 2001 defines "date of registration" as follows:-- "2(xi) "date of registration", in relation to the registration of a trade mark in respect of particular goods or services, means the day from which the registration of the trade mark in respect of those goods or services is. Taken to have had effect under subsection (3) of section 33;"
17. ' Whereas, section 33(3) of the Ordinance, 2001 reads as follows:-- "33 (3) A trade mark when registered shall be registered as of the date of filing of the application for registration and that date shall be deemed for the purposes of this Ordinance to be the date of registration."
18. ' Section 90 of the Ordinance, 2001 which provides for the consequences in case an importer, or an agent or representative applies for or obtains trade mark of his principal in his own name reads as follows:--
90. Acts of agent or representative.---(1) Where an application for registration of a trade mark is made by a person who is an importer, or an agent not being an agent under section 128, or a representative of a person whd is the proprietor of the mark in a Convention country, then-
(a) if the proprietor opposes the application, registration shall be refused; or
(b) if the application, not being so opposed, is granted, the proprietor may
(i) apply for the declaration of the invalidity of the registration; or
(ii) apply for the rectification of the Register so as to substitute his name as the proprietor of the registered trade mark.
(2) The proprietor may notwithstanding the rights conferred by this Ordinance, in relation to a registered trade mark, by injunction restrain any use of the trade mark in Pakistan which is not authorized by him.
(3) The provisions of subsection (1) or (2) shall not apply if, or to extent that, the agent or representative justifies his action.
(4) An application under clause (a) or (b) of subsection (1) shall be made within three years of the proprietor becoming aware of the registration, and no injunction shall be granted under subsection (2) in respect of a use in which the proprietor has acquiesced for a continuous period of three years or more.
19. ' I would first examine the contention of Mr. Moen Qamar that the time limit of three years prescribed under section 90(4) from the date of awareness of the registration is to commence from the date of actual registration of trade mark which in this case is 12-2-2008 and since the plaintiff has applied for injunction on 21-12-2011, therefore, the defendant cannot take shield of section 90(4) by pleading limitation.
20. ' A bare perusal of section 2(xi) read with section 33(3) of the Ordinance, 2001 leaves no doubt requiring any adjudication regarding the date of registration of a trade mark as section 33(3) in clear term provides that "the date of filing of application for registration of mark" shall be deemed for the purposes of Ordinance, 2001 to be the date of registration. Whereas, perusal of section 90(1) of Ordinance, 2001 reflects that in cases where an application for registration of trade mark in its own right is moved by an importer, an agent (excluding an agent appointed for registration of trade mark) or representative of the proprietor of the mark registered in a Convention country then
(a) if such application is opposed registration shall be refused (b) if the registration is allowed without an opposition then the proprietor of the mark is left with two options, (i) apply for declaration of the invalidity of the registration (ii) to apply for rectification of the Register seeking substitution of his name as proprietor of the registered trade mark. Whereas, subsection (4) provides time limit of three years for exercising such options "which is to commence from the date, the proprietor becomes aware of the registration". It further places an embargo upon the Court for granting injunction in respect of a use of such trade mark in which the proprietor has acquiesced for a continuous period of three years or more.
21. ' However, minute perusal of first part of section 90(4) which provides that "an application under clause (a) or (b) of subsection (1) shall be made within three years of the proprietor becoming aware of the registration", if read in conjunction with clause (a) of subsection (1) empowering the Registrar to refuse the application of the importer, agent or representative in case opposition is filed by the proprietor, does not permit the interpretation as pleaded by Mr. Moen Qamar. The very fact that the law provides two remedies to the proprietor of a trade mark to rectify the record which could be invoked at two different stages, firstly, under section 90(1)(a), before the application seeking registration of a mark is granted and secondly, under section 90(1)(b) after the grant of application by the Registrar reflects a clear intent of law that the period of limitation of three years would commence once the proprietor becomes aware that his agent, representative or importer has applied to get the registration of his mark. Any other construction would render the provision of section 90(1)(a) redundant. I am, therefore, of the view that once it is established that the proprietor of a trade mark was aware that his agent, representative or importer has filed an application for registration of his mark, be that after filing of application for registration of the trade mark or the actual registration of the trade mark, the period of limitation prescribed under section 90(4) of three years for availing the remedy under section 90(1) would commence.
22. ' As to grant of injunction against the defendant who also now hold trade mark "ASACOL" as registered owner, and has placed on record documentary evidence which from its tentative evaluation reflects that the plaintiff in the year 2005 exercised its right in terms of section 90(1)(a) by filing intent to object against the Grant of Trade Mark "ASACOL" in defendant's favour, but failed to file objection and abandoned the intent in the year 2006. This documentary evidence has been placed on record in support of the argument that since the plaintiffs right to claim rectification of register as provided under section 90 of Ordinance 2001 has become barred by time, therefore, they are not entitled to any restrain order against the defendant. Perusal of section 90 of Ordinance 2001 leads me to the conclusion that the remedy provided under section 90(1) becomes bar after three years of non-action on the part of proprietor despite his awareness that his agent, representative or importer has obtained or has moved the Registrar for the grant of his trade mark, whereas the remedy of injunction becomes barred when the proprietor acquiesce the use of his trade mark by his agent, representative, or importer for a continuous period of three years or where the agent or representative justifies his action. In such situation, the question for consideration perhaps would be that in case the plaintiff fails to get the record rectified, could the defendant still be restrained from using their registered trade mark "ASACOL" on account of non-use for a continuous period of three years specially when the plaintiff has not sought any declaration in the instant suit regarding invalidity of the defendant's trade mark in terms of section 90(1)(b)(ii). In my opinion the anomaly could not be resolved by applying rule of harmonious interpretation, however, the record reflects that the plaintiff has filed Judicial Miscellaneous Application No,105 of 2011 seeking rectification of trade mark which is pending adjudication and, therefore, it would not be proper to examine this aspect of case as no finding on the issue of abandoning the opposition can be given while deciding this application and, therefore, I would leave this question to be examined on final hearing of the suit or after the rectification petition is decided.
23. ' Now I will examine the case-law referred to by Mr. Moen Qamar in support of his contention that adoption of the plaintiffs trade mark "ASACOL" by the defendant is totally dishonest and unless restraint would be violative of the test laid down by the Courts in cases of infringement of trade mark i,e, "whether unwary purchaser is likely to be deceived in purchasing goods of the persons infringing trade mark as goods of the owner of the trademark"
24. ' In the case of Kabushiki Kaisha Toshiba (supra) relied by Mr. Moen Qamar, the respondent on 27- 10-1979. Applied for trade mark "TOSHIBA" in respect of (Class 11) electric fans claiming use of mark since 1978. On receipt of application the Registrar's office reported that the mark "TOSHIBA" stood registered in the same class in favour of Tokyo Shibaura Electric Company Limited, Japan. The respondent filed objections and the appellant responded. The Registrar after hearing allowed the application with the condition that the respondent shall always use trade mark "TOSHIBA" in Urdu.
25. An appeal before the High Court did not find favour and the appellant approached the Hoh'ble Supreme Court of Pakistan which held that "the respondent has shown no reason tenable at law to pick up an invented word of foreign firm enjoying inside the country and outside a reputation for electric goods of various descriptions. It was further held that the adoption of the, same trade mark phonetically in respect of electric fans is bound to create likelihood of confusion and deception to the consumers of such goods. Hence, it is against public interest to register such a trade-mark."
26. ' Likewise, in the case of MessRs, Alpha Sewing Machine Company (supra), petitioner sought registration of trade mark "Philip" for its sewing machines manufactured in Pakistan. The application was opposed by Messrs Philips Export on the ground that it was the proprietor, of trade mark Philip which was registered in Pakistan on 21-3-1951 in respect of machines, machine tools and motors (except for vehicle) including magneto electric welding machines, goods belonging to Class 7. It was maintained that such goods were being continuously sold in local market and by virtue of continued and extensive use, its products had become very popular and that the trade mark "Philips" was associated common other than itself. It was pointed out that its trade mark "Philips" was nearly identical with the appellant "Philip", the danger of confusion and deception was also pleaded. The Registrar after -hearing refused to grant such trade mark to the petitioner. The petitioner approached the High Court by filing an appeal which was dismissed by observing that "there is every likelihood of causing deception and confusion with the use of the mark PHILIP by the appellant and in such a case different nature of goods loses relevance". The principle was approved by the Hon'ble Supreme Court while dismissing the appeal.
27. ' In the case of Seven-Up Company (supra) respondent Abdul Aziz Noor Muhammad on 27-3-1963 filed an application for registration of trade mark "7-Up" in respect of Pan Masalah in Class 30, the same was advertised in the Trade Marks Journal. The appellant 7-Up Company filed opposition on the ground that their trade mark "7-Up" stands registered since 25-9-1948 in Class 32 in respect of soft drink, beverages and syrups, flavour and extracts for making soft drink and beverages. It was pleaded that word "7-Up" and design represents their world famous mark and the appellant's product though not similar is likely 'to be associated in the trade or are in some way likely to be connected with their manufacturer and is likely to cause deception and confusion. The Registrar after hearing allowed the application by holding that there was no evidence to show that the two sets of goods were produced by one and the same manufacturer, or sold by the same wholesale houses, therefore, the question of deception is far-fetched. The order further held that there is no monopoly of any trade mark, and the same trade mark can be used by different persons in respect of different goods. The appellant filed an appeal before the High Court, which was dismissed by holding that the real difficulty in the way of the appellant is that it did not produce any cogent evidence in support of its plea of the likelihood of confusion, or, deception between the competing goods. No doubt, this was for the very obvious reason that it is not even selling candies; therefore what evidence could it produce to show the possibility even of confusion between soft drinks and Pan Masalah. The matter came up before the apex Court which while allowing appeal held:-- "The fact that the Company "7-Up" is a multinational of international repute in the market for beverages and for that reason not likely to engage itself in trading in such an indigenous product may academically be sound for a marketing analyst but really of no or very little concern to the class of consumers served by these products. Their sale points and outlet points are quite often the same. The consumers served are largely of the same category. Both the products though classified differently for the purpose of trade mark fall, from consumers' point of view, in the same category of light refreshment or "Pep" preparations. Their features do make out a case of there being likelihood of confusion or deception with regard to their source. The applicants for this registration mark had a wide and open field to choose from. They decided upon the trade name of another which also happens to be name of the company which has heavily invested in that trade name and goodwill appurtenant to it. With that real likelihood of deception and confusion it was clearly a case where registration should have been refused."
28. ' In the case of National Detergent Limited (supra) the appellant on 13-6-1985 filed an application for registration of trade mark "Nirma" in respect of goods, "bleaching preparations and other substances of laundry use; cleaning, polishing, scouring and abrasive preparations; soaps, perfumery, essential oil, cosmetics, hair lotions, shampoos, dentifrices and detergents". After preliminary objection the application was advertised and the respondent filed objection to its registration and the Registrar after hearing came to the conclusion that the respondents are the proprietors of trade park "Nirma" and the appellants have falsely and dishonestly claimed proprietorship. He found that the mark has been extensively advertised in journals, through the Video films and Press and it would be against the public interest that products of different origins were sold with the same trade mark.
29. ' On appeal learned Single Judge of this Court while dismissing the appeal held as under:-- "The appellants have not alleged that the first respondents had abandoned any intention to use their foreign trade Mark in Pakistan for the goods and such inference cannot also be drawn in this case as the respondents have themselves filed application for registration of their mark and have expressed their intention to use it in Pakistan. The use of the word 'Nirma' is clearly not bona fide.
30. No appreciable reason has been shown by the appellants or their counsel except with the intention to cause confusion. The conduct of the appellants in appropriating Trade Mark of foreign owners is not proper."
31. ' There is no cavil to the test laid down by the Courts in the cases referred to above, however, in none of cases implications of section 90 of the Trade Marks Ordinance,, 2001 have been examined.
32. The important fact which distinguished the instant case from the referred cases is that in all cases the proprietor had objected to the registration process and ultimately the rights of the parties were decided in rectification proceedings, whereas in the instant case rectification proceedings are pending and on account of plaintiffs alleged giving up of his right to object by not pursuing the objection the defendant concurrently holds the trade mark "ASACOL" as proprietor and is not only pleading legal ownership of Trade Mark "ASACOL" but is pleading legal bar as to the maintainability of rectification proceedings in terms of section 90(4) of the Ordinance, 2001 as well as acquiescence, therefore, in my opinion it would not be appropriate to test the rights of parties on such criterion specially when rectification proceedings initiated by the plaintiff are pending adjudication.
33. ' However, there are other factors which persuade me to grant interim relief in favour of plaintiff restraining the defendant from using trade mark "ASACOL" and to enable the plaintiff to get their right adjudicated in rectification proceedings, one of such fact is that the defendant till date admittedly has never used trade mark "ASACOL" in its own right by introducing any product of their own. The defendant further in terms of Clause 8.4 of the Distribution Agreement whereby it was importing "ASACOL" from the plaintiff had acknowledged and agreed that it shall not acquire any right in respect of any trade names or trade marks of the plaintiff or its affiliates. The defendant further has failed to justify its action in terms of section 90(2). In the circumstances I am of the view that the plaintiff has made out a strong prima facie case, balance of inconvenience also appears to be in favour of plaintiff and no irreparable loss whatsoever would be caused to the defendant in case they are restrained from using trade B mark "ASACOL" at least till the rectification proceedings are decided and/or till final hearing of the suit, whichever is earlier. .
34. ' Now I would take up the controversy that use of trade mark "MASACOL" by the defendant is colourable or slavish imitation of plaintiffs trade mark "ASACOL" and is likely to cause deception or confusion to the ultimate consumer and, therefore, is liable to be restrained. The case-laws cited by Mr. Moen Qamar in support of his argument need to be examined first.
35. ' The first case cited by Mr. Moen Qamar is of Messrs Mehran Ghee Mills (Pvt.) Ltd. (supra) wherein the Supreme Court defined some of the factors which constitute infringement in the following terms:- "15. We have- noticed that trade marks of respondent No,1 and petitioner have close resemblance and are likely to cause confusion in the mind of purchaser. 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."
36. ' In the same judgment since none of the parties were registered owner of trade mark "Chiltan Banaspati", their applications for registration of same trade mark were pending registration, the Supreme Court while deciding their rights observed:-- "17. It is noted that admittedly, the applications for registration of trade mark of both respondent No,1 and petitioner are pending before the Competent Authority. It is a proven fact that Trade Mark "Chiltan Banaspati" is being used since 1974, while the petitioner has started using its Trade Mark since 1996. Under the circumstances the suit is maintainable for the alleged infringement. A strong, prima facie, case is established, balance of convenience is in favour of the respondent No,1, and said respondent No,1 will suffer irreparable loss if injunction is not granted."
37. ' In the case of The Wellcome Foundation Limited (supra), the consideration which prevailed with the learned Single Judge, in chamber, for granting injunction restraining the defendants from using trade mark "KAYPOL" against the plaintiffs trade mark "CALPOL" was that the plaintiffs trade mark "CALPOL" was registered and the trade mark of defendant "KAYPOL" was not. Additionally the plaintiffs had given the figures of their production and sale, whereas defendant failed to give the figure of sale in respect of their production sold tinder the trade mark "KAYPOL" and, therefore, the Court was of the view that the defendants have failed to show that their preparation has acquired any appreciable mark.
38. ' In the case of National Detergent Limited (supra) whereby the defendants were restrained from using trade mark French "Flare" against the plaintiffs trade mark "Flair", the consideration again was that the plaintiff was armed with the registered trade mark, namely, "Flair", whereas defendant was using unregistered trade mark, namely, "Flare". The decision of the learned Single Judge, in chamber, restraining the defendant from using their trade mark "Flare" was affirmed in appeal in the MOD International (Private) Limited (supra).
39. ' Likewise in the case of Muhammad Saeed Mughal (supra) whereby the decision of the learned Additional District Judge, Quetta was affirmed in an appeal by the learned Single Judge of Balochistan High Court at Quetta by restraining the appellant from using trade mark "YESGAS" against the respondent's trade mark "NASGAS". Again the consideration was that the trade mark of the respondent, was registered and of the appellant was not.
40. ' In all the cases examined above the consideration which prevailed with the Court while issuing restrain order beside similarity was infringement of registered trade mark or the trade mark of a prior user, by an unregistered trade mark holder or by a subsequent user. The fact which distinguishes this case from the cases examined above is that the defendant as of today is not only a registered proprietor of trade mark "MASACOL" but is also a registered proprietor of trade mark "ASACOL" and both the trade marks were registered on account of alleged acquiesce or waiver of rights on the part of the plaintiff, therefore, unless the plaintiff succeeds in rectifying the register of Trade Marks :the defendant would have a right to adopt a resembling trade mark to its own registered Trade Mark "ASACOL". Beside, despite the fact that "MASACOL" is also a. Registered trade mark of the defendant, the plaintiff without seeking any declaration or its cancellation is simply seeking injunction. Further, plaintiff could not place any material on record to deny the claim of defendant that after import of last consignment in the year 2009 the Ministry of Health has declined permission to grant license for the import of "ASACOL" and that the product is not available in Pakistan since last two yeaRs, It is an undeniable position on record that the product "MASACOL" is being sold in the market since middle of year 2010 and there appears to be no justification on record as to why the plaintiff has brought action against the defendant after a delay of almost 18 months specially when the plaintiff claim's that the defendant was his agent in Pakistan for sale of "ASACOL" which was not imported after expiry of its license in 2009. The defendant has further placed on record full correspondences with the Ministry of Health to show that right from the year 2002 Ministry was reluctant to grant extension of license for the bulk import and local packing of "ASACOL" and upon repeated persuasion had extended the license only for a period of 12 months with the condition that no further extension for import will be granted and the defendant would be bound to manufacture the product locally. In view of this position, neither the delay of 18 months for taking any action against the defendant and allowing them to capture sizable market can be ignored nor non-persuasion on the part of the plaintiff for getting its import licence revived.
41. ' Coming to the claim of plaintiff that Drug Registration No,009561 in respect of their 400mg tablet "ASACOL" was dishonestly and malafidely got transferred by the defendant in respect of their product "MASACOL", such allegation has been responded by the defendant by asserting that after the permission to import 'ASACOL" for the year 2010 was declined it was the Ministry's own decision to assign same registration number to the drug "MASACOL" 400mg tablet, whereas defendant "MASACOL" 800mg tablet was assigned a different registration number. The allegation and counter allegation require further probe into the matter, as the response of Ministry of Health is not on record on account of plaintiffs failure to array them as defendant.
42. ' In the circumstances, I am of the view that the claim of plaintiff as to infringement of their trade mark "ASACOL" by the defendant through their registered trade mark "MASACOL" on the plea of similarity cannot be determined unless the plaintiff succeeds in rectifying the register of Trade Marks in respect of "ASACOL" and till then I do not find the plaintiff entitled to an injunction.
43. Additionally the balance of inconvenience tilts in favour of defendant on account of admitted position that the plaintiffs product even today is out of market and the defendant's claim to have captured sizable market is in record, therefore, the injunction is declined. However, once the plaintiff succeeds in rectifying the record it will be open for the plaintiff to repeat such application.