' AZIZ-UR-REHMAIJ, J.---The plaintiff has filed the above suit through its duly authorized signatory viz. Babar Waheed son of Abdul Waheed for grant of permanent injunction restraining the defendant perpetually from using the imitated trademark 'MALTOS' in infringement of plaintiffs registered trademark 'MALTOFER' or any colourable imitation thereof in respect of pharmaceutical preparations and for damages, accounts of profits with the following prayers:-- "27.
1. That in view of the above it is respectfully prayed that this Hon'ble Court may be pleased to pass a decree against the defendant and/or its, managers, employees, servants, distributors, men, agents, stockiest, retailers or dealers engaged in the aforesaid illegal activities and all persons claiming through or under them jointly or severally (hereinafter jointly referred to as the defendant) in the following terms:-
(a) A decree for permanent injunction restraining the defendant perpetually from using the imitated trademark 'MALTOS' in any manner or any other trademark as may be colourable or slavish imitation and/or infringement of plaintiffs registered trademark MALTOFER';
(b) A decree for permanent injunction restraining the defendant perpetually from using in any manner and selling pharmaceutical preparations under the imitated trademark 'MALTOS' and from using and infringing the plaintiffs registered trademark 'MALTOFER' or any colourable imitation thereof, manufacturing, selling, supplying, stocking, importing, exporting, offering for sale, passing off, advertising or otherwise enabling others to infringe or pass off, offer for sale or use and sell defendant's products in particular pharmaceutical preparations or medicinal products, using the imitated trademark 'MALTOS' or any colourable imitation of plaintiffs registered trademark 'MALTOFER';
(c) A preliminary decree for an account to be rendered by the defendant of the sale and profits wrongfully made by the defendant from the sale of his products under the imitated trademark 'MALTOS':
(d) A final decree for the payment to the plaintiff of sums, of the money found due on taking of such accounts under the aforementioned preliminary decree;
(e) A further money decree against the defendant for payment of Rs, 15,000,000 (Rupees Fifteen million only) to the plaintiff as damages on account of partial compensation for, the loss and damage to the goodwill and reputation of the plaintiff.
(f) Costs of the suit may also be awarded; 27.2. This Hon'ble Court may further be pleased to:
(i) Pass an order directing the defendant to recall all the stocks of any of his products from the market being sold under the imitated trade mark 'MALTOS' and for destruction or replacement of the labels/packing thereof along with destruction or handing over to the plaintiff for destruction of all the offending labels/packing and other printed material bearing the imitated trademark 'MALTOS';
(ii) An order directing the defendant to declare on oath for delivery up to the plaintiff or for destruction or defacement of all unsold stocks of labels, tins, boxes, cartons, packets and promotional/printed materials along with all printing blocks, dyes, wrappers, plates, advertising materials bearing the imitated trademark 'MALTOS';
(iii) Grant any such further/additional/ other reliefs which this Hon'ble Court may deem jus, fit and proper in the circumstances of the case.
2. The brief facts of the case are:-
3. Per averments made in the plaint the plaintiff is a company organized and existing under the laws of Switzerland of Rechenstrasse 37, St. Gallen Switzerland. According to plaintiffs assertions in Switzerland there are five official languages i.e, German, French, Italian, Roman and English.
English language is used in international business. Per assertion a company incorporated in Switzerland has three official names. In Switzerland per practice a company may use any form of its name i.e,, either the English form or German form or French form. If the English form is used then incorporated company have to use the denomination of Incorporated/Inc., or limited/Ltd. While, in use of the French .Version a company has to use Society Anonym/SA and likewise, in case of German version a company has to use Aktiengesellschaft/AG. Plaintiffs company name in view of the above can be mentioned below:-- ' Vifor (International) Inc. Vifor (International) Ltd. Vifor (International) AG Vifor (International) SA 4.. Being an export oriented company within the Galenica Holding, plaintiff carries on a worldwide business inter alia from Switzerland. The company thus is represented in more than eighty (80) countries worldwide through its licensing and distribution partners.
5. Per assertion made in the plaint, plaintiff company was founded in 1872 by Conard Ferdinand Hausmann, a pharmacist, who founded his pharmacy in St. Gallen, Switzerland. Hausman Laboratory Inc., was later on founded in the year, 1952 as being production company for pharmaceutical specialties in St. Gallen. Today, where plaintiff with the names Vifor (International)
Inc., is based, is the same location where Hausman Inc., was founded. Research and Development activities of the company were extended in the year, 1970 with special focus on replacement therapy. In 1983, Hausman Laboratories Inc., was acquired by Galenica Holding Inc., in Bern, the number one wholesaler in Switzerland. In 1991, per plaintiffs assertions, the activities in the sections of infusion hospital supply within the Galenica Holding were sold to B. Braun Melsungen Inc.
However, the activities in the field of pharmaceutical specialties of the former Hausman Laboratories Inc., was retained and the plaintiffs company with the name of Vifor (International)
Inc., thus came into existence.
6. Per assertion made in the plaint, the treatment of iron deficiency being the core competence of the newly founded company ]Vifor (International) Inc., and/or Vifor (International) AG]. The plaintiff, therefore, decided to dedicate itself entirely to the iron therapy. The plaintiff Vifor (International)
Inc., thus focused all its efforts on the development, production and marketing of its unique iron therapy and its unique iron-carbohydrate complexes for the therapy of iron deficiency anemia. Per plaintiffs assertion research and development department develops market-oriented products and new galenic formulations.
7. Per assertion in the plaint, laboratories are well equipped with high technology instruments. All research and development activities are being published in internationally renowned scientific journals and plaintiffs own patents as well. Plaintiffs company has put special focus on- the development of the next generation of iron preparations with a broad safety profile for oral and parenteral application. Of course, over the years, unique know-how in analytical and synthetic chemistry, biochemistry, toxicology and pharmacokinetics of such iron preparations has been accumulated. Amongst other trademarks adopted by the plaintiff for distinguishing its goods trademark 'MALTOFER. Has also been inherently adopted by the plaintiff with a view and for distinguishing its oral iron preparation for the treatment of latent iron deficiency anemia. Per averments, plaintiff used the 'MALTOFER' firstly on November 17, 1994 in Switzerland. Details of countries where plaintiffs products bearing 'MALTOFER' trademark are currently sold, is as under:- Argentina Bulgaria Byelorussia Chile Columbia Czech Republic Dominican RepublicEcuador Finland France Great Britain Guatemala Haiti Hong Kong Hungary Indonesia Jordan Lebanon Liechtenstein Malaysia Morocco Nicaragua Pakistan Paraguay Peru Poland Portugal Romania Russia Switzerland Singapore Slovakia Thailand Ttinidad/Tobago Turkey Uriguay Veveaiela Yemen
8. Trade mark 'MALTOFER', per plaintiffs assertions is used in relation to high efficacy drugs to fight Iron Deficiericy Anemia (IDA), and is available in several pharmaceutical dosage forms viz. Drops, syrups, oral solutions and chewable tablets. Under the trademark 'MALTOFER', the drugs are being sold in over eighty (80) countries of the world. Due to and on account of extensive worldwide circulation, trademark 'MALTOFER' per plaintiffs averment enjoys tremendous reputation and goodwill in more than 80 countries including Pakistan.
9. The plaintiff, in order to safeguard its interests in the trademark 'MALTOFER' has obtained registrations and/or has filed applications thereof in various countries of the world. Details of registrations of trademark 'MALTOFER' sc far obtained in various countries of the world by the plaintiff are as under:-- MALTOFER Country Reg. No. Class Reg. Date MALTOFER Australia 714161 05 31-7-2006 MALTOFER AUSTRIA 562300 05 MALTOFER CANADA 591272 05 1-10-2003 MALTOFER FRANCE 262300 05 MALTOFER GERMANY 562300 05 MALTOFER GREAT BRITAIN 1430113 05 3-7-2002 MALTOFER HONG KONG 09196/1996 05 MALTOFER ITALY 562300 05 17-5-2007 MALTOFER NEW ZEALAND 768587 05 8-8-2006 MALTOFER SINGAPORE T96/08304G 05 MALTOFER SPAIN 56230 05 MALTOFER SWEDEN 562300 05 MALTOFER SWITZERLAND 379016 05 MALTOFER TURKEY 122927 05 29-6-2000 MALTOFER USA 3154270 05 10-10-2006
10. The trademark 'MALTOFER' is continuously being used by the plaintiff for conducting its aforesaid business in Pakistan. First Drug Registration for the products under trademark 'MALTOFER' (syrup), per plaintiff s assertion, was granted by the Ministry of Health to the plaintiffs previous licensee, Getz Pharma, Karachi under No,026757 on March 3, 2001 whereafter since, May 6, 2002, the plaintiffs present Licensee Messrs R.G. Pharmaceutical (Pvt.) Ltd., started selling of products under the trade mark 'MALTOFER' in Pakistan. Accordingly, since the year, 2002, plaintiffs products, under the trademark 'MALTOFER' are being sold under the authority of the plaintiff. The quantum of sale of the plaintiffs products goes as under:-- YEARS SALES IN US $ 2004 460022 2005 631538 2006 642976 2007 755120 2008 776083
11. Per assertion of the plaintiff, with a view and to turn the business of manufacture and/or sale of plaintiffs products more effectively in Pakistan under the well-known trademark 'MALTOFER', the plaintiff has appointed authorized users in Pakistan. Presently, per averments in the plaint, RG Pharma is the authorized user of plaintiff s trademark 'MALTOFER'. The goodwill thus generated due to use of trademark 'MALTOFER' by RG Pharma has accrued to the plaintiff. Per plaintiffs assertions, RG Pharma continues to use plaintiffs registered trade mark MALTOFER' under the instructions, guidance and specifications prescribed and laid down by plaintiff from time to time and also acknowledges proprietorship of plaintiff re trade mark 'MALTOFER'. Further, plaintiff also owns registration for trademark 'MALTOFER' in Pakistan under the Trade Marks Act, 1940 (now replaced by Trade Marks Ordinance, 2011). Details as follows:-- Trade mark Reg. No. Class Dated Goods MALTOFER 159509 15 15-12-1999 Pharmaceuticals veterinary and sanitary preparation
12. Per assertion in the plaint, the products sold under the registered trademark 'MALTOFER' have acquired a high `reputation' and 'goodwill' in Pakistan. The use of a similar or deceptively similar trade mark by another manufacturer or trader indeed amounts to misrepresentation having been made in the course of trade to potential customers.
13. The adoption of any trade mark which is confusingly similar and/or nearly resembles that of plaintiffs trade mark 'MALTOFER' by any party especially in relation to the pharmaceutical products etc., without the permission, consent or license of plaintiff is bound to be dishonest and motivated by an attempt to deceive or confuse the public. Per averments, the plaintiff became aware, through 'advertisement' in the 'Trade Mark Journal' No, 682 dated November 1, 2007, actually published on January 18, 2008, about application for registration of trade mark 'MALTOS', which besides deceptive is dishonestly opted to confuse the unwary purchasers.
14. Under circumstances, plaintiff with an object to oppose the grant of registration to MALTOS' to the defendant, filed opposition No,307 of 2008 with the Registrar of Trade Marks on May 17, 2008 in the hope that the defendant would refrain from using the above infringing trademark 'MALTOS'.
15. The plaintiffs opposition was served by the Registrar of Trade marks upon the defendant in the manner provided by law for filing its defence in the form of 'Counter Statement' to the 'Plaintiffs Opposition'. The defendant did not file its requisite 'Counter Statement' and finally the Registrar of Trademarks through its letter of January 26, 2009 confirmed/apprised the position to the plaintiff in the following words:- "With reference to the above noted subject, I am directed to inform you that the applicants deemed to have abandoned their application No,217871 under section 28(4) of the Trade Marks Ordinance, 2001, as they have failed to file the Counter Statement (TM-6) within stipulated/finally extended time. As a result thereof, the above opposition proceeding No,307/08 have become infructuous."
16. Per averments, during February, 2009, the plaintiff carried out checks in the markets but the products under trademark 'MALTOS' were not found available then in the markets. Subsequently, however, in or about last part first week of September 2009, the plaintiff came to know that the defendant is about to launch and start selling of its infringing products under imitated 'MALTOS'.
The defendant's imitated trademark 'MALTOS', it is worth to note, is phonetically, visually structurally deceptively and confusingly similar and/or nearly resembles plaintiffs registered trade mark 'MALTOFER'.
17. The defendant, per plaintiffs assertions, has exerted every possible efforts to make out a similar/deceptively similar and/or nearly resembling imitation of plaintiff s renowned and registered trademark 'MALTOFER'. The defendant's infringing trademark is nothing but indeed is a mala fide replacement of letters 'FER' of plaintiffs registered trademark 'MALTOFER' with letter 'S' to make it 'MALTOS'.
18. Per averments, the defendant's infringing trade mark 'MALTOS' is confusingly similar to and incorporates dominant and essential part plaintiffs registered trade 'mark 'MALTOFER'. Per plaintiffs assertion, the defendant has no justification and/or any reason for adopting confusingly and deceptively similar and/or nearly resembling imitated trademark 'MALTOS' Such adoption of imitated trade mark 'MALTOS' besides dishonest is fraud upon the plaintiff, public-at-large and unwary, purchasers.
19. Per averments in the plaint, the products (pharmaceutical, products), their uses and sales outlets of both the plaintiff and the defendant are the same. Defendant by manufacturing, offering for sale and selling its products under imitated trade mark 'MALTOS', is infringing plaintiff s vested rights and amounting to 'Passing Off its 'lower quality' products/goods in the garb of plaintiffs best quality products/goods. Per plaintiffs assertions from a cursory look at the Plaintiffs registered trade mark 'MALTOFER' and defendant's imitated trade mark 'MALTOS' one can easily note that the defendant's trade mark 'MALTOS' is acolourable imitations of plaintiffs registered trade mark 'MALTOFER'. Pharmacies in Pakistan, per assertion of the plaintiff, are not regularized and usually pharmaceutical products are being sold without prescriptions.
20. Almost, every employ who dispense drugs besides not qualified has no adequate knowledge of 'English language'. Not only this, the doctors write prescription in a very scribbled writing and that too by abbreviating and slurring the words. All this, due to 'close proximity' of two marks 'MALTOS' and 'MALTOFER' the un-wary purchasers amongst others are bound to get confused.
21. Trade mark 'MALTOS', per averment in the plaint is causing confusion and deception in the mind of unwary purchasers vis-a-vis plaintiffs products under trademark 'MALTOFER' which 'ex facie' is flagrant infringement of plaintiffs registered trade mark.
22. On account of aforementioned illegal/unlawful business activities, damages and losses so suffered are in the tune of Rs,15,000,000 (Rupees fifteen million only). Per averment, the defendant has sold and/or intends to sell its 'lower quality goods/products as those of the plaintiffs 'best quality goods/products', therefore, under the law plaintiff is also entitled to the benefit of income generated by the defendant on account of such sales under their imitated Trade mark 'MALTOS'.
Per averments cause of action firstly, accrued in favour of the plaintiff during January, 2008 and also on other dates as mentioned in the plaint.
23. Along with the plaint presented on 10-9-2009, an application under Order XXXIX, Rules 1 and 2, C.P.C. Read with section 151, C.P.C. [C.M.A. No 8513 of 20091 for grant of temporary injunction was also filed. The prayer made in the aforesaid application reads as under:- "This Hon'ble Court may graciously he pleased to grant temporary injunction against the defendant and all persons claiming through or under it jointly or severally restraining them from using the imitated trade mark 'MALTOS', in any manner, or any other trade mark as may be a colourable or slavish imitation or counterfeit and/or infringement of plaintiffs registered trade mark 'MALTOFER'."
24. On 11-9-2009, when the application came up before the court the following order was passed:-- "(1) Granted.
(2) Notice for 30-9-2009. Defendants shall not use 'MALTOS' as their trademark for pharmaceutical/ homeo products till 30-9-2009."
25. From the record it appears, that notice issued pursuant to order dated 11-9-2009, had returned unserved.
' Thereafter, summons/notices were issued to the defendant on 1-12-2009 and 16-2-2010.
Nonetheless per diary sheet of the Additional Registrar (O.S.), the summons returned unserved with bailiff endorsement as also 'pasted'. Thereafter, plaintiffs application under Order V, Rule 20, C.P.C., per Additional Registrar (O.S.) diary of 5-3-2010 was granted and summons were issued to the defendant. Ultimately, vide order dated 13-5-2010 passed by the Additional Registrar (O.S.), service upon the defendant, was 'held good' because of publication in daily 'JANG' Urdu dated 7-4-2010 and also issuance of summons through other modes as well.
26. On 31-5-2010 when the matter came up before the court, besides holding the service 'good' the case was ordered to proceed 'ex parte' against the defendant.
27. Subsequently, in compliance with court's order dated 31-5-2011, 'affidavit-in-ex parte proof was filed on 26-9-2012 and 'deposition' of the plaintiffs witness viz. Muhammad Babar Waheed son of Abdul Waheed was recorded on 27-9-2012. In 'examination-in-chief the witness produced his 'affidavit-in-ex parte' proof as Exh.P.W.1/3 and other documents as Exh.P.W/4 to P.W.1/7.- Since no one on behalf of defendant was present hence 'cross-examination' of the plaintiffs witness was marked as Nil%
28. On 13-2-2013, when the injunction application under Order XXXIX, Rules .1 and 2, C.P.C. Read with section 151, C.P.C. [C.M.A. No,8513 of 2009] and suit came up for hearing/final disposal, Ms. Amna Salman Ahmed, learned counsel for the plaintiff advanced her arguments and with her able assistance the materials available on record were scanned.
29. Ms. Amna Salman, learned counsel for the plaintiff argued that the plaintiff is the registered proprietor of trademark 'MALTOFER' in respect of pharmaceutical drug to fight Iron Deficiency Anemia (IDA). Learned counsel further contended that Trade mark 'MALTOFER' was first ever used by plaintiff on November 17, 1994 in Switzerland. In this. Regard learned counsel for the plaintiff, made a reference to para 6 of the plaint which contains details of registration of trademark 'MALTOFER' and its use in various countries of the world. Ms. Amna Salman, learned counsel for the plaintiff next argued that the plaintiff is the registered proprietor of trade mark 'MALTOFER' and doing business in Pakistan for the last several years. The Drug Registration for the products under 'MALTOFER' was granted to the plaintiffs first licensee on March 3, 2001 (Reg. No, 026757) and the plaintiff s second licensee started selling 'MALTOFER' on May 6, 2002. Per learned counsel the plaintiff is the registered proprietor of trade mark "MALTOFER" with the. Details as follows:-- Trade mark Reg. No. Class Dated Goods MALTOFER 159509 15 15-12-1999 Pharmaceuticals veterinary and sanitary preparation
30. Per learned counsel, plaintiff through advertisement in 'Trade Mark Journal No,682' dated November 1, 2007, actually published on. January 18, 2008, [Exh.P.W.1/6] became aware about the defendant's application for registration of trademark 'MALTOS'. Per learned counsel the choice of defendant for this deceptively similar mark 'MALTOS' is dishonest and has been adopted to only confuse the unwary purchasers amongst others vis-a-vis plaintiffs trademark 'MALTOFER'.
31. Ms. Amna Salman learned counsel for the plaintiff further contended that on January 26, 2009, the Registrar of Trademarks i.e, pursuant to filing of plaintiffs Opposition No,307 of 2008 on May 17, 2008 had confirmed to the plaintiff that the defendant/applicants deemed to have abandoned their application No,217871 under section 28(4) of the Trade Marks Ordinance, 2001, as they have failed to file the 'Counter Statement' (TM-6) within stipulated /finally extended time. As a result thereof, the above opposition proceeding No,307/08 have become infructuous.
32. Ms. Amna Salman, learned counsel for the plaintiff vehemently contended that the defendant's imitated trademark 'MALTOS' on acoount of its being phonetically, visually and structurally deceptive is creating confusion regarding goods/products being sold in markets under plaintiffs registered trademark 'MALTOFER', therefore, inter alia the. Plaintiff company is entitled for restraining order against the defendant. Per learned counsel the plaintiff besides having a good prima facie case the balance of convenience under circumstances of the case lies in favour of the plaintiff.
Further if the defendant is not restrained/perpetually restrained from using the imitated trade mark of 'MALTOS' then the plaintiff indeed will suffer irreparable loss and injury.
33. Learned counsel for the plaintiff, next contended that defendant's infringing trade mark 'MALTOS' is nothing but a mala fide replacement of letters 'FER' of plaintiffs registered trademark 'MALTOFER' with letter 'S' of 'MALTOS'. The defendant, per learned counsel, has no justification or any reason for adopting imitated trademark 'MALTOS' much-less in view of other choices available to the defendant. Per learned counsel, adoption of imitated trademark 'MALTOS' by the defendant is not only dishonest but also a fraud upon the plaintiff, Public at large and unwary purchasers as well.
34. Ms. Amna Salman, learned counsel for the plaintiff finally contended that not only the products (pharmaceutical products), but also sales outlets of both the plaintiff and the defendant are the common. The defendant, by manufacturing, offering for sale and selling of its products, or otherwise, continuing the same practice under defendant's imitated trademark 'MALTOS', per learned counsel, is 'infringing' plaintiffs vested rights. Per learned counsel 'passing off and/or attempting to 'pass off 'lower quality products/goods' deceptively and/or by creating confusion vis-a-vis plaintiffs 'best quality products/goods' under trademark 'MALTOFER', is an act of fraud and as such unlawful. A cursory glance at the plaintiffs registered trademark 'MALTOFER' and defendant's imitated trademark 'MALTOS', per learned counsel, evidently shows that defendant's trademark 'MALTOS' is a colourable imitation of plaintiffs registered trademark 'MALTOFER'.
35. Learned counsel for the plaintiff in support of her arguments relied upon following reported cases:--
(a) PLD 1984 SC 8 Jainia Indus Limited v. Caltex Oil (Pak) Ltd., and another,
(b) PLD 1990 SC 1074 Messrs Alpha Sewing Machine Co., v. Registrar of Trade Marks and another,
(c) 1987 SCMR 1090 Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant,
(d) 2001 SCMR 967 Messrs Mehran Ghee (Pvt.) Ltd. And others v. Messrs Chiltan Ghee Mill (Pvt.) Ltd.
And others,
(e) PLD 1990 SC 313 Seven-up Co., v. Kohinoor Thread Ball Factory and 3 others,
(f) 2006 CLD 1190 Messrs Platinum Pharmaceutical Co. (Pvt.) Ltd., v. Stand Pharm Pakistan (Pvt.) Ltd and 3 others,,
(g) 1993 MLD' 605 MOD International (Pvt.) Ltd., v. National Detergent Ltd.,
(h) PLD 1977 Kar. 858 Glaxo Laboratories Ltd., England v. Assistant Registrar, Trademark Karachi and another,
(i) PLD 1993 Kar. 790 Messrs Chas A. Mendoza v. Syed Tauseef Ahmed Zaidi and 2 others,
(1) 2001 YLR 2004 Muhammad Saeed Mughal and 3 others v. Messrs. National Aviation Services (Pvt.) Ltd., through Malik Talat Mahmood,
(k) 2000 YLR 1376, (The Wellcome Foundation Ltd., v. Messrs Karachi Chemical Industry (Pvt.) Ltd.,
(1) PLD 2000 Kar. 192 J. N. Nicholas (Vimto) PLC A. Co., Incorporated in the United Kingdom v. Mehran Bottlers (Pvt.) Ltd., Karachi,
(m) 2003 MLD 1513 (Pakistan Drug House (Pvt.) Ltd., v. Rio Chemical Co., and another)
(n) 1987 MLD 2823 (Messrs Ali Anas Laboratories through its 4 Partners v. Messrs Al-chemist and another),
(o) 1992 MLD 2357 (National Detergents Ltd., v. Nirma Chemical Works and another).
36. At this it would be advantageous to reproduce the relevant sections of Trade Marks Ordinance, 2001 (Ordinance No,XIX of 2001] as under:-- A. "Section 2 - Definitions
(xxxv) "proprietor of earlier right", in relation to a trade mark, means a person entitled to prevent the use of a trade mark"
B. Section 14. Absolute grounds for refusal of registration - (1)
(a)
(b)
(c)
(d)
(2)
(a)
(b)
(c)
(d)
(3) No trade mark or any part thereof in respect of any goods or services shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would:--
(a) by reasons of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in High Courts or District Courts.
(b) be likely to hurt the religious susceptibilities of any class of citizen of Pakistan, per se, or in terms of goods or services it is intended to be so registered; or
(c) be contrary to any law, for the time being in force, or morality. C. Section 17. Relative grounds for refusal of registration:-
(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for, are identical with the goods or services for which the earlier mark is registered."
(2) .........................................
(3) .........................................
(4) .........................................
(5) .........................................
(6) .........................................
D Section 18. Meaning of earlier trade mark- (a)
(b) ...............
(c)
(2) Reference in this Ordinance to an earlier trade mark include a trade mark in respect of which an application for registration has been made and which, . If registered, would be an earlier trade mark by virtue of clause (a) or (b) of subsection (1), subject to its being so registered."
(3) .........................................
E. Section 22, application for registration.---(1) An application for registration of a trade mark shall be made in writing to the Registrar in the prescribed manner.
(2) without limiting the particulars that may be included in an application, the application shall contain:-
(a) a request for registration of a trade mark;
(b) full name and address of the applicant;
(c) a statement of goods or services in relation to which it is sought to register the trade mark;
(d) international classification or goods or services
(e) a representation of the trade mark; and
(f) full name, address and contact- details of agent, in case the application, on behalf of the applicant, if made by his agent.
(3) The application shall state that the trade mark is being used by the applicant, .Or with his consent, in relation to goods or services, or that he has a bona fide intention that it should be used.
(4) The Registrar may refuse to admit an application if it does not contain all the particulars required under subsections (2) and (3).
(5) The application shall be subject to the payment of the application fee as may be prescribed.
' Section 28 Publication, Opposition, Proceeding and Observation--
(6) I !
(3) .................................
(4) The Registrar shall serve in the prescribed manner a copy of the notice on the applicant, and within one month from the receipt by the applicant of such copy of the notice of opposition, or within such further period not exceeding two months in the aggregate, as the Registrar_ on application made to him in the prescribed manner and on payment of the prescribed fee, may allow, the applicant shall send to the Registrar in the ,prescribed manner a counter statement of the, grounds on which he relies for his application, and, if he does not do so he shall be deemed to have abandoned his application. G. Section 33. Registration (a)
(b)
(2) .................................
(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. H. Section 39. Rights conferred bg registration.--
(1) A registered trade mark shall be personal property.
(2) - The proprietor of a registered trade mark shall have exclusive rights in the trade mark which are infringed by use of the mark in Pakistan without his consent.
(3) Without prejudice to the rights of the proprietor of a registered trade mark to obtain any relief under any other law for the time being in fore, the proprietor shall also have the right to obtain relief under this Ordinance if the trade mark is infringed.
(4) References in this Ordinance to the infringement of a registered trade mark shall be to any such infringement of the rights of the proprietor.
(5) The rights of the proprietor shall have effect from the date of registration: Provided that no infringement proceedings shall begin before the date on which the trade mark is in fact registered.
(6) The rights conferred by registration of trade mark under this Ordinance shall extend to trade marks registered under the Trademarks Act, 1940, (V of 1940).
37. With regard to grant of injunction/restraining order against the defendant learned counsel for the plaintiff placed reliance upon the case reported in 2006 CLD 1109 [Messrs PLATINUM PHARMACEUTICALS COMPANY (PRIVATE) LIMITED v. STAND PHARMA PAKISTAN (PRIVATE) LIMITED AND 3 others]. The relevant portion of the aforesaid case runs as under:--
28. On a view of the relevant provision of law quoted above and the case-law relied on by the learned counsel we are of the considered view that the appellant being the first to apply for the registration of Trade Mark "San flex" before the Registrar Trade Marks and also its drug being registered earlier than the respondent before the Ministry of Health, was entitled to the first use of the Trade Mark "Zan flex" and all the three ingredients required for the issuance of an interim injunction under Order XXXX1X rules 1 and 2, C.P.C. i.e, 'presence of a prima facie case, balance of convenience and irreparable damages are in favour of the appellant.
' The appellant case appears to be fully covered by the judgment of the. Bombay High Court reported in AIR 1958 extract from which has already been reproduced herein, therefore the respondent cannot be granted any ' bonus for its own deliberate persistence in with the use of the trademark."continuing 38, Regarding similarity of two marks the learned counsel for the plaintiff made reference to the case of Hiralal Parbhudas v. Garnish Trading Company, [Reported in AIR 1984 Bombay 218] wherein the High Court of Bombay after taking into consideration several decisions of the Indian Supreme Court summed up will establish principles to be observed while deciding the question of similarity of two marks. The relevant observations run 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.
(f) 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."
39. Besides, further argued that the balance of convenience lies in favour of the plaintiff and illegal use of trade mark 'MALTOS' by the defendant is causing irreparable loss to the plaintiff. Per learned counsel the plaintiff is registered proprietor of trade mark 'MALTOFER', therefore, under circumstances, plaintiff also has a good prima facie case in its favour.
40. Keeping in view the submissions of the learned counsel I would like to refer to the case of CIBA Ltd. Basle Switzerland v. M. Ramalingam and S. Subramaniam Trading in the name of South Indian Manufacturing Co., Madura and another [AIR 1958 Bombay 561. The relevant extract therefrom reads as under:- "But on the other hand, when the respondents complained of substantial injury by being allowed to sell their goods under this name, of having built up large sales and spent large amounts on advertisement, it should be pointed out that the respondents did this at their own peril, because they had been warned by the appellants as far back as October, 1945. It hardly lies in the mouth of a party to come to the Court and say, 'I by trading upon that reputation I have been making money. I have been warned that I should not so trade and yet I took the risk, and now protect me from my folly or my own dishonestly because the other side has delayed in coming to the Court and I have a large stake in the sales which I am effecting by reason of using a trade mark which resembles the trade mark of another." Therefore, the argument put forward by Mr. Shah of balance of convenience, of hardship of equity, has no application on the facts of this case. It is not, the case of an innocent party owing to a long user it has built up a business which should not be destroyed by rectification of the register. As we have already pointed out, the word "Cibol" seems to have been deliberately selected by the respondents for no other purposes than for its resemblance with the word of the appellants. "
41. Upon consideration of the provisions of law and case law reproduced herein I am of the view that defendant cannot be permitted to use the trade mark 'MALTOS' chosen by defendant deliberately and with a view to sell deceptively the lower quantity 'goods/products' by creating confusion vis-a-vis plaintiffs best quality of 'goods/products' available in market under trade mark 'MALTOFER'. Such dishonest act of the defendant also entitled the plaintiff for perpetual protection/restraining order against the defendant.
42. 'Under the provisions of Trade Marks Ordinance, 2001 [XIX of 20011, no trade mark or any part thereof in respect of goods or services is permissible to be registered which inter alia cause deception and/or create confusion. In this regard reference can be made to section 8(a) of Trade Marks Act, 1940 and the case of Seven up Company v. Kohinoor Thread Ball Factory and 3 others.
[Reported in PLD 1990 SC 3131. The relevant observations read as follows:-- ' Our statue law recognizes and also protects trade mark in relation to goods, and not independently of the goods. Therefore, one is justified in claiming protection for a particular trade mark only if it is related to a' particular good or class or category of goods. The generality of clause (a) of section 8 of the Act cannot be given the meaning and the content so wide as to embrace all registered and widely used trade marks so as to exclude their adoption and use for any and every class or category of goods, howsoever different and dissimilar. The generality advocated is limited by clause (a) of section 8 of the Act itself. The test provided is not the identity of the trade mark or of the goods but likelihood of the deception or confusion such as to entitle protection in a Court of law. The test of the likelihood of deception or confusion is dependent on the nature of the goods, marketing methods, consumer awareness etc., all variables, differing from place to place, country to country and commodity to commodity. Even in the Caltex's case where the goods were totally different the Court proceeded to examine the first requirement and found it amply satisfied by holding that "The potential mark for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man." And finally holding that "The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade". It has to be noted further that the likelihood of deception or confusion is tested not by the reactions of the immediate vendee but by those of the ultimate consumer."
43. Section 8(a) of Trade Marks Act, 1940 (Act V of 1940) referred to hereinabove is part materia of section 14(3) of C Ordinance, 2001 [Ordinance XIX of 2001]. In terms of section 39 of Ordinance, 2001 a registered trademark is a personal property and proprietor thereof thus has an exclusive right in a registered trademark. In the case of Mohan Goldwater Breweries (Private) Limited v. Khoday Distilleries Private Limited and another [Appeal Against Order Nos.456 and 457 of 1974] it was held as under:- ' If the principle of who enters the field first" is adopted for purpose of registration, then section 18 enabling a person proposing to use a trade mark to apply for registration will be meaningless, as any person using that mark subsequently can easily defeat the earlier application of such registration."
44. From the above, it is manifestly clear that no one even on the basis of principle who enters the field first' can be permitted to defeat the vested right of the registered proprietor. It is worth to note that no such ground 'who enters the field first' as far the case in hand is concerned is available to the defendant.
45. Regarding arguments on the point of resemblance of the plaintiffs trademark 'MALTOFER' and defendant's trademark 'MLTOS' of course upon comparing trademark 'MALTOFER' and 'MALTOS' one can easily note that the defendants infringing trademark 'MALTOS' is nothing but a mala fide replacement of letters 'FER' of plaintiffs registered trademark 'MALTOFER' with letter 'S' to make it 'MALTOS'. Such act on the part of defendant besides being mala fide is also deceptive. In this regard the case of Jamia Industries Ltd. v. Caltex Oil (Pak) Ltd. And another. [Reported in PLD 1984 SC 8] is relevant. The observations made therein read as under:-- "that in making comparison of the two marks, emphasis should be laid on their leading features, and that, in doing so, it should be determined as to what are the leading characteristics of each of the competing trademarks" he then referred to several reported cases bearing on the question and formulated proposition, that "though ordinarily totality of the two marks should be seen to ascertain whether they are similar to each other or distinctive from each other, but where a dominant feature of the registered trademark is incorporated in the competing trade mark, then there is not only possibility, but also probability of deception and confusion being caused". By applying these principle the learned judge reach the following conclusion.
"If we take this trade mark and compare it with that of the appellants then irresistible conclusion would be that the dominant and the essential feature" of the two marks is the five pointed star in outline, and, this being so, there is every probability that the two marks will be confused with each other, as also the goods marketed under each mark even with regard to the first trade mark of the respondents, i.e,, . The one bearing No,20665, in which the whole star is, coloured, the view may be taken, in the circumstances of the present case, that this mark bears resemblance to the proposed mark of the appellants, in that , in both the devices the five pointed star has shown surrounded by a circle I have already stated that the appellants five pointed star is within a crescent, but this crescent is in fact a circle. One feature, therefore, would be common between the respondents' trademark No, 20665 and that proposed by the appellants, i.e,, in each case, the five point star is surrounded by a circle."
46. Herein I may beneficiary make a reference to the book Law of Trade Mark and Trade Names (1966 Edn.) written by Kerly wherein at page 838, he has made the below observations on the principles to be followed in comparing the two marks:- "Two marks when placed side by side, may exhibit many and various differences yet the main idea lift on the mind by both may 'be the same. A person acquainted with one mark, and not having the two side by side for comparison, might will be deceived, if the goods were allowed to be impressed with the second mark, than to a belief that he was dealing with the goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of ball; another mark may show players in a different dress, and in every different position, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect the persons dealing with a trade marked goods and relying, as they frequently do upon marks should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impression or by some significant detail than by any photographic recollect of the whole.
Moreover variations and details might be supposed by customer to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
"When the question arises whether a mark applied for bears such resemblance to another mark as to be likely to deceive, it should he determined by considering what is the leading characteristic of each. The one might contain many, even most, of the same elements as the other, and yet the leading or it may be the only, impression left on mind might be very different.
On the other hand, a critical comparison of two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus it is clear that a mark is infringed if the essential features, or essential particulars of it. Are taken. In cases of device marks, especially it is helpful before comparing the marks to consider what are the essential of the plaintiffs device with word marks, the Court is apt to be more impressed by the danger of giving the plaintiffs what amounts to a monopoly in a large class of words"
47. In view and applying the above principle on comparison two Trade Marks 'MALTOS' and 'MALTOFER' in my view has large range of similarity. The defendant imitated trade mark 'MALTOS' is phonically, visually, structurally, deceptively and confusingly similar and nearly resembles the plaintiffs registered trade mark 'MALTOFER'.
48. Learned counsel for the plaintiff while making her submissions regarding 'infringement' and 'passing off relied upon the case Messrs Mehran Ghee Mills (Pvt.) Ltd. And others v. Messrs Chiltan Ghee Mill (Pvt.) Ltd. And others [Reported in 2001 SCMR 967], the Hon'ble Supreme Court of Pakistan vide dilating upon the question of 'infringement' and 'passing off action observed 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 as 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 the petitioner in same colour scheme, design and getup to pass of its (petitioners) goods, as that of the respondent No, 1."
"18. As regards passing of action it is noted that the principle underline the passing of action is that it is 'unlawful for a trader to pass of his goods, as the goods of another'. Passing of action may be independent as it may be coupled with infringement. It is maintainable irrespective of the fact that the trademark is a registered or unregistered. Such action is called by subsection (2) of section 20 of the Act for a claim relating to passing of action the plaintiff shall prove that his mark within the scope of definition (f) of section 2 of the Act was not only distinctive but had been continuously in use and the defendant realizing the fact that the trademark of the plaintiff is a valuable asset, in order to deceive the customers, had copied the same. The definition of a mark is given in section 2 is not exclusive but includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof. It is not necessary that the mark, ex facie, shall deceive or confuse, but what is Important is the total impact upon a common purchaser. In the case reported as Ferozuddin v. Muhammad Shafi and another (PLD 1975 Kar. 486) a reference has been made to the Haisbury's Laws of England IIIrd Edition, Volume XXXVIII at page 494 which reads as follows: "The consequence of the application of the right to prevent passing off is that a trader, who uses a name or mark or get-up that has been come distinctive of his goods, can prevent others using the same or a similar name or mark, where that use will deceive or is calculated to deceive a substantial number of members of the trade or public and to thinking that goods, offer for sale or supplied by them or his".
49. In addition to the above, per learned counsel dominating features of trade mark 'MALTOFER' of which the plaintiff is registered proprietor have been copied/adopted by the defendant for its imitated trade mark 'MALTOS'. The striking resemblance thus created in two trademarks, besides infringing, the defendant also 'passing off its 'lower quality goods/products in the garb of plaintiffs 'best quality goods/products' under imitated trade mark 'MALTOS' thus deceiving not only the plaintiff but public-at-large.
50. Since from defendant's side no evidence is available in rebuttal of 'averments' made in the plaint and 'evidence led' by the plaintiff. Under the circumstances, the version of plaintiff vis-a-vis 'best quality of goods/products' has gone unchallenged. Hence, the plaintiff in view of such position has also succeeded in establishing the 'infringement' and/or 'passing off the lower quality goods/products under imitated trade mark 'MALTOS'. The contents of the 'affidavit-in-ex parte proof [Exh.P.W.1/3] and other exhibits [Exh.P.W.1/4 to Exh.P.W.1/7] it worth to note, have gone un- rebutted.
51. Learned counsel for the plaintiff in support of her arguments regarding 'goodwill' gained by the plaintiff company over years in respect of business of goods/products under its registered trademark 'MALTOFER' made reference to the observations of apex court made in the case of Messrs TABAQ RESTAURANT v. Messrs. TABAQ RESTAURANT [Reported in 1987 SCMR 1090] which read as follow:-- "He who by his skill and labour establishes a business acquires thereby an interest in the goodwill of it, that is to say, in the established disposition of customers to resort to him. To this goodwill he has an exclusive right which is violated by anyone who seeks to make use of it for his own advantages, as by falsely representing to the public and that he himself carrying on the business in question. Special forms of this right of commercial goodwill are rights to trade names and trademarks. Every man has an exclusive right to the name under which he carries on business or sells his goods to this extent at least that no-one is at liberty to use that name for the purpose of deceiving the public and so injuring the owner of it. He has a similar right to the exclusive use of the marks which he impresses upon his goods, and by which they are known and identified in the marked as his".
"It is well settled that "passing of actions are designed to protect a property in the goods on account of its reputation and not in the trade mark and that "passing of actions or essentially actions tort and are filed in contradictions to suits filed for infringement of trademarks where invasion takes place in one's rights in the property, for instance when someone imitates the good of another. Hence if the suit filed by the respondent was a suit simplicitor for "passing of and no infringement of the trade mark was involved therein, the suit undoubtedly lay before the court of first instance.
"Under the Act "a registered trade mark" means a trade mark which is actually on the register."
52. Indeed, the 'goodwill' of the plaintiff company gained under the registered trademark 'MALTOFER' is the exclusive right of the plaintiff company and any violation thereof is not permissible. No-one under law can use the trademark of someone else for the purpose of deceiving the public and causing injury to the owners' goodwill and/or reputation.
53. As far as the claim of damages is concerned, under law damages cannot be granted in absence of 'positive evidence'. Damages require evidence vis-a-vis details of losses actually suffered. As a rule even fixed amount of damages cannot be granted unless quantum of actual losses is proved. Party claiming damages have to firstly plead and then prove damages by sufficient, cogent, trustworthy and independent evidence. Regarding damages and quantum thereof burden of proof always lies on the claimants. Without discharging such burden one cannot succeed. Reliance is placed on the following cases:-- ' A. In case Muhammad Amin Muhammad Bashir Ltd., v. Muhammad Amin Brothers Ltd. (PLD 1969 Kar. 233] wherein at page 238 the Division Bench of this Hon'ble Court observed in the following words: ' We are in respectful agreement with the point of view that difficulties in estimating damages should not be excused for shirking the duty of solving the problem that may be before a court and that the material which may be before the court should be scrutinized and examined for purposes of finding what relevant and sound inference can be drawn from it. This attitude is however to be accompanied with the obligation that failure of a party to produce the best evidence should be reckoned against him. Their Lordships have gone to the length of saying that every presumption should be made against such a party. In the present case we find that there is no evidence at all of the price prevailing at the time at which the alleged purchase was made by the plaintiff- appellant, nor is there anything to indicate the condition of the market on 30th June, 1959, on which date the breach took place. Moreover, oral statement has been made without any documents to support it, which we do not consider to be the best evidence and feel justified in drawing the conclusion that adverse presumption should be made against the plaintiff- appellant. In these circumstances, we are of the view there is no material before us to enable us to hold that the plaintiff-appellant has suffered any monetary loss."
B. In another case Daoud Shami v. Messrs Emirates Airlines and another [PLD 2011 SC 2821 (Appellate Jurisdiction) the learned Appellate court observed as under:
22. In the case of Syed Ahmad Saeed Kirmani v. Messrs Muslim Commercial Bank Ltd., Islamabad (1993 SCMR 441), this court held that only such damages could be recovered which would naturally arise in the usual course of things from such breach or the parties at the time of making the contract know that loss or damage was likely to be result from the breach.
23. Applying the rules referred to in the preceding paragraph to the facts of the instant case, we find that although the loss was being claimed by the appellant-plaintiff on the basis of special circumstances i.e, that the former had to attend his graduation ceremony in Washington D.C., 'the said circumstance was not brought to the notice of the defendant airline. In the entire body of the plaint, there is no averment that defendant-airline was informed that he had purchased the ticket and was proceeding to U.S. To attend the graduation ceremony. Even in the evidence led before this court, no reference was made that respondent airlines had notice of the aforementioned special circumstance. In Mohindra Lal Sen v. Union of India (AIR 1960 Patna 411), the court refused to grant damages to a passenger who alleged that on account of delay of train, he had missed the engagement. The court found that he could only be awarded damages if the railway administration knew at the time of reservation of the suit that plaintiff had an engagement at the place of destination which he could miss if the train was delayed. The court held as follows:-- "There was no contract to take him to Calcutta for a particular object. It is well to remember that the punctuality of the train is not guaranteed; and assume that on the relevant date the Down Janata Express reached Calcutta very late, say, after 9-00 hours. By the lateness of the train also the plaintiff might have missed the engagement. Can it be reasonable urged that the plaintiff would be entitled to damages on account of his missing the engagement because the train reached late? This circumstance is sufficient to show in bold relief that the damage, on account of his missing his engagement cannot be said to be a natural consequence of the breach of contract by the Union of India.
' The plaintiff would also be entitled to damages if the Railway Administration knew at the time of reservation of the seats that the plaintiff had an engagement in Calcutta at 9-00 hours on 29-9- 1954, and that he had booked the tickets and reserved the seats in order to go there to fulfill the engagement. Unfortunately, there is no evidence on this point. There is nothing to show that the plaintiff told the Railway authorities that he was booking the tickets and reserving the seats for an engagement in Calcutta at 9-00 hours on 29-9-1954."
54. There is another aspect of the matter also. Per IK plaintiffs own assertions the plaintiff has got knowledge about preparation of selling of goods in first week of September, 2009. Upon getting knowledge it appears, that the present suit was immediately filed on 10-9-2009. Thereafter on 11-9- 2009, defendant was restrained from using trademark 'MALTOS'. Under circumstances, seemingly the plaintiff has not suffered damages/losses. Besides, the plaintiff has not led any evidence about suffering of damages. The plaintiff in my view thus is .Not entitled for any damages in the sum of Rs, 15,000,000 [Rupees fifteen Million only] or any part thereof.
55. As far as the abandonment of the defendants' application bearing No,217871 under section 28(4) of Trade Marks Ordinance, 2001 [Ordinance XIX of 2001], on account of defendant's failure to file any 'counter-statement' in response to plaintiffs opposition proceeding No,307 of 2008 is concerned, the view taken by the Registrar of Trademarks is correct and in accordance with subsection (4) of section 28 of Trade Marks Ordinance, 2001 [Ordinance XIX of 2001], reproduced hereinabove.
56. In the aforesaid . Facts/circumstances, arguments advanced and case-laws cited at bar by the learned counsel for the plaintiff, I have reached the conclusion that the plaintiff is entitled for a decree against the defendant in terms of para 27.1(a)(b)(f) and para 27.2(i) of the prayers made in the plaint. Accordingly the suit is decreed. C.M.A. No,8513 of 2009 also granted and consequently interim order of 11-9-2009 stands confirmed.