' MUNIB AKHTAR, J.---By C.M.A. 5128 of 2009, the plaintiff seeks interim injunctive relief for alleged infringement of its trademark, "Rupali", by the contesting defendants. The defendants riposte with C.M.A. 4047 of 2010, filed under section 80 of the Trade Marks Ordinance, 2001 ("2001 Ordinance"), and seek invalidation of the trademark in respect of classes 16, 36 and 37. These Applications arise in the following circumstances.
1. 'listed relative grounds, which applied in the main if there was another, earlier registered trade mark although S.174
2. Learned counsel for the plaintiff submitted that the plaintiff, Rupali Polyester Ltd., was the flagship company of the well known Rupali group. The plaintiff is listed on the stock exchange. This group comprised of companies engaged in businesses in many sectors of the economy such as manufacturing, exporting, indenting, banking and trade financing. These companies, set up at various times as detailed in para 2 of the plaint, had been in business for many years, in some cases stretching back decades. Learned counsel submitted that the word "Rupali" was thus indelibly associated with the plaintiff and its group of companies. It was submitted that the plaintiff had applied for trademark registration of the word "Rupali" (enclosed in a boxlike label) under the 2001 Ordinance read with the Trade Marks Rules, 2004 ("Rules"). The Fourth Schedule to the Rules, following the international classification system, categorizes various goods and services in 42 classes, and from para 9 of the plaint it would seem that the plaintiff had applied for registration of its trademark in all of them. It is pertinent to note that in respect of these applications, it is stated in the plaint that they "have either been registered or accepted for registration". Learned counsel drew attention, in particular, to classes 36 and 37 and submitted that the plaintiffs trade mark had been registered in these classes. It was submitted that the contesting defendants were engaged in the business of developers and builders, which were "services" within classes 36 and 37. The names of the projects that they were developing and building incorporated the word "Rupali". Reference was made, in para 12 of the plaint, to projects under the names of "Rupali Twin Towers", "Rupali Shehar" and "Rupali Twinkle Tower". Learned counsel submitted that in relation to "Rupali Shehar" the plaintiff had issued a public notice through counsel in 2004 in which the public was intimated that "Rupali" was the trademark of the plaintiffs group of companies, and warned that they had nothing to do with the defendants' project. More immediately, in 2009 it was discovered that the defendants had started another project infringing the plaintiffs trademark and this led to the filing of the present suit. Learned counsel submitted that the defendants had acted in gross breach and violation of the plaintiffs trademark, which infringement was clear and obvious on the face of it. The plaintiff had made out a strong case for interim injunctive relief and it was prayed accordingly.
3. Learned counsel for the contesting defendants opposed the grant of any relief to the plaintiff. It was contended that the defendants had been in the construction business since 1995 and were duly registered with the SBCA and also the relevant trade body, the Association of Builders and Developers (ABAD). They had undertaken a number of projects, many or all of which used the word "Rupali" as part of the name. Referring to section 17(4) of the 2001 Ordinance, learned counsel submitted that there was honest prior or concurrent user of the trademark by the defendants and hence they could not be enjoined as prayed by the plaintiff. Learned counsel emphasized that the plaintiff was not at all in the construction business and carried out no activity in relation to the development of residential/ commercial projects. It did business only in other sectors, wholly unrelated to the business of the defendants. Learned counsel submitted that a company carrying on business in one or more classes had no right to have its mark registered under other classes wholly unrelated to its areas of business. In such circumstances, there could not possibly be any confusion between the plaintiffs business on the one hand and that of the defendants on the other.
There had been no infringement of the trademark as alleged. Learned counsel relied on the defendants' application under section 80 and also on section 81 to contend that not merely was the plaintiff not entitled to interim injunctive relief, but that its trademark registration in respect of classes 16, 36 and 37 merited being invalidated.
4. Exercising his right, of reply, learned counsel for the plaintiff, on a query from the Court, candidly and quite properly conceded that the plaintiff was not engaged in the construction business.
However, learned counsel submitted that that did not mean that the plaintiff was limited to registration of its trademark only in those classes that related to its actual business, and could not have any registration in other classes. It was submitted that the distinctiveness of the trademark "Rupali" had to be protected. As long as the trademark was registered it could not be infringed, and any act in violation of the proprietor's rights was, inter alia, liable to be enjoined. Learned counsel submitted that in fact the defendants had themselves also applied for registration of a mark in classes unrelated to the construction business, and referred to the relevant annxures to the written statement. It appears that these applications were moved in 2009 contemporaneously (so it would seem) With the filing of the present Suit. Learned counsel submitted that no material had been placed on record with regard to the alleged business activities of the defendants using the word "Rupali" in connection with their various projects. Only bare statements and averments were being relied upon. These could not constitute any defense to the plaintiffs claim of infringement. It was strongly denied that there had been any acquiescence within the meaning of section 81.
5. At the conclusion of the hearing, I had allowed learned counsel to file written synopses and the case-law being relied upon Both did so, referring to a number of reported cases. In addition, learned counsel for the plaintiff also relied on extracts from a well established Indian treatise, Venkateswa ran on Trade Marks and Passing-off 5th edition, 2010.
6. I have heard learned counsel as above, examined the record and considered the case-law and other material relied upon. As noted above the plaintiffs case is that it had applied for registration of "Rupali" as a trademark in all of the 42 classes given in the Fourth Schedule to the Rules. I will however, focus on classes 16, 36 and 37 since it is in relation to these that, the defendants have filed their application under section 80. Now, section 39(5) of the 2001 Ordinance provides as follows:-- "The rights of the proprietor shall have effect from the date of registration; ' Provided that no infringement proceedings shall being before the date on which the trade mark is in fact registered."
' Section 33(3) explains what is meant by the date of registration: "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 purpose of this Ordinance to be the date of registration."
' Thus, although the rights conferred by registration of the trademark are from the date of, the filing of the application, the proviso to section 39(5) mandates that no infringement proceedings can be brought prior to the date on which the trademark is "in fact" (i.e, actually) registered. The plaintiffs record must therefore show that as on the date of the 'filing of the suit the trademark the infringement of which is alleged was in fact registered. This is especially relevant in the present proceedings because the material placed on record along with the plaint did not show actual registration of the trademark. Thus, annexures C-1 and C-2 to the plaint indicate that applications were filed in relation to classes 36 and 37 on 29-5-2004. The trademarks sought to be so registered were advertised in the Trade Marks Journal in March and July 2006 and in relation to class 16 in August 2006. Obviously, the trademark could not have been registered in these classes up to those dates. Indeed, in respect of none of the classes was an actual registration placed on record: the annexures marked as C-1 to C-25 are either copies of the applications or extracts from the relevant issues of the Trade Marks Journal showing their advertisement. It is therefore an open question whether, in fact, as on the date of the filing of the Suit the plaintiff had a registered trademark in respect of any of the classes and in particular in relation to classes 16, 36 and 37. If not, then the very maintainability of the Suit is put in doubt. The onus clearly lay on the plaintiff in this regard.
Even by the time of the hearing of the present applications, the plaintiff had not, insofar as I have been able to ascertain, placed on record any registered trademark in relation to any of the classes.
Prima facie it seems that the proviso to section 39(5) has not been complied with. Now, an application under section 80 can only be in relation to a registered trademark. By making such an application in respect of classes 16, 36 and 37 (which application was filed on 15-4-2010) the contesting defendants have perhaps impliedly conceded that the plaintiff did have a registered trademark in relation to these classes. In my view, such an implied concession cannot obviate the duty cast on the plaintiff (claiming as proprietor of the trademark) to comply with the mandate of the proviso. While I proceed further to consider the submissions of the respective parties, this lacuna does have an impact on whether the plaintiff should, in the end, be granted interim injunctive relief even if it is able to make out a case in this regard. Injunctive relief is discretionary and can be withheld in appropriate circumstances. In my view, a plaintiffs failure to show affirmatively that the bar under the proviso to section 39(5) does not apply is a factor that ought to weigh in this regard.
7. I turn to the dispute itself and assume in what follows (though without so concluding) that the plaintiff has its trademark registered. The contesting defendants submit that they have been in the construction business since 1995 and have used the "Rupali" name for many projects, a list of which is given in Para 4 of the written statement. These are: Rupali, Residency (constructed in 1998); Rupali Resort. (2003); Rupali. Sheher (2004); Rupali Twin Tower (2007); and Rupali Twinkle Tower (2009). Thus, they contend, there has been consistent prior and/or concurrent honest user of the "Rupali" name and the defendants cannot be restrained from using it nor have they infringed the plaintiff s trademark. However, as learned counsel for the plaintiff has correctly'submitted, no material has been placed on record in support of these claims. The contesting defendants could have easily done so, since there are any number of documents that are required for or generated by the grant of approvals for a building project as also its development and plans, launch and subsequent bookings by the public. The onus of this . Lay on the contesting defendants. Since no such material has been produced they have, prima fade, failed to' discharge this burden. The registrations with ABAD and SHCA go some way in this regard, but in the end cannot be decisive because they do not relate to the actual use of the "Rupali" name for providing the services in classes 36 and 37, which is what is required. In my view therefore, on the record as it stands, the defendants have been unable to make out a case of prior and/or concurrent honest user.
8. It would follow from the foregoing that prima facie, the plaintiffs trademark has been infringed.
Ordinarily, this would entitle the plaintiff to interim injunctive relief. However, after having considered the matter, I am of the view that the present is a fit case in which the Court, in its discretion, ought to withhold the grant of such relief. One factor working against the plaintiff has already been noted above, i.e,, the lack of any material to establish that the plaintiffs trademark was, in fact, registered on the date of the institution of the Suit as required by law. Furthermore, there is nothing to indicate that it was even subsequently registered, especially in the relevant classes. There is in addition another factor that militates against the grant of interim relief. This relates to the submission by learned counsel for the contesting defendants that the plaintiff is not, and has never been, in the construction business, which is far removed from the plaintiffs actual areas of business and commercial activity. Although I am for purposes of the 2001 Ordinance only concerned with the person claiming to be the proprietor of a trademark, which in the present case is the plaintiff, it would seem that the objection taken by learned counsel in fact applies equally to other companies of the plaintiffs Rupali group.
9. Section 22 of the 2001 Ordinance, which relates to the application for registration of a trademark, states as follows in subsections (3) and (4) (emphasis supplied):-- "(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)."
' Rule 25 of the Rules provides that if an applicant fails to remedy a deficiency notified to him in respect, inter a/tap of subsection (3) "the application shall be deemed to have been abandoned".
10. The relevance of section 22 (to.The extent noted above) as a factor for refusing grant of interim relief is as follows. The focus is on the words highlighted in subsection (3): the applicant must have a bona fide intention to use the trademark in relation to the goods and services applied for. The required intention must relate to each class of goods and/or services in respect of which the application is made. This is made clear by Rules 12 to 14 of the Rules, which expressly provide that each application must be confined to one class and if the trademark is to be registered in different classes, separate applications must be made for each. In the present case, the plaintiff has applied for registration in all the classes given in the Fourth Schedule. Section 22(3) therefore must apply in relation to all. Now, the plaintiff is a company. As is well known, a company registered under company law must set out its objects in the objects clause of the memorandum of association. The objects clause is applied in accordance, inter alia, with the well-known doctrine of ultra wires. This provides that a company has the legal capacity to only engage upon businesses and ventures as are stated in the objects clause, and anything beyond that or extraneous to it is void. In Rolled Steel Products (Holdings) Ltd. v. British Steel Corporation [1985] 3 All ER 52, the Court of Appeal elaborated at length on the meaning and application of the doctrine, both in its narrow and wide sense. For present purposes the following extract, from the judgment of Browne-Wilkins L.J., suffices (pp. 91-92): "A company, being an artificial person, has no capacity to do anything outside the objects specified in its memorandum of association. If the transaction is outside the objects, in law it is wholly void. But the objects of a company and the powers conferred on a company to carry out those objects ase two different things....
' The critical distinction is, therefore, between acts done in excess of the capacity of the company on the one hand and acts done in excess or abuse of the powers of the company on the other. If the transaction is beyond the capacity of the company it is in any event a nullity and wholly void....
If, on the other hand, the transaction (although in excess or abuse of powers) is within the capacity of the company the position of the third party depends upon whether or not he had notice that the transaction was in excess or abuse of the powers of the company."
' Although the doctrine has since been virtually abolished in England by statutory changes (see, e.g., sections 31 and 39 of the UK Companies Act, 2006), it is undoubtedly still in force in common law jurisdictions such as Pakistan and India. In my view, when a company makes an application for registration of a trademark, the words highlighted in section 22(3) must be considered on two planes, one legal and the other factual. On the legal plane, the class (or classes) of goods and services in respect of which registration is applied for must be such as relate to some object to be found in the objects clause of the memorandum of association. The reason is simple. If the class (or any particular class if there be more than one) do not so relate then, as a matter of law, the applicant company cannot engage upon any business, activity or venture to which the class, and hence the mark, would be applicable. Were the company to do so, it would be ultra wires and void.
It necessarily follows that in such a situation, the applicant company cannot, as a matter of law, have the requisite intention to use the trademark sough to be registered. Such "intention" would be unlawful, being beyond the company's legal capacity. If an application is made for registration of a trademark in respect of such a class, the requisite declaration made by or behalf of the company that it bona fide intends to use the mark must therefore, as a matter of law, be rejected.
11. The second aspect of section 22(3) is factual. Even if the class (or all the classes if there be more than one) do relate to one or more of the objects to be found in the memorandum of association, it is still a matter of fact whether the applicant company does bona fide intend to use the mark in respect of all of them. The reason is that in most cases, the objects clause of a company is broadly stated. Experience shows that the clause is usually quite long, and can list all manner of unrelated ventures and businesses. However, as a matter of fact, most companies engage upon only a tiny fraction of the stated objects. Indeed, it can safely be said that in an overwhelming number of cases, the businesses actually undertaken relate to less than a handful of the clauses in the objects clause (and usually not more than one or two). To take a simple example, it may be possible to find in the objects clause of a company the necessary legal capacity to engage upon cement and sugar manufacturing as well as to undertake textile business. However, it would be rare to find a company that simultaneously runs a cement plant, a sugar mill and a textile factory.
While ordinarily on the factual plane the declaration that the applicant intends to bona fide use the mark in relation to the stated class can be accepted at face value, some care should nonetheless be taken when applications are made in many (or as is the case here, all) classes, especially if such applications are made either simultaneously or in short order. In such a situation the Registrar can legitimately inquire into the eracity of the declarations in order to ensure factual compliance with section 22(3). The scrutiny must not be narrow, hypercritical or overly technical. Nonetheless, some investigation may be called for in appropriate cases. The situation would obviously be different if, e.g., the applications are in respect of a limited number of related classes or there is a sufficient gap in time between the applications even if the classes are unrelated. There, the considerations just stated would not apply.
12. In my view, on its proper interpretation and application, section 22(3) requires the Registrar to carry out the two-step exercise stated above in respect of every applicant that is a company, i.e,, an incorporated entity whether created or registered by or under the laws of Pakistan or elsewhere.
Of course, the exercise on the legal plane would be carried out on the basis of the law under which the entity is incorporated so that, e.g., in respect of English companies the first step of the exercise may hardly be required in view of the current position of English company law. However, it would certainly be required in respect of Pakistani companies and if, and to the extent that, the Registrar does not so scrutinize the applications he is in breach of his statutory ditties.
13. Now, the classes given in the Fourth Schedule to the Rules cover large, and certainly the important, parts of all business activity. This is of course perfectly understandable. For the plaintiff to make a valid application in respect of all the classes would mean that it bona fide intends to use its trademark "Rupali" in respect of all the classes, i.e,, for this company alone and itself to engage upon a huge swa the of business and commercial activity (and certainly all the important parts of it). Applying the two-stage test noted above, this would require, as a matter of law, that the objects clause of its memorandum of association must relate to and include businesses and ventures in respect of all of the classes listed in the Fourth Schedule. It is, with respect, hard to conceive such a situation. The onus clearly lies on the plaintiff to show this, and it has not placed its memorandum and articles of association on the record. However, both common sense and experience indicate that however broadly the objects clause of the plaintiffs memorandum may be stated, it would not relate to each and every class stated in the Fourth Schedule. Even if attention is focused more narrowly, it is still an open question whether the objects clause relates to classes 16, 36 and 37.
From the description given in the plaint (see especially para 8) it can be readily concluded that the plaintiff is engaged essentially in various types of textile business. In my view, prima facie, the plaintiff may well not be legally entitled to engage upon any business or object as relates to classes 16, 36 and 37. Even if it is, and therefore would successfully pass the first stage of the test, it is still an open question whether, as a matter of fact, it would engage upon a business as relates to anything in classes 16, 36 or 37, or even bona fide intended to so engage upon any such business within any reasonable timeframe when the applications were made. It has certainly not done so yet. The applications were made in 2004, the Suit was filed in 2009 and the hearing took place in 2014. Learned counsel for the plaintiff, as noted above, frankly and quite properly accepted that the plaintiff had not ventured upon any business to which these three classes relate. These facts speak for themselves.
14. It will be convenient to take up here a submission by learned counsel, namely that the plaintiff had to apply for registration in all the classes in order to safeguard the distinctiveness of the "Rupali" name. This submission is, with respect, misconceived. If the plaintiffs trademark is "well- known" (in terms as defined in the 2001 Ordinance) or has acquired a reputation in Pakistan (and this has indeed been claimed in the plaint), the statute gives certain specific protection. Thus, section 40(4) provides that if a trademark that is well-known or has acquired a reputation in Pakistan is used deceptively in relation to goods and services that are not similar to those for which it is registered, and the other requirements of the subsection are fulfilled, there is infringement of the trademark, and the defendant can be restrained accordingly. Reference may also be made to sections 17(3) and 29(4), which also provide statutory protection. If an applicant were allowed blanket registration of the trademark in all the classes specified in the Fourth Schedule that could practically nullify these provisions. The applicant, as proprietor of such a mark, would not have to establish that his trademark is a well known mark and/or has acquired a reputation in Pakistan and is entitled to protection against use in respect of goods and/or services unrelated to his. He would be able to rely simply on the universal registration of the trademark. If the "Rupali" mark has indeed acquired a reputation in Pakistan and/or is a well-known trademark, it is only entitled to such protection against its use in respect of unrelated goods and/or services as and to the extent provided by the aforesaid provisions, and in the manner as therein stated. By claiming a universal registration, the plaintiff cannot be allowed to, in effect, circumvent those provisions and obtain a protection greater than that intended by the statute.
15. In view of the foregoing. I am of the view that there is prima facie doubt whether the plaintiff was compliant with the requirements of subsection (3) of section 22 in respect of a large number of the classes for which registration was applied, but in any case such doubt exists in relation to classes 16, 36 and 37. In such circumstances, and also for the reason already given in para 6 herein above and the reason given in para 18 below, in my view it would be an incorrect exercise of discretion to grant interim injunctive relief to the plaintiff against the contesting defendants.
16. I turn to consider the defendants' application under section 80. This section, insofar as is presently relevant, is as follows:-- "80. Grounds for invalidity of registration.---(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 14 or any of the provisions thereof.
(2) Where the trade mark was registered in breach of clause (b), (c) or (d) of subsection (1) of section 14, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
(3) The registration of a trade mark may be declared invalid on the ground that there is-
(a) an earlier trade mark in relation to which the conditions set out in subsections (1), (2) or (3) of section 17 obtained; or
(b) an earlier right in relation to which the condition set out in subsection (4) of section 17 is satisfied, unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.
(4) An application for declaration of invalidity may be made by an interested party either to the Registrar or to the High Court or a District Court, except that-
(a) if proceedings concerning the trade mark in question are pending in the High Court or a District Court, the application shall be made to the High Court or a District Court; .....
(6) Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.. ."
' It will be seen that the possible grounds for invalidity fall into two distinct parts, one in relation to section 14 and the other in relation to section 17. Both of these sections are to be found in Chapter II.
Section 14 lists the grounds which must result in an application for registration being refused. These are absolute grounds, which apply regardless of whether there is any other trademark in the field.
Section 17 on the other hand lists the relative grounds. These apply in the main if there is another, earlier registered trademark although subsection (4) relates to an unregistered mark/right as well in the circumstances therein stated. Having A considered the matter, in my view, the defendants' application cannot relate to anything contained in subsection (3) of section 80. This is because none of the provisions of section 17 apply in relation to the defendants' (admittedly) unregistered mark/right on the one hand and to the plaintiffs (presumed) registered trademark. Insofar as subsection (1) of section 80 is concerned, that can apply, if at all, in the present facts and circumstances in relation to only one provision of section 14, which is its subsection (4). This provides as follows: "A trade mark shall not be registered if or to the extent that the application is made in bad faith". I turn to consider this provision.
17. It is to be noted that the 2001 Ordinance appears to be modeled fairly closely on the UK Trade Marks Act, 1994 ("UK Act"). Sections 3 and 47 of the UK Act are in part materia sections 14 and 80 of the 2001 Ordinance. Subsection (6) of section 3 is in exactly the same terms as subsection (4) of section 14. The leading authority in English law in respect of section 3(6) is the decision of the Court of Appeal reported as Harrison v Teton Valley Trading Co. Ltd. [2004] EWCA Civ 1028, [2005] FSR 10.
The test formulated by the Court for determining whether the application was made in bad faith has been expressed as follows in a well known and authoritative treatise, Kerly 's Law of Trade Marks and Trade Names, 14th ed., 2005 (hereinafter Kerly):-- "Before there can be a finding of bad faith, it must be established that the applicant's conduct in filing the application fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined and that the applicant himself realized that by those standards his conduct fell short." (para 8-275)
' The decision of the Court of Appeal has been followed in other common law jurisdictions: see, e.g., the Federal Court of Australia in Fry Consulting Pty Ltd v Sports Warehouse Inc. (No, 2) [2012] FCA 81 and the Singapore Court of Appeal in Valentino Globe BV v. Pacific Rim Industries Inc. [2010] SGCA
14. In my view, it ought also to be regarded as the correct test to apply while considering subsection (6) of section 14 and its formulation as stated in Kerly can be adopted. The learned editors of Kerly place the decisions on section 3(6) of the UK Act into three broad categories (see para 8-282), and go on to suggest in para 8-289 certain other situations, not yet arisen for decision, in which bad faith could be found. One possible situation is the following: "The applicant has no present or fixed intention to use the mark, but wishes to stockpile the mark for use at some indeterminate time in he ture" (para 8-290).
18. It will be seen that the ground taken by the contesting defendants is essentially as stated in Kerly in the passage just cited, though perhaps the defendants would put their case even more strongly the plaintiff never had any intention at all to use the trademark "Rupali" in relation to classes 16, 36 and 37. I have carefully considered the matter. It is clear from the case-law that a finding of bad faith must not be lightly made. Thus, in Royal Enfield Trade Marks [2002] RPC 24, it was observed as follows (at [31]):-- "An allegation that a trade mark has been applied for in bad faith is a serious allegation. It is an allegation of a form of commercial fraud. A plea of fraud should not lightly be made ... And if made should be distinctly alleged and distinctly proved. It is not permissible to leave fraud to be inferred from the facts .... In my judgment precisely the same considerations apply to an allegation of lack of bad faith made under section 3(6) It should not be made unless it can be fully and properly pleaded and should not be upheld unless it is distinctly proved and this will rarely be possible by a process of inference."
' In my view, the case put forward by the contesting defendants has not come up ?o the requisite standard as regards establishing bad faith on the part of the plaintiff in applying for registration of the "Rupali" name in classes 16, 36 and 37, as would make section 14(4) and hence section 80(1) applicable. However, at the same time it cannot be denied that there could, prima fade, be lei-neat of "stockpiling" in the making of the applications of these classes. Even if bad faith has not been established, it does appear prima facie to be the case that good faith was lacking when the plaintiff applied for registration in the aforementioned classes. This is all the more so when it is kept in mind that applications were made in all the classes, in apparent disregard of whether they related to any existing business of the plaintiff or to a business that could be regarded as reasonably relatable thereto, or a business for which it had the legal capacity in terms of its memorandum of association, or a business that could fairly be regarded as being in its contemplation within a reasonable timeframe. Therefore, while I deny the defendants application under section 80, I am of the view that the foregoing discussion and analysis constitutes, in the facts and circumstances of the case, another reason why the plaintiff should be denied interim injunctive relief in the discretion of the Court.
19. As noted above, learned counsel for the parties relied on a number of decisions. I have considered the same. With respect, the cases cited are not of direct relevance for purposes of the discussion and analysis that I have undertaken herein above. It is not necessary therefore to consider the cases in any detail. Two points however, ought to be made. The first is that many of the cited cases were decided under the old law, the Trade Marks Act, 1940 ("1940 Act"). In Soneri Travel and Tours Lid. v. Soneri Bank Ltd. 2011 CLD 193 a Division Bench of this Court (of which I was a member) commented on the differences between the 2001 Ordinance and the 1940 Act, and observed as follows (in para 8): "Cases decided under, or in relation or with reference to, the 1940 Act must therefore be reread and reappraised carefully before they are applied to the provisions of the 2001 Ordinance, even if those provisions may appear at first sight to be equivalent to those under the former enactment". The second point is in relation to the synopsis submitted by learned counsel for the plaintiff. In it, learned counsel has, inter alia, made reference to section 67 of the 2001 Ordinance, which relates to unfair competition, as well as to the alleged dilution of the plaintiffs trademark. However, these grounds were not taken at the hearing of the applications. A written synopsis must be confined to what was argued before the Court. 'A party cannot be allowed to expand on the case sought to be made there by inserting additional submissions/material in the written synopsis unless the Court has expressly so permitted. I gave no such permission and the foregoing grounds taken in the written synopsis must therefore be regarded as extraneous and impermissible additions. They cannot be entertained. Finally, needless to say, the observations made herein above are tentative in nature and should the Suit proceed to trial, the same shall be decided on its own merits uninfluenced by anything said herein.
20. In view of the foregoing discussion and analysis, I conclude that the plaintiff is not entitled to interim injunctive relief in that the same ought to be refused in the discretion of the Court.
Accordingly, C.M.A. 5128 of 2009 is dismissed. It is however clarified that this decision relates only to the present contesting defendants and is in relation to classes 16, 36 and 37 (if, that is, the plaintiffs trademark is registered in these classes). The defendants have been unable to make out a case in terms of their C.M.A. 4047 of 2010. That application fails and is dismissed.
21. The Additional Registrar (OS) is directed to send a certified copy of this decision to the Registrar of Trade Marks, who is directed to ensure that he and his office act conformably with this decision in respect of all pending and future applications for registration, especially when the applicant is a juridical entity established, created or registered by or under any law, whether in force in this country or elsewhere. The Registrar of Trade Marks must also ensure immediate publication of this decision in the Trade Marks Journal. A copy of the relevant issue of the Journal must be sent to the Additional Registrar (OS), who will ensure that it is placed on the file of this suit.