1. ' SYED SAEEDUDDIN NASIR, J.---This order will dispose of C.M.A. No,6141 of 2014 which is an application under Order XXXIX, Rules 1 and 2, read with section 151, C.P.C.
2. ' The plaintiffs contend that they are one of the leading and well known manufacturers and merchants, importers and Exporter of Personal care products in Pakistan, doing business of Manufacturing and Marketing of tooth brushes, tooth paste, baby feeding accessories, etc... And several other goods for more than 3 decades and enjoy high reputation and goodwill in Pakistan as well as in international market in respect of trademark SHIELD + DEVICE OF SHIELD.
3. ' The learned counsel for the plaintiff Mr. Shahid Qadeer at the very outset of his arguments submitted that the plaintiff is registered owner and proprietor of Hundreds of Trade Marks with the dominant feature SHIELD + DEVICE OF SHIELD for goods being goods included but not limited to classes 03,05,10,21 but several such trademarks are pending registration and are likely to be registered in due course of time and the plaintiff had been using the said Trade marks on the goods mentioned above continuously and extensively since long. That due to substantial sales and tremendous quality of the products, extensive and wide publicity, the said Trade Marks SHIELD + DEVICE OF SHIELD connotes and denotes to the traders and consumers in Pakistan as well as in foreign markets as the products of our Clients exclusively. Learned counsel for the plaintiffs further submitted that the plaintiff is the registered Copyrights holders of these brands, logo's and monograms and also the Artistic work and label designs of the packaging and are free and in full force to use these brands on their products under the protection provided to them by the copyrights Ordinance 1962 by virtue of their registrations of copyrights. That plaintiffs have never given permission/license to any other person(s), Companies, firms, retailers and dealers in any manner to use these trademarks, brands, logo's and monograms, color schemes, getup, trade dress on their inferior quality goods/products plaintiff is only entered to enjoy every right of usage of these trademarks/brands under protection provided to them by the Trade Mark and Copy right Laws. It is further submitted by the learned counsel for the plaintiffs that in order to distinguish plaintiffs' products from other similar or identical manufacturers, the plaintiff adopted the trade mark consisting of the word SHIELD AND DEVICE OF SHIELD in respect of various kinds of products. It is stated that the plaintiffs are the original adopter, developer and prior user of trade mark "SHIELD" with device of SHIELD since 1974, as such proprietor, the plaintiff applied for the registration of such trade mark and got the same registered in different classes as stated above. The said registrations are in full force and valid till now. Before registration the said trade marks were duly advertised in the Trade Marks Journal by the Trade Marks Registry for inviting Oppositions by any person or persons. Since no Oppositions were filed by any person, the marks were proceeded to registration.
4. The other pending marks of Trade Marks "SHIELD" are likely to be registered in due course of time.
5. The said trademarks have been continuously and extensively been used throughout Pakistan by the plaintiffs. By virtue of long and extensive use the said trademarks "SHIELD" have acquired sufficient goodwill and reputation in respect of all kinds of Soaps, and is associated with traders, consumers and general public as a product of the plaintiffs exclusively.
6. ' The learned counsel for the plaintiffs next contends that the Trade Mark "SHIELD'with DEVICE OF "SHIELD" stands as a symbol of quality, dependability and reliability of the products upon which it is used and enjoy tremendous reputation and goodwill in favour of the plaintiffs.
7. ' The products bearing the Trade Marks SHIELD have been sold in substantial quantities and since long been known to trade and public. By reasons of such sale and excellent quality of the products the plaintiffs have acquired and enjoyed a considerable and wide reputation and a valuable goodwill in respect of said products sold under the plaintiffs "SHIELD" trademarks. Goods bearing the plaintiffs said trademarks are recognized as the plaintiffs goods by the trade and the persons connected in the course of trade who associate the said trademarks with the plaintiffs and the said trademarks. Serve to distinguish with the plaintiffs goods from the goods of other similar manufacturers.
8. ' The plaintiffs' counsel next contended that trademarks "SHILED" products have been widely advertised throughout Pakistan through various media such as Television, Newspapers, magazines, Hoardings, boarding, Stickers and stand boards, displayed at conspicuous places of various cities and Towns of Pakistan. All of these advertisements have prominently carried or mentioned the plaintiffs trade mark "SHIELD" with device of SHIELD.
9. ' Due to the popularity of the products of the plaintiffs under the Trade Mark "SHIELD" imitations were attracted to make some unlawful gains at the instance of the good name of the plaintiffs and the Trade Mark used by the plaintiffs and the plaintiffs were able to track down such impostors and some of such imitators were reprimanded but it is not possible for plaintiffs to eliminate the imitators totally.
10. ' The learned counsel for the plaintiffs further submitted that due to superior quality of goods, sale promotion and continuous use since 1974 of the Trade Mark SHIELD it has become distinctive of the goods of the plaintiffs and none else. The Trade Mark SHILED with its prominent distinctive features is associated in the minds of trade and purchasing public as a house-mark for high quality products of the plaintiffs. By virtue of these circumstances, extensive user and sales promotion the plaintiffs had acquired a valuable reputation and goodwill in the said business.
11. ' Referring from the pleadings and the documents produced from the record Mr. Shahid Qadeer, the learned counsel for the plaintiffs states that it is unbelievable that the defendants would be unaware of the plaintiffs trade mark SHIELD with the DEVICE OF SHIELD which is being used since 1974 on such a large scale and receiving publicity in different media, it also cannot be a coincidence that the defendants have independently hit such a closely resembling mark "HEALTH SHIELD" and it is quite clear that they have copied an exactly ditto mark as of the plaintiffs mark i,e, word SHIELD. Thus the circumstances of this case shows that the defendants were aware of the plaintiffs famous and distinctive mark, when they adopted the Trade Mark HEALTH SHIELD AND DEVICE OF SHIELD which is dishonest and they cannot claim to be its proprietor thereof whereas the defendants have neither filed any Application nor their Trade Mark is Registered in the name of HEALTH SHIELD AND DEVICE OF SHIELD, hence they have no right to use it.
12. ' The plaintiff alleges that defendants have dishonestly copied the plaintiffs said registered and pending marks to come and get ready markets for the said Counterfeit products/services at the costs of our well established goodwill and reputation in said mark with full knowledge that the same is in our continuous use since 1974 and due to very extensive sales and publicity have acquired proprietary rights and great popularity for the same in Pakistan and hence adoption of confusingly similar mark by the defendants is mala fide and dishonest.
13. ' The learned counsel for the plaintiffs further submitted that the main and dominant part of the plaintiffs Trade Marks is SHIELD. The word "SHIELD" is main feature and dominant part of the plaintiffs Trade Marks which is already in use and registered in favour of the plaintiffs since 1974 and have earned goodwill and good reputation in the eyes of public at large. There is likelihood of confusion on account of visual and phonetic between the respective Trademarks. The Trade Mark "HEALTH SHIELD" of defendant's would be likely to deceive or cause confusion in pronouncement and sound by an ordinary main considering level of education of common purchases in Pakistan. The goods of plaintiffs and defendants are the same and are of same description and pass through the same channel and are to be sold through the same shops and the Purchaser by the same class of customers who cannot differentiate the world SHIELD and HEALTH SHIELD.
14. ' The plaintiff further alleges that the adoption of identical or closely similar mark "SHILED" by the defendants is dishonest adoption and mala fide and is an attempt to trade unfairly upon the goodwill and reputation of plaintiffs well known distinctive trade marks SHIELD, in respect of same and/or the same description of goods/services and to deceive the purchasing public into believing that the goods/services emanate from the plaintiffs or from persons having business connection with the plaintiffs. Therefore the defendants mark is disentitled to protection in a court of Justice within the meaning of sections 14(3)(a), 17 and 40 of the Trade Marks Ordinance, 2001.
15. ' The likelihood of deception and confusion as to trade origin or trade connection is more serious because the goods/services of the plaintiffs and those of the defendants are the same and are sold through the same trade channels and used and purchased by the same class of purchasers which include both literate and illiterate persons and as such confusion and deception as to source of origin of goods/services is most likely to occur upon the use of the "SHIELD" trade mark by the defendants on the goods/services of which registration is sought for as the general public is aware that trade mark "SHIELD" with other features of the marks belongs to the plaintiffs, therefore they are likely to take and consider the goods/services of the defendants under "SHIELD" trade mark to be originating from the same source and as such deception and confusion cannot be inevitably avoided. The adoption of the impugned trade mark by the defendants is mala fide and dishonest and they cannot claim to be the Proprietors of impugned trade mark within the meanings of section 14 of the Trade Marks Ordinance, 2001.
16. ' The learned counsel for the plaintiffs further submitted that the defendants are using the trade mark in HEALTH SHIELD DEVICE OF SHIELD in class 29 in their product of DALDA GHEE in the markets of Pakistan. However, it will also not confer any title upon the defendants to obtain registration of said confusingly similar mark in their favour to the detriment of the plaintiffs; the defendants cannot escape from the knowledge of the plaintiffs trademarks SHIELD circulating in the markets of Pakistan since the year 1974. The plaintiffs trademarks are registered, pending and are used since 1974 and their goods are famous for their quality, if the defendants mark is allowed to be used or registered, their inferior quality goods/services will bring disrepute and thus reputation and goodwill of the plaintiffs would be adversely affected. The plaintiff's Trade Mark SHIELD + DEVICE OF SHIELD is even otherwise protected under section 40(4)(b) which makes dilution of the Trade Mark by use of it in relation to goods or services which are not similar to those for which the Trade Mark is registered infringement.
17. ' The defendant started advertisement in the name and style of HEALTH SHIELD AND DEVICE OF SHIELD in the electronic media just like in TV, Print Media, Internet, Website etc, when the plaintiff saw the advertisement on the T.V., the plaintiff immediately issued a legal notice Dated: 21-3-2014 to the defendant for the unauthorized adoption and passing of Trade Mark SHIELD and DEVICE OF SHIELD which was duly received by the defendant and was replied on 4-4-2014 denying allegation made by the plaintiff in their legal notice. While perusal of page 3 of reply of defendant, one can easily compare that both the Trade Marks of plaintiff and defendant, which are designed and sketched by the defendant on this page are similar and Identical and seems to be the products of the plaintiff, which is sufficient proof of imitation being conducted deliberately by the defendant.
18. ' That furthermore the plaintiff has also got registered Trade Mark in the name of "SHIELD CORPORATION LTD" vide various Applications in almost 1 to 45 Classes with different Trade Marks with "SHIELD" being the dominant feature therein.
19. ' The learned counsel for the plaintiff lastly submitted that the aforesaid illegitimate trade and business activity and infringement of Trade Mark on the part of the defendants have already caused substantial Damage to the goodwill and reputation of the plaintiffs which is irreparable in nature hence, is liable to be restrained under the law. Likewise the aforesaid part of the defendants have already caused substantial loss of business to the plaintiffs and same is likely to cause more loss in future which is liable to be compensated. However, at this juncture the plaintiffs roughly estimates their loss to the tune of Three Hundred Million and said loss and injury is a most likely to multiply many fold times unless defendants is not restrained under the law. Therefore, the plaintiffs to vindicate their position claim Rupees Three Hundred Million as a token of compensation for the said loss of business from the defendants.
20. ' Learned counsel for the plaintiff has referred to paragraph 5 to 10 of the plaint, wherein the plaintiff has given details of pending and registered Trademarks of the plaintiff, which are Annexures E-1 to E-52 to paragraph 5 of the plaint, F-1 to F-41 to paragraph 6 of the plaint, G-1 to G-72 to paragraph 7 of plaint, H-1 to H-33 in paragraph 8 of the plaint, I-1 to 1-14 to paragraph 9 of the plaint, J-1 to J- 63 to paragraph 10 of the plaint in the name of Shield Corporation Limited. The dominant features of which are word SHIELD DEVICE OF SHIELD. It is pertinent to mention here that trademark Shield word label of the plaintiff also registered under class 29 in 1652, in Class 30 in 189653. Learned counsel for the plaintiff further submits that the plaintiff also got registered the trademark Shield Corporation Limited vide various application in almost all the classes i,e, 1-45, copies of Annexures K-1 to K-68 to plaint. In support of his arguments the learned counsel for the plaintiff has placed reliance upon Messrs Dewan Sugar Mills (Pvt.) Ltd. v. M.B. Abbasi and others, 2007 YLR 2672, wherein it is held that "if trademark is registered the same cannot be used by any other person in the face of the provision of section 40(4) read with section 17 of the Trademarks Ordinance." Injunction application was allowed.
21. ' The next case cited by learned counsel for the plaintiff was J.No, Nichols (Vimto) PLCA A Company Incorporated in the United Kingdom v. Mehran Bottlers (Private) Limited Karachi PLD 2000 Karachi 192, wherein this Court has held that trademark registration of prima facie evidence of validity.
22. Registered trademark can be exclusively used by its proprietor till the registration continues.
23. Registration of a trademark is prima facie evidence of validity. Test of infringement of trade mark is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trademark as the goods of the proprietor of the trademark. The interim injunction was confirmed by the High Court in circumstances.
24. ' The next case relied upon by the learned counsel for the plaintiff was Muhammad Saeed Mughal and 3 others v. Messrs National Aviation Services (Pvt.) Limited through Malik Talat Mehmood, 2001 YLR 2004. In this matter the High Court Balochistan held that "unregistered trade mark of the defendant was "YESGAS" whereas the plaintiff's trade mark was "NESGAS" which was registered since 1978. Appellate Court has upheld the interim injunction in favour of the plaintiff, granted by the trial Court, restraining the defendant from using their mark. The Hon'ble Court also held that the plaintiff had proprietary right to use trademark in their favour by the competent authority and the defendants had no right to challenge the same or to bring any trademark which seem to resemble or was likely and identical to that of plaintiff's trademark, where the plaintiff had made good prima facie case showing that if the defendants were not restrained, the plaintiff would suffer irreparable loss, injury and damage to their goodwill and reputation and business by creating confusion and deception in the minds of the consumers/purchasers. High Court declined to interfere with the injunction order passed by the trial Court.
25. ' The next case relied upon by the learned counsel for the plaintiff was Muhammad Fazil v. Messrs Ashfaq Brothers, Karachi, 1981 CLC 1519. In this case this High Court held "size of both disputed marks as well as their colour, get up, design and print almost same. Words and letters printed thereon having same size and labels very closely similar and liable to cause confusion and deception in the minds of unwary purchaser. Trial Court, held, rightly granted interim injunction, in circumstances.
26. ' Thereafter, learned counsel for the plaintiff relied upon Messrs Chas A. Mendoza v. Syed Tausif Ahmed Zaidi and 2 others, PLD 1993 Karachi 790. In this case court held that "plaintiff's trademark for dental cream was being counter-feited by the defendant by using mark 'Medicare' which did cause confusion and deception in respect of plaintiff's product, therefore interim injunction was granted in this case.
27. ' Turning now to the arguments of the learned counsel for the defendants Mr. Shoib Mansoor has firstly contended that the defendant is the successor of the business carried on formerly by Lever Brothers Pakistan Limited and now Unilever Pakistan Limited (hereinafter referred to as the (Predecessors) with regard to the manufacture and sale of vegetable ghee, cooking oil and banaspati products under the various well-known trademarks such as DALDA, PLANTA and MANPASAND (hereinafter referred to as said products). As such for over seventy years defendant's name is synonymous with quality. Defendant's Brands are vegetable ghee, cooking oil and banaspati products in Pakistan which are, trans-fat free and meet the most stringent of international quality standards and the said products preserve the natural goodness of vegetable oils and are enriched with extra vitamins. The defendant continues to remain committed to quality, care for environment and social responsibility is evident from the fact that it is the only edible oil and fats/ghee company in Pakistan which has the following four ISO certifications:-- ' ISO 9001-2008 for Quality Management System ' ISO 22000-2005 for food Safety Management System ' ISO 14001-2004 for Environment Management System ' OHSAS 18001-2007 for Occupational Health and Safety Management System ' The learned counsel for the defendant next contended that the defendant is one of the few companies in Pakistan which has a sales and distribution network covering the length and breadth of the whole country. The defendant maintains 11 distribution centres and a network of over 400 distributors all over Pakistan.
28. ' That the general public is aware of the goodwill and the well established reputation of the defendant and its related products and the defendants has become a nationwide household brand and in order to maintain its reputation the defendant continues to strive to introduce better technology for processing and refining its products in order to make them fit for human consumption.
29. ' The learned counsel for the defendant next contended that this suit has been filed in order to mislead this honourable Court and to create a false impression that the defendant has malafidely used the trade mark HEALTH SHIELD DEVICE whereas in fact the defendant's mark is different from that of the plaintiff and is being used by the defendant to indicate the health benefits that the product of the defendant contains. That the present suit has been filed with mala fide intention in order to deprive the defendant from reaping the benefits of its widely acclaimed. DALDA HEALTH SHIELD Campaign and to unlawfully hinder the defendant from carrying on with its rightful and regular activities in relation to the said Campaign and in fact the defendant reserves the right to initiate legal proceedings and/or make counter-claims against the plaintiff under the law and specifically under section 52 of the Trade Marks Ordinance, 2001 inter alia for groundless threats of infringement in the circumstances that the plaintiff has illegally and fraudulently obtained registration of the SHIELD word and device in class 29 when it had no intention of making any bona fide use of the said trade mark.
30. ' The learned counsel for the defendant explicitly denied that the defendant is infringing the mark of the plaintiff and/or is using the mark of the plaintiff to pass off its goods as that of the plaintiff. In this regard, it is humbly submitted that the defendant itself is a well-known and reputed company and does not need to ride on the alleged reputation of the plaintiff in order to sell its goods as that of the plaintiff and/or establish any form of association with the plaintiff. The alleged reputation and good will of the plaintiff is not relevant to this case. It is specifically denied that the plaintiff has been in use of its mark on the goods in all classes of the Classification of Goods and Services produced in the Trade Marks Rules, 2004 and that the plaintiff has made such claims only to mislead this Hon'ble Court into believing that the plaintiff is involved in all kinds of business and that its products fall within all the classes of goods and services provided in the Trade Marks Rules, 2004 including the business of edible oil. It is submitted that plaintiff has no nexus to the business of edible oil and as provided by the plaintiff itself in paragraph 4 of the affidavit that the plaintiff's business is in relation to "personal care products", plaintiff's claim that it has been in use of the marks for the goods in all classes is misleading. The learned counsel further submitted that it is the principle of trademarks law that the trademarks should be compared in the entirety and when so compared the defendant's SHIELD mark and device is different to that of the plaintiff's alleged shield mark. Further it is submitted by the learned counsel for the defendant that the Defendant's shield device is stylised not only from the bottom but from the top as well as from the sides and as such stylisation is unique to the defendant. Additionally, at present the defendant is using the shield device that contains that words vitamins A&D etc., along with the other distinctive or non- distinctive words such as 'health', 'SHIELD' and as such the shield device is used in conjunction/combination with the defendant's registered trade mark `DALDA' only to indicate that the products of the defendant have health benefits and therefore such use by the defendant is not in any way dishonest. Moreover, it is submitted that the defendant has filed the attached applications and any claims made by the plaintiff with regard to the non-filing of the applications by the defendant is vehemently denied, it is candidly admitted by the learned counsel for the defendant that the said applications for the registration of trade mark HEALTH SHIELD DEVICE (in series) in class 29 are filed and DALDA SUN FLOWER OIL with shield device labelled in series in Class 29 on 8th April, 2014 i,e, after being served with the legal notice of the plaintiff dated 21-3-2014. The use of the shield and/or device thereof has been in existence for centuries and so the plaintiff cannot alleged to claim to be the creator of shield and/or the device of shield and/or allege that the defendant has copied shield and/or the device of shield of the plaintiff.
31. ' The learned counsel for the defendants admitted that "defendants are using the trade mark HEALTH SHIELD in class 29 in their product DALDA GHEE in the markets of Pakistan" since January, 2014. However (i) the defendant's mark is different to the plaintiff's mark; the business of the plaintiff is different to that of the defendant; defendant seeks to register its mark HEALTH SHIELD in class 29 only and that too for edible oil which is distinct to the defendant and has no nexus with the business of the plaintiff and (iv) there are other traders in the market that are using the shield device in connection with their products and towards such use the plaintiff has not filed any suit for injunction but malafidely filed this suit and is trying to hinder the business activities of defendant only.
32. ' That legal notice dated 21-3-2014 was sent to the defendant by the plaintiff's counsel and a response dated 4-4-2014 was sent to the plaintiffs counsel on behalf of the defendant's counsel, wherein it is specifically denied that the defendant's mark is identical to the plaintiffs alleged mark.
33. ' Mr. Shoib Mansoor, learned counsel for defendant in order to substantiate his arguments has relied upon Kaiser Jeep Corporation v. Saber Saleem Textile Mills Ltd., PLD 1969 Karachi 376, wherein this Court has held that the acquisition of an exclusive right to a mark or name in connection with a particular article of commerce cannot entitle the owner that right to prohibit the use by others of such mark or name in connection with goods of a totally different character. In my view this particular judgment cited by learned counsel for defendant is totally irrelevant of the case in hand inasmuch as in 1969 there was no concept in Trade Marks Act of 1940 of dilution of the mark or infringement as is contemplated by section 40(4) of the Trade Marks Ordinance, 2001.
34. ' In the case of Formica Corporation v. Pakistan Formica Ltd., 1989 SCMR 361, it is held that the question of infringement means would not arise if the said trade name has become common to the trade i,e, has become public juris again this case is irrelevant of the case in hand inasmuch as in 1989 there was no concept of infringement by way of dilution in Trade Marks Act, 1990.
35. ' The next case relied upon by learned counsel for defendant is Messrs Hero Motors Ltd., through Authorized Signatory v. Babar Auto Trading and Manufacturing Company through Proprietor, 2010 CLD 22. In this case the Hon'ble Division Bench of this Court has held that the plaintiff is proprietor of Trademark Hero since 1997, in respect of Motorcycle was not entitled to the grant of injunction against trademark "Asiahero" in as much as the word 'Hero' is a word common parlance and used in relative case and it is otherwise descriptive and was being employed generally across the board, therefore there is prima facie no possibility of any deception being entertained in the minds of public upon using of two competing marks and the injunction was refused in this case. This case is also distinguished from the case in hand. Since the plaintiff is a registered proprietor of registered trademark 'SHIELD' Word label and other trademark, in Pakistan, whereas the defendant is not a proprietor of trade mark 'SHIELD'.
36. ' The next case relied upon by the learned counsel for defendant was Trebor Bassett Limited v. The Football Association, Fleet Street Reports (1997). In this case the Hon'ble High Court of Chancery Division held that (i) reproduction of the players photograph inevitably reproduced the defendants' trademark but such reproduction was not even arguably 'using' the logo in any real sense of the word, and it was certainly not using the logo in any real sense of the word, and it was certainly not using it as a sign in respect of the cards. The logo appeared on the card, to show that he was an England team player. (ii) by publishing and marketing such cards the defendant was not in any real sense affixing the sign to the cards nor had they put the cards on the market under the sign, within the meaning of sections 10(4)(a) and 10(4)(b) of the Trade Marks Act, 1994. In this case Football Association infringement notice was impugned before the Court which stated that the card produced shall describe whether England logo appeared on F.A. Registered mark. Court held that Trademark only appeared by default and was not infringe unconditionally, inasmuch as it appeared on the sport wear of the football prayers, whose photograph was shown on the card. This case is also distinguishable on the ground that word 'SHIELD'. Appeared on the product of the defendant is not by the default or unintentional. The next case cited by the learned counsel for the defendant is Soneri Travel and Tours Ltd, through Chief Executive/Director Secretary v. Soneri Bank Limited, 2011 CLD 193, in this case the plaintiff impugned the validity of using of word 'Soneri' on the ground of infringement of the mark by dilution. In this case the Hon'ble Division Bench of this Court held that the burden was on the plaintiff to satisfy the Court that all the conditions of section 40(4) of Trademark Ordinance, 2001 except use of Trademark without cause, onus of which lays on the defendant. Use of word `Soneri' by defendant in relation to its Company name was a non-trade mark use thereof. The plaintiff had not identified any particular service or product and is not use the word `Soneri' in trademark sense. The plaintiff had registered trade mark in respect of only traveller cheques and credit cards, thus, reputation acquired in respect of its banking services or business would not be relevant as concept of "reputation" was linked to goods or services for which trade mark was registered. This means that the Court held that since the plaintiff's trademark was registered only in class 16 in the case of stationary items therefore the plaintiff could not claim reputation of banking business acquired by the plaintiff by registration of the mark, therefore the injunction was granted by the Single Bench of this Court was overturned and the defendant was allowed to use the word `Suneri' along with word 'Travel and Tours Ltd.' In this matter since trade mark of the plaintiff was registered only in class 16 not in respect of banking services therefore, the court declined the ground of injunction of the plaintiff who was claiming his reputation was turn down in the respect of banking service. The Hon'ble Division Bench also held that the enquiry office considered section 40(4) of the Trade Marks Ordinance, 2004, were also found missing. Since the facts and circumstances of every case is vary infinitely which are different in the present case from the case cited by the learned counsel for the defendant, the same is irrelevant and is distinguishable keeping in view the facts and circumstances of the present case.
37. ' It is pertinent to mention here that the legislature has inserted section 40(4) clause (b) in the Trade Marks Ordinance, 2001, whereby protection has been extended to the proprietor of the registered Trade .Mark in all the fields of business activities in respect of the goods which fall in another category/classification of goods services and are dissimilar to those for which Trade Mark of Service mark is registered. This particular Section inserted in the Trade Marks Ordinance, 2001 in order to provide protection the proprietor of a registered mark against infringement by dilution of the mark and dishonest adoption of the same by a person who is doing business in totally different field of activities. For the sake of convenience section 40(4)(a)(b) are reproduced here for the sake of convenience:-- "(4) A person shall infringe a registered trade mark if the person uses in the course of trade a mark which:-
(a) is identical with or deceptively similar to the trade mark and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered. Where the trade mark is a well-known trade mark, or has a reputation in Pakistan, and the use of the mark, being without due cause, takes unfair advantage of, or is detrimental to the distinctive character or the repute of the trade mark."
38. ' In this regard recently decided case of T. V. Vengopal v. Ushodoya Enterprises Let and another pronounced on 3-3-2011 by the Hon'ble Supreme Court of India authored by Hon'ble Mr. Justice Dalveen Bhandaru, on the point of dilution of the mark is of great importance. The relevant portion of the judgment is as under:- "The respondent company's mark 'Enadu' has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. 'Eenadu' newspaper and TV are extremely well known and almost household words in the State of Andhra Pradesh. The word 'Eanadu' may be a descriptive word but has acquired a secondary or subsidiary meaning and is fully identified with the products and services provided by the respondent company.
39. The appellant is Karnataka based company which has started manufacturing its product in Banglore in the name of 'Ashika' and started selling its product in the State of Andhra Pradesh in 1995. The appellant started using the name Tanadu' for its Agarbatti and used the same artistic script, font and method of writing the name which obviously cannot be a co-incidence. The appellant company after adoption of name 'Eanadu' accounted for 90% of sale of their product Agarbatti:"
40. ' In the aforesaid judgment a detailed account has been given of famous judgments of Indian High Courts and Indian Supreme Court a brief account of which is as under:-- "The name "Glenfield" had become associated with the starch manufactured by the plaintiff, and the defendant, although he established his manufactory at Glenfield, was restrained from using that word in connection with his goods in such a way as to deceive. Where the name of a place precedes the name of an article sold, it prima facie means that this is its place of production or manufacture. It is descriptive, as it strikes me, in just the same sense as "camel hair" is descriptive of the material of which the plaintiff's belting is made. Lord Westbury pointed out that the term "Glenfield" had acquired in the trade a secondary signification different from its primary one, that is connection with the word starch is had come to mean starch which was the manufacture of the plaintiff In Massarn v. Thorley's Cattle Food Co. Just referred to, James L.J. Said "The defendant was actually manufacturing starch at Glenfield, having gone thither for the purpose of enabling him to say that he was manufacturing it at Glenfield. The House of Lords said the mere fact that he was really carrying on his manufacture at Glenfield, and was not therefore telling a lie, did not exempt him from the consequence of the fact that his proceedings were intended and calculated to produce on the mind of the purchasers the belief that his article was the article of the plaintiffs".
41. ' The House of Lords was justified in observing that in the present case the juries have found that there was ample evidence to justify it, that the words "camel hair" had in the trade acquired a secondary signification in connection with belting, that they did not convey to persons dealing in belting the idea that it was made of camel's hair, but that was belting manufactured by the plaintiffs. They have found that the effect of using the words in the manner in which they were used by the defendants would be to lead purchasers to believe that they were obtaining goods manufactured by the plaintiffs, and thus both to deceive them and to injure the plaintiffs. On authority as well as on principle, the court granted relief to the plaintiffs.
42. ' In the Indian Case of Reckitt & Colman Products Ltd v. Borden Inc. And others - 1990 (i) ALL ER 873 where the court has dealt with general law applicable to passing off of action. In that case the court observed thus:- "The basic underlying principle of such an action was stated in 1842 by Lord Langdale M.R. In Perry v. Truefitt (1842) 6 Beay. 66, 73 to be: "A man is not to sell his own goods under the pretence that they are the goods of another man... ." Accordingly, a misrepresentation achieving such a result is actionable because it constitutes an invasion of proprietary rights vested in the plaintiff. However, it is a prerequisite of any successful passing off action that the plaintiff's goods have acquired a reputation in the market and are known by some distinguishing feature. It is also prerequisite that the misrepresentation has deceived or is likely to deceive and that the plaintiff is likely to suffer damage by such deception. Mere confusion which does not lead to a sale is not sufficient damage by such deception. Thus, if a customer asks for a tin of black shoe polish without specifying any brand and is offered the product of A which he mistakenly believes to be that of B, he may be confused as to which he has got but he has not been deceived into getting it, Misrepresentation has played no part in his purchase".
43. ' In the judgment of Indian Supreme Court in Ruston & Hornsby Ltd. v. The Zamindara Engineering Co. , - 1969 (2) SCC 727 wherein the court observed as under:-- "The distinction between an infringement action and a passing off action is important apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows: "Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff s goods?"
44. But in an infringement action the issue is as follows:-- "Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff's registered trade mark?"
45. In the case of Laxmikant v. Patel v. Chetanbhai Shah and another - 2002 (3) SCC 65. The Indian Supreme Court observed as under:-- "A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or service associated with a person acquires a reputation or good will which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two, Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."
46. ' In a judgment of Indian Supreme Court in Satyam Inforway Ltd. v. Sifynet Solutions (P) Limited - 2004 (6) SCC 145. The relevant passage is reproduced as under:- "The next question is would the principles of trade mark law and in particular those relating to passing off apply? An action for passing off, as the phrase "passing off" itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public.
47. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trademark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement."
48. In the case of Ramdev Food Products (P) Limited v. Arvindbhi Rambhai Patel and others - 2006 (8)
49. SCC 726 as under:-- "A trade mark is the property of the manufacturer. The purpose of a trade mark is to establish a connection between the goods and the source thereof which would suggest the quality of goods.
50. If the trade mark is registered, indisputably the user thereof by a person who is not otherwise authorized to do so would constitute infringement. Section 21 of the 1958 Act provides that where an application for registration is filed, the same can be opposed. Ordinarily under the law and as noticed hereinbefore, there can only be one mark, one source or one proprietor. Ordinarily again right to user of a trade mark cannot have two origins. The first respondent herein is a rival trader of the appellant Company. It did not in law have any right to use the said trade mark, save and except by reason of the terms contained in the MOU or continuous user. It is well-settled that when defences in regard to right of user are set up, the onus would be on the person who has taken the said plea. It is equally well-settled that a person cannot use a mark which would be deceptively similar to that of the registered trade mark. Registration of trade marks is envisaged to remove any confusion in the minds of the consumers. If, thus, goods are sold which are produced from two sources, the same may lead to confusion in the minds of the consumers. In a given situation, it may also amount to fraud on the public. A proprietor of a registered trade mark indisputably has a statutory right thereto. In the event of such use by any person other than the person in whose name the trade mark is registered, he will have a statutory remedy in terms of section 21 of the 1958 Act. Ordinarily, therefore, two people are not entitled to the same trade mark, unless there exists an express licence in that behalf"
51. ' He also relied on Harrods Limited v. R. Harrod Limited - (1924) RPC 74 where the court observed as under:-- "..It seems to me to be quite clear that where there is fraud the Court can interfere and there is fraud where you find a particular name taken by a defendant, a well-known fancy name, which could not be taken for a legitimate purpose, and a name which is taken, to use Lord Justice Buckley's words, for the purpose of posing as being some person whom you are not.
52. ' In Aerators Limited v. Tollitt (L.R. (1902) 2 Ch., p 319), Mr. Justice Farwell, said this, that you can interfere where the use of the particular name is calculated to deceive, even though it does not point to intentional fraud, and it is a question of fact in each case as to whether or not the names were so alike as to induce the belief that the companies are identical. So that, where there is fraud the court can interfere, and where the names are so alike as to be calculated to deceive it can interfere. Further it may draw the inference that there is fraud where there is an attempt to pose as being a particular business firm when you are not, and are not entitled to use their name."
53. ' In the famous case of Harrods Limited v. Harrodian School Limited (1996) RPC 697. In this case the court held that the manifold services and activities for which the plaintiffs are known, and the wide field of recognition of the name "Harrods", would lead to an assumption that, the plaintiffs in some way are connected, associated or mixed-up with the school which bears their name in its adjectival form. The court also observed that Erosion of distinctiveness of a business with which the name is connected in a number of cases, but unless care was taken this could mark an unacceptable extension of the law of passing off.
54. ' In a judgment of Hon'ble Indian Supreme Court in the case of Midas Hygiene Industries (P) Ltd. And another v. Sudhir Bhatia and others (2004) 3 SCC 90. The court observed that the law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.
55. ' In a judgment of the Delhi High Court in the case of Madhubhan Holiday Inn v. 47 Holiday Inn Inc.
56. 100 (2002) DLT 306 (DB). The Division Bench of the High Court observed as under:-- "...The adoption of the words "Holiday Inn" by the appellants is ex facie fraudulent and mala fide from the very inception. The words "Holiday Inn" have been adopted by the appellant to ride on the global reputation of respondent. The appellant was actuated by bad faith and dishonest motive. In the facts and circumstances, the learned Single Judge was fully justified in granting the injunction and decreeing the suits in order to protect the commercial goodwill and to ensure that the global business reputation of the respondent is not exploited by the appellants in a clandestine manner."
57. ' Where a trade/business name has acquired a reputation such as it has become a household name. In such a case anyone who uses the identical name albeit in a different field of business altogether would be guilty of passing off by cashing in on the reputation and goodwill of the business of the plaintiff and would be restrained.
58. ' In the judgment of Harrodian School Limited (supra). The Court observed as under:-- "The absence of any common field of activity: This is of particular significance in the present case.
59. The judge correctly directed himself as to the law; he cannot be faulted in the way in which he applied it. It is not merely that the plaintiffs have never run a school and have no established reputation for doing so, or even that the nature of the parties respective businesses are as dissimilar as can well be imagined. It is rather that the commercial reputation for excellence as a retailer which the plaintiffs enjoys would be regarded by the public as having no bearing upon their ability to run a school. Customers of the plaintiffs would be surprised to learn that Harrods had ventured into the commercial theatre, they would. 1 think, be incredulous if they were told that Harrods had opened a preparatory school."
60. ' In the judgment of the case of Mahendra & Mahendra Paper Mills Limited v. Mahindra & Mahindra Limited (2002) 2 SCC 147 wherein the honourable Indian Supreme Court observed as under "Judging the case on hand on touchstone of the principles laid down in the aforementioned decided cases. It is clear that the plaintiff has been using the word "Mahindra" and "Mahindra & Mahindra" in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name "Mahindra" with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs' group of companies. Such user may also effect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiffs' claim of 'passing off action' against the defendant will be accepted or not has to be decided by the Court after evidence is led in the suit.
61. Even so far the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial Court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant company which is yet to commence its business from utilizing the name of 'Mahindra' or `Mahindra & Mahindra' for purpose of its trade and business.
62. Therefore, the Division Bench of the High Court cannot be faulted for confirming the order of injunction passed by the learned single Judge."
63. ' In a judgment of honourable Indian Supreme Court in the case of Bata India Limited v. Pyare Lal & Company, Meerut City and others AIR 1985 All 242 the Allahabad High Court observed that considering the plea of passing-off or enabling others in pass off mattresses, sofa cushions and other articles associating them with the name of "Bata" in any manner or form held that:-- "The name Bata" was well known in the market and the user of such a name is likely to cause not only deception in the mind of an ordinary customer that may also cause injury to the plaintiff Company. The fact that the plaintiff was not producing form was not enough to hold that there could be no passing off action in respect of the user of the name 'Bata' to the products marketed by the defendants. The use of the name or mark 'Bata' by the defendants is indicative of their intent."
64. ' In a judgment of Delhi High Court in the case of Diamler Benz Aktiegesellschaft (supra) wherein the Court observed as under:- ".The boxes in which the defendant sells its undergarments for men and the representation thereon is of a man with his legs separated and hands jointed together above his shoulder, all within a circle, indicate the strong suggestion of the link between the three pointed star of "Mercedes Benz" car and undergarment's sold by the defendant. In my view, this cannot be considered to be a "honest concurrent user" by the defendant of the above said symbol."
65. ' The Court also observed in the said case that "There are marks which are different from other marks. There are names which are different from other names. There are names and marks which have become household words "Benz" as name of a Cat would be known to every family that has even used a quality car. The name "Benz" as applied to a car, has unique place in the world. There is hardly one who is conscious of existence of the cars "automobiles, which would not recognize the name "Benz" used in connection with cars. Nobody can plead in India, where "Mercedes Benz" cars are seen on roads where "Mercedes" have collaborated with Tatas, where there are Mercedes Benz Tata trucks have been on roads in very large number, (known as Mercedes Benz Trucks, so long as the collaboration was there), who can plead that he is unaware of the word "Benz" as used with reference to car or trucks.
66. ' In my view the Trade Mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends worldwide. By no stretch of imagination can it be said that use for any length of time of the name "Benz" should be not observed to "The Court further observed as under:-- "
67. However if despite legal notice, any one big or small, continues to carry the illegitimate use of a significant worldwide renowned name/mark as is being done in this case despite notice dated 9- 12-1989, there cannot be any reason for not stopping the use of a world reputed name. None should be continued to be allowed to use a world fame name to goods which have no connection with the type of goods which have generated the worldwide reputation.
68. ' In the instant case, "Benz" is a name given to very high priced and extremely well engineered product. In my view, the defendant cannot dilute that by user of the name "Benz" with respect to a product like under-wears".
69. ' In Harrods Limited (supra) where the Court observed as under:-- Messrs Harrods Limited, a long established and well known Company whose business included a banking department but who were precluded by their Articles of Association from carrying on a moneylenders business brought an action against R. Harrod Limited, a Company registered in August, 1923, with the object of carrying on the business of a registered moneylender. The plaintiffs applied for an interlocutory injunction to restrain the Defendant Company, its servants and agents until judgment of further order from carrying on business under the name R. Harrod Limited or under any name comprising the word "Harrod" likely to mislead the public into the belief that the Defendant Company was connected with the Plaintiff Company or that the business of the Defendant Company was the same as or in any way connected with the business of the Plaintiff Company."
70. ' In a case of the Hon'ble Indian Supreme Court in the case Godfrey Philips India Limited v. Girnar Food & Beverages (P) Limited (2204)5 SCC 257 where this Court observed as under:- "Without going into the question whether the conclusion arrived at by the Division Bench that the trade mark is descriptive is correct or not, it appears to us, and as is conceded by both parties before us, that the enunciation of principle of law with regard to the protection available even in respect of the descriptive trade mark was wrong. A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from particular source."
71. ' In a judgment of Dehli High Court in the case of Edge (India) Private Limited and another v.
72. Shailesh Gupta 55 and another 98 (2002) DLT 499 the Court observed that:- "It was sought to be submitted by the counsel appearing for the .Defendant that the word 'Naukri', would be descriptive word as it denotes and describes the nature of work and business offered to the plaintiff. The plaintiff has chosen to use the domain name Naukri. Corn', which is descriptive of the business, the plaintiff carries on i,e, it gives information to its subscribers about the availability of jobs and employment in various establishments concern and offices and the manner in which request for employment could be made and therefore, it is a service offered by the plaintiff relating to job opportunity and situation and giving guidance thereto and therefore, the same is a descriptive word. It is also a settled law that the distinction between the generic word and descriptive word is very thin and such word could also assume a secondary meaning by its long user by a person, who establishes his reputation in the market.
73. ' If a product of a particular character or composition is marked in a particular area or place under a descriptive name and gained a reputation thereunder, that name which distinguished it from competing products of different composition, the goodwill in the name of those entitled to make use of it there was protection against deceptive use of the name of competitors. In Erven Warnink by 56 and others v. J Townend & Sons (Hull) Ltd., and (Ors. Reported in (1979) 2 All ER. It was held that whether the name demoted a product made from ingredients from a particular locality or whether the goodwill in the name was the result of the produce being made from particular ingredients regardless of their provenance, since it was the reputation that the produce itself had gained in the market by reason of its recognizable and distinctive questions which had generated the relevant good will. In the said case, the landmark was the name of a spirit based product called ADVOCAAT. The said product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their wine based product was of the same type as ADVOCAAT "
74. ' In the judgment of House of Lords in the case of Office Cleaning Services Limited v. Westminister Office Cleaning Association 1944 (2) All E.R. 269, where the court observed that the word 'office cleaning' was held to be descriptive word, for it is a descriptive of the business they carry on. It was held that the plaintiff could assume or establish monopoly on the said word only when they show that they have acquired a secondary or subsidiary meaning. The aforesaid legal principle is well settled and even the counsel for the defendant did not dispute the aforesaid position.
75. ' In Halsbury's Laws of England, Volume 48 Fourth edition at page 190 it is stated that is possible for a word or phrase which is wholly descriptive of the goods or services concern, to become so associated with the goods or services of a particular trader that its use by another trader is capable of amounting to a representation that his goods or services are those of the first trader and that although the primary meaning of the words is descriptive, they have acquired a secondary meaning as indicating the products of a particular trader.
76. ' In McCarthy on 'Trademarks and Unfair Competition Vol.2 3rd Edition in para 12.5 (a) it is stated that in order to obtain some form of relief on a "passing off" claim, the user of a generic term prove some false or confusing usage in the newcomer above and beyond their use of generic name.
77. ' The contention of the defendant is that adjectives are normally descriptive words and nouns are general word. However, McCarthy has said that the said "part of speech" test does not accurately describe the case-law results; therefore, such a criteria cannot be accepted as a safe and sound basis to ascertain as to whether a particular name is generic or descriptive. Besides, even assuming that the said word is generic yet if it is found by the court that such a mark has attained distinctiveness and is associated with the business of the plaintiff for considerable time and thereafter the defendant adopts a similar word as one of the two marks to induce innocent internet users to come to the website of the defendant, which establishes dishonest intention and bad faith would the court still be not granting injunction to protect the business of the plaintiff? The answer to the said question has to be an emphatic "No". User of similar word by a competitor coupled with dishonest intention and had faith would empower a court to restrain such user/misuser in the equitable justice to the aggrieved party.
78. ' In Kamal Trading Co., Bombay and others v. Gillette U.K. Limited [1988] IPLR 135 wherein it has been observed that:-- ... ... It was submitted that the goods manufactured by the plaintiffs and the defendants are different in nature; the plainaffs manufacture blades, while the defendants manufacture "tooth brushes". The goods of the plaintiffs and the defendants are not available in the same shop and the customers of these goods are different. The goods sold by the plaintiffs are blades and fall in class 8, while those of the defendants are tooth brushes which fall in class 21. Relying on these circumstances, it was merit in this submission. In the first instance, the assumption of the learned counsel that the class of customers for purchase of safety blades and tooth brushes are different and these goods are not available in the same shop is wholly misconceived. We take judicial notice of the fact that these goods are available in every shop including a small shop and each and every person is required to purchase these goods. ...
79. ' In Honda Motors Company Ltd. v. Charanjit Singh and others (1015 2002) DLT 358, the court observed that:- ' In the present case the plaintiff's mark HONDA has acquired a global goodwill and reputation. Its reputation is for quality products. The name of HONDA is associated with the plaintiff's especially in the field of automobiles and power equipments on account of their superior quality and high standard. The plaintiff's business or products under the trade mark HONDA has acquired such goodwill and reputation that it has become distinctive of its products and the defendants' user of this mark for their product "Pressure Cooker" tends to mislead the public to believe that the defendants business and goods are that of the plaintiff. Such user by the defendants has also diluted and debased the goodwill and reputation of the plaintiff. As observed above, the concept of passing off is a tort and with the passage of time, with the developing case-law it has changed and now the two traders need not necessarily operate in the same field so as to suffer injury on account of the goods of one trader being passed off as those of the other.
80. ' With the changed concept of passing off action, it is now not material for a passing off action that the plaintiff and the defendant should trade in the same field. I find that some business is truly international in character and the reputation and goodwill attached to them cannot in fact be held being international also. The plaintiff's business is of international character and obviously the reputation and goodwill attached to its trade mark HONDA is also of international repute. The plaintiff's trade mark HONDA which is of global repute, is used by the defendants for a product like pressure cooker, to acquire the benefit of its goodwill and reputation so as to create deception for the public who are likely to buy defendant's product believing the same as coming from the house of HONDA or associated with the plaintiff in some manner. By doing so, it would dilute the goodwill and reputation of the plaintiff and the wrong committed by the defendants would certainly be an actionable wrong and the plaintiff is within its rights to ask for restraint against the defendants from using its mark HONDA for their products."
81. ' In the case of Messrs Bengal Waterproof Limited v. Messrs Bombay Waterproof Manufacturing Company and another (1997) 1 SCC 99 wherein it has been observed that:-- "... ... It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Whereever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved ... ..."
82. ' In Prakash Roadline Limited v. Prakash Parcel Service (P) Ltd. 48 (1992) Delhi Law Times 390 the Delhi High Court held that:-- ' .....Merely because no action is taken against certain other parties, it does not mean that the plaintiff is not entitled to take action against the defendant. The other parties may not be affecting the business of the plaintiff. They may be small-time operators who really do not matter to the plaintiff. Therefore, the plaintiff may not choose to take any action against them. On the contrary the plaintiff feels danger from defendant in view of the fact that the defendant's promoters are the ex-Directors/employees of the plaintiff who are fully in the know of the business secrets of the plaintiff Therefore, the mere fact that the plaintiff has not chosen to take any action against such other parties cannot disentitle the plaintiff from taking the present action. This contention is, therefore, prima fade without any merit and is rejected."
83. ' At the conclusion the Hon'ble Supreme Court in the aforesaid judgment held that:-- "If the factors for justifying absolute protection as per 'absolute protection for common words have been made out then it would ipso facto entitle the plaintiff to protection against the world at large.
(a) The protection would be given against any particular defendant if the plaintiff's name has acquired a secondary meaning and the defendant uses the name in a common field of activity. i,e, where there are common purchasers. However, the court may decline to grant the relief if such name is descriptive of the defendant's product and not just a name unconnected with the defendant's product.
(b) The protection would be granted qua a defendant with relation to even an unrelated product where the tests of dishonest adoption are satisfied and the defendant will be restrained from cashing in or profiting from the plaintiff's name.
84. ' We have heard the detailed and comprehensive arguments advanced by the learned counsel for the parties. We place on record our appreciation for the above assistance provided by the learned counsel for the parties in this case. We have also carefully examined relevant decided Indian, English and American cases.
85. ' On consideration of the totality of facts and circumstances of the case, we clearly arrive at the following findings and conclusions:
(a) The respondent company's mark 'Eanadu' has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. The respondent company's products and services are correlated, identified and associated with the word `Eanadu' in the entire State of Andhra Pradesh. 'Eanadu' means literally the products or services provided by the respondent company in the State of Andhra Predesh. In this background the appellant cannot be referred or termed as an honest concurrent user of the mark 'Eanadu';
(b) The adoption of the words 'Eanadu' is ex facie fraudulent and mala fide from the very inception.
86. By adopting the mark `Eanadu' in the State of Andhra Perdesh, the appellant clearly wanted to ride on the reputation and goodwill of the respondent company;
(c) Permitting the appellant to carry on his business would in fact be putting a seal of approval of the court on the dishonest, illegal and clandestine conduct of the appellant;
(d) Permitting the appellant to sell his product with the 'Eandu' in the State of Andhra Pradesh would definitely create confusion in the minds of the consumers because the appellant is selling Agarbathies marked 'Eanadu' as to be designed or calculated to lead purchasers to believe that its product Agarbathies are in fact the products of the respondent company. In other words, the appellant wants to ride on the reputation and goodwill of the respondent company. In such a situation, it is the bounden duty and obligation of the court not only to protect the goodwill and reputation of the respondent company but also to protect the interest of the consumers;
(e) Permitting the appellant to sell its product in the State of Andhra Pradesh would amount to encouraging the appellant to practice fraud on the consumers;
(f) Permitting the appellant to carry on his business in the name of 'Eanadu' in the State of Andhra Pradesh would lead to eroding extraordinary reputation and goodwill acquired by the respondent company over a passage of time;
(g) Appellant's deliberate misrepresentation has the potentiality of creating serious confusion and deception for the public at large and the consumers have to be saved from such fraudulent and deceitful conduct of the appellant;
(h) Permitting the appellant to sell his product with the mark 'Eenadu' would be encroaching on the reputation and goodwill of the respondent company and this would constitute invasion of proprietary right vested with the respondent company.
(i) Honesty and fair play ought to be the basis of the policies in the world of trade and business.
87. ' The law is consistent that no one can be permitted to encroach upon the reputation and goodwill of other parties. This approach is in consonance with protecting proprietary rights of the respondent company."
88. ' I have heard the learned counsel for the parties at length, perused the pleadings and material filed along with them which is available on record, and examined the case-law cited by the learned Counsel, except the proceeding after which I am of the opinion that undoubtedly the plaintiff is the registered proprietor of the trade mark "SHIELD + DEVICE" of flower (label) in respect of goods falling in class-07 specified above of the classification of goods Since 1974 in Pakistan and the defendants and their principal are not. It is settled law of the superior court of Pakistan that the proprietor of registered trademark shall have exclusive right to use the same in relation to goods specified therein, and has got the right to restrain every and all persons from using the registered trade mark. Section 40 of the Trade Marks Ordinance, 2001 further states that a trade mark shall be deemed to be infringed by any other person, who without the authority of the registered user, uses the mark in the course of trade which is identical with the trade mark, which is registered, and is used in relation to goods or services for which the trade mark is registered or is so deceptively similar to the trade mark and is used in relation to goods or services for which the trade mark is registered, that there exists a likelihood of confusion on the part of public, which includes the likelihood of association with the trademark. The Registration certificates filed by the plaintiff along with plaint as annexure of the file show that the plaintiff filed the said applications. The trade mark applications of the plaintiff were examined by the Trade Marks Registry to ensure that the same meet the requirements of sections 9 and 10 of the Trade Marks Act, 1940 as was in force at that time. After acceptance, the trade marks were published in the Trade Marks Journal to enable the general public to file objections, if any, to their registrations, and no oppositions to their registrations having been filed, the Trade Marks Registry registered the trademark under the aforesaid registration numbers and from the aforesaid dates in class 07 and issued Registration Certificates to the plaintiff on different dates. The registrations conferred upon the plaintiff certain proprietary rights of User in respect of aforesaid two trademarks which more elaborately described in section 39 of the Trade Marks Ordinance, 2001 which is reproduced herein below for the sake of convenience "39. Rights conferred by registration---(1) A registered trade mark shall be personal property.
(2) The proprietor of a registered trade mark shall have exclusive right in the 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 force, 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 extent to trade marks registered under the Trade Marks Act, 1940 (V of 1940)."
89. ' Thus, it can very easily be said that the plaintiff acquired the exclusive right to use the aforesaid two registered trademarks in different Classes including Class 29 in respect of the goods specified therein, thereby prohibiting and restraining every and all persons from using the plaintiffs aforesaid registered trademarks, and the aforesaid provision of law further declares that the said right shall be deemed to be infringed by any other person, who without the authority of the plaintiff uses any mark identical with the plaintiff's mark so resembling it which is likely to deceive or cause confusion in the course of trade in relation to goods in respect of which the plaintiff's mark "SHIELD" and "SHIELD" + Device (label) is registered. The legal affects of the registration and its renewal are contemplated by sections 43 and 44 of the Trade Marks Ordinance, 2001, which read as follows:-- "(43) Registration to be prima facie evidence of validity.---In all legal proceedings relating to a trade mark registered under this Ordinance or under the Trade Marks Act, 1940 (V of 1940), the fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.
(44) Registration to be conclusive as to validity after five years.---In all legal proceedings relating to registered trade mark, the original registration of the trade mark shall, after the expiration of five years from the date of its original registration, be taken to be valid in all respects of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof. "
90. ' By whatever is contemplated by the aforesaid two sections of the Trade Marks Ordinances, 2001 it is crystal clear that in all legal proceedings relating to a registered trade mark, the Registration certificate of the mark is a prima facie evidence that the registration is valid and after the expiration of the period for which the registration is valid, its subsequent renewal, registration shall be taken to be valid and conclusive in all respects.
91. ' There is no cavil with regard to the fact that on registration and subsequent to that on renewal for a further period of 15 years of the Mark "SHIELD" and "SHIELD"+ Device (label) in their name, the plaintiff acquired exclusive right to use the same in class-29 in respect of goods namely; oil filters, air filters, fuel filter, silicon and gaskets. The plaintiff by virtue of the aforesaid registrations, has the right to restrain all persons from using any mark similar to or identical with or resembling the trademark SHIELD+DEVICE (label) which is likely to deceive or cause confusion of the course of trade that the goods of the defendants have been produced by the plaintiff. Therefore, the plaintiff has a right to obtain an injunction against the person who infringes the registered mark of the plaintiff on production of the registration certificate. I am fortified in my view by the Division Bench judgment of this Court reported in 2004 CLD 315 supra.
92. ' INFRINGEMENT AND DILLUTION ' Even otherwise the plaintiff is doubly protected by virtue of whatever is contemplated by section 40(4)(b) of the Trade Marks Ordinance, 2000, which provides protection to the proprietor of the registered Trade Mark against infringement by way of dilution when his Trade Mark is used even in relation to goods and service which are not similar to those for which the Trade Mark is registered.
93. Where the Trade Mark is well known Trade Mark or has reputation in Pakistan and the use of the mark is without due process and to take unfair advantage of distinctive character and reputation of the plaintiff's Trade Mark. It is admitted fact that the plaintiff's Trade Mark SHIELD+DEVICE SHIELD is well known Trade Mark in Pakistan and has repute of house hold Trade Mark in Pakistan since 1974.
94. It is also an admitted position that the use of the plaintiff's Trade Mark by the defendant on his product, though the field of business activity is different, is without due cause and is being used in order to take unfair advantage of distinctive character and reputation of plaintiff's. Trade Mark SHIELD+DEVICE (label), which indeed is detrimental to the distinctive character of plaintiff's Trade Mark SHIELD+DEVICE (label), therefore I am of the considered view that:--
(a) The plaintiff's mark SHIELD has acquired extraordinary reputation and goodwill in Pakistan, which is well known mark in Pakistan since 1974. The plaintiff's product and service are co-related identical and associated with word SHIELD in Pakistan since 1974. The word SHIELD literally means the products or services provided by the plaintiff in Pakistan and in this background the defendant cannot be referred or termed as the honest concurrent user of Trademark SHIELD +DEVICE (label);
(b) The adoption of word SHIELD and DEVICE OF SHIELD by the defendant is ex facie fraudulent and mala fide from the very inception since the month of January 2014, by adopting the mark SHIELD and the DEVICE OF SHIELD in Pakistan the defendant clearly wanted to ride on the reputation and goodwill of the plaintiff;
(c) Permitting the defendant to carry on his business by using the plaintiff's Trade Mark SHIELD+DEVICE OF SHIELD (label) in fact would amount to putting a seal and approval of the Court on the dishonest, illegal and clandestine conduct of the defendant.
(d) Permitting the defendant to sell his product with Trade Mark SHIELD+DEVICE OF SHIELD (label) in Pakistan would definitely create confusion in the minds of the consumer because the defendant is selling vegetable ghee, cooking oil and banaspati product under Trademark Mark SHIELD to be designed or calculated to lead the general public to believe that defendant's aforesaid product are in fact products of the plaintiff company. In such situation it is bounden duty and obligation of the Court to protect the goodwill and reputation of the plaintiff but also to protect the interest of the consumers;
(e) Permitting the defendant to sell its product in Pakistan would amount to encouraging the defendant to practice fraud on the consumer;
(f) Permitting the defendant to carry out business in the name of SHIELD+DEVICE OF SHIELD (label) in Pakistan would lead to eroding, and diluting extraordinary reputation and goodwill acquired by the plaintiff over a passage of several decades;
(g) Defendant's deliberate misrepresentation has potentiality of creating serious confusion and deception for the public at large and the consumers have to be saved from such fraudulent and deceitful conduct of the defendant;
(h) Permitting the defendant to sell his product with the mark SHIELD+DEVICE OF SHIELD (label) would be encroaching on the reputation and goodwill of the plaintiff and this would constitute invasion of the proprietary right vested in of the plaintiff company in respect of its Trademark "SHIELD".
95. 'I am in agreement with the observation made by the Hon'ble Indian Supreme Court in the aforesaid case. The Law is consistent and no one can be permitted to encroach upon the reputation and good will of the other party. This approach is in consonance with the proprietary rights of the plaintiff company.
96. ' In view of above I am of the considered view that the defendant is guilty of committing act of infringement as well as passing of and infringement by dilution of the Trade Mark SHIELD+DEVICE OF SHIELD (label) which is admittedly registered by the plaintiff in different classes of goods, including but not limited to class 29 of the classification of goods and services.
97. ' In view of the above, I am further of the considered opinion that the plaintiff has made out a good prima facie case for grant of temporary injunction and the balance of convenience is also in favour of grant of injunction in favour of Trademark "SHIELD" + device (label) and trademark "SHIELD" registered under several registration numbers and renewed up-to-date, and admittedly the plaintiff is likely to suffer an irreparable loss if the defendants are. Allowed to continue to infringe the aforesaid trade mark of the plaintiff. Consequently, this application is allowed and interim order granted on 6-6-2014 is hereby confirmed and the defendants are restrained by way of temporary injunction from selling, manufacturing, importing, exporting and offering for sale, advertising or distributing directly or indirectly the Trademark SHIELD of HEALTH SHIELD+ DEVICE OF SHIELD or any other mark which is identical with or deceptively similar to the plaintiff's registered trademarks in different classes the dominant feature of which is SHIELD+ DEVICE OF SHIELD and are further restrained from using any trademark colourable imitation of which closely and deceptively similar with the plaintiff's trademarks "SHIELD" and "SHIELD" + device (label).
98. This may, however, be clarified that the observations in this order are only for the purpose of deciding the application for temporary injunction and shall have no bearing on the merits of the present suit or the rectification proceedings pending before the Trade Marks Registry, which shall be decided after recording evidence of the parties. Order accordingly.