1. ' SYED SAEED-UD-DIN NASIR, J.---By this order I intend to dispose of C.M.A. 7020 of 2014, which is an application under Order XXXIX, Rules 1 and 2, read with section 151, C.P.C., wherein the plaintiff has sought restraining order against the defendants, their salesmen, dealers, agents, distributors, wholesalers, retailers and stockiest from selling or offering for sale, oil and fuel filters and brake oil under identical trade mark/copy right "SAKURA" and from infringing the plaintiff's registered Trade Mark "SAKURA" or by using of any deceptive and confusingly similar Trade Mark or otherwise from passing off or enabling others to pass off their goods/products under the said Trade Mark without clearly distinguishing their products/goods from those of the plaintiff by use of trade Mark "SAKURA" or by use of any Trade Mark or colorable imitation which closely resembles the plaintiff's Trade Mark "SAKURA" and "SAKURA" plus flower device (label), during the pendency of the suit.
2. ' Mr. Munawar Ali, learned counsel appearing for the plaintiff has argued that:-- ' The plaintiff is proprietor of Asia Motor Co. Having its Business at G-32 Ruby Plaza, Preedy Street, Saddar, Karachi and operates through its affiliates and stockists all over Pakistan. The plaintiff does business with the name "Asia Motor Co." and the plaintiff is registered Taxpayer.
3. ' Plaintiff is the proprietor in Pakistan and kingdom of Thailand of Registered Trade Mark/Copy Right by the brand name of "SAKURA" under various numbers in Class 7 in respect of goods like Air Filter, Oil Filter, Fuel Filter and Radiator for cooling the engine and all these goods as referred to the Motor Parts Labeled with the Trade Mark of "SAKURA" being the proprietor of the same.
4. ' That the defendants are persons doing business in auto market and they are not only close relatives of each other but also doing business in a connected manner and all three defendants have joined hands and violating the registered Trade Mark Rights of the plaintiff in respect of trademark "SAKURA" Device of a flower (label).
5. ' Mr. Munawwar Ali Advocate, learned counsel for the plaintiff further submitted that in order to promote sale of oil, air and fuel filters, silicon and gaskets and to distinguish the same from the products of others, the plaintiff adopted and got approved from the concerned authority copy right and trademark consisting of word "SAKURA" and "SAKURA" label of flower in special calligraphy in the year 1989 and obtained registered Trade Mark, "SAKURA" in Pakistan under Trade Mark No.116186 in 1992 in respect of, "Oil, air and fuel filters and radiators for codling engine being class 7, and "SAKURA" label device of flower under Trade Mark No.1223294 in 1993 in Class 7 under the then Trade Marks Act, 1940.
6. ' Before applying for registration of Trade Mark/Copy Right "SAKURA" in Pakistan, the plaintiff carried out thorough search in the local market to find out whether goods under the Trade Mark "SAKURA" were available in the market and also the plaintiff carried out search in the records of Trade Marks Registry and finding that no identical or similar Trade Mark is available in local market nor registered in the name of any person available in market with the Trade Marks Registry, the plaintiff applied for the registration of the said Trade 'Mark "SAKURA" and' "SAKURA" label device of flower in class seven as aforesaid.
7. 'The learned counsel for the plaintiff further submits that as proprietor of Trade Mark "SAKURA" the plaintiff acquired a substantial amount of goodwill under the said Trade Mark "SAKURA" and its products under the plaintiffs "SAKURA" Trade Mark have been sold in substantial Quantity and have been widely advertised throughout Pakistan by means of posters, pamphlets, sign boards, personal canvassing and advertisement. By virtue of that long and extensive use of the Trade Mark "SAKURA" throughout Pakistan, the plaintiff and its affiliates acquired and enjoyed very valuable reputation and goodwill all over Pakistan in respect of Trade, Mark, "SAKURA". Registration of plaintiff Trade Mark "SAKURA" and "SAKURA" label device of flower under Trade Mark No.116186 (1992) in Clash 7 and Trade Mark No. 122294 (1993) in Class 7 are valid and subsisting and have been renewed for further period of fifteen years.
8. ' The said Trade Mark "SAKURA" in Pakistan is associated exclusively with plaintiff or its affiliates by the general purchasing public and the trade/Traders who recognize and distinguish the said goods by the said Trade Mark "SAKURA" of the plaintiff. The Trade Mark "SAKURA" has gained wide publicity and its filters are known for their quality and standard and people approach retailers for purchasing the filters of "SAKURA" brand, reposing trust and confidence in their quality.
9. ' The goods bearing the Trade Mark "SAKURA" and "SAKURA" label device of flower of the plaintiff have at all-time been and continue' to remain available in the market all over the country for sale to the general public, stockiest, dealers and traders. The products of the plaintiff under the Trade Mark "SAKURA" and "SAKURA" label device of flower are stored and displayed for sale by stockist and displayed for sale by stockist and retailers of auto spare parts all the markets of Pakistan and the general public recognize the goods of the plaintiff with reference to this popular Trade Mark "SAKURA".
10. ' The products of the plaintiff labeled under the Trade Mark, "SAKURA" are marketed throughout the country in a distinctive packing comprising carton or packing of distinctive get-up, colour scheme, letterings and designs.
11. ' The products of the plaintiff under the Trade Mark "SAKURA" have been sold in substantial quantity and have been widely advertised throughout Pakistan. By virtue of superior quality of products and long and extensive use of the Trade Mark, "SAKURA" and SAKURA" label device of flower throughout Pakistan, the plaintiff has earned and enjoys valuable reputation and goodwill all over Pakistan in respect of the said Trade Marks. Such reputation and goodwill is at all relevant times subsisted in Pakistan and the goods of the plaintiff under the said trademarks remained always available for sale to the general public, including traders, dealers in auto spare parts.
12. ' Due to long extensive use of Trade Mark "SAKURA" and "SAKURA" flower device in the respect of oil, air and fuel filters and brake oil and also due to superior quality of products the plaintiff has acquired valuable reputation and goodwill in respect thereof. By virtue of superior quality of product and distinctive features of the Trade Mark, the goods under the Trade Mark "SAKURA" denotes and connect the goods of the plaintiff exclusively and none else.
13. ' Not only in Pakistan but the "SAKURA" filter is also registered as brand of plaintiff in other Countries such as Thailand and Korea. Mr. Munawar Ali learned counsel for the plaintiff further submits that on 4-1-2014 the plaintiff discovered that the defendants have commenced marketing and selling oil, air and fuel filters and brake oil etc. Under identical Trade Mark "SAKURA" with mala fide intention to ride upon the reputation and goodwill of the plaintiff in order to make wrongful gains by deceiving and misleading the general public into believing that the goods of the defendants are the goods of the plaintiff or the goods of the defendants emanate from the plaintiff or to convey an impression to the traders, dealers, retailers, customers that the defendants have some business affiliation and/or the goods have been produced and manufactured in accordance with the prescribed standards and specifications and under supervision of the plaintiff. The defendants have intentionally and malafidely adopted identical Trade Mark to create confusion and deception in the course of Trade. The defendants have thus committed infringement of Trade Mark of the plaintiff. The plaintiff purchased some products of Air filter from the defendant No.1 through his representative and the fact was confirmed to the plaintiff that the defendants were using the trade mark "SAKURA" which is registered in the plaintiff's name and thus not only, misleading the general public but also causing huge financial loss to the plaintiff due to the violation of the trade mark rights of the plaintiff. A packing of the Air filter purchased by the plaintiff through his representative from the defendant No.1 's shop along with challan/Bill/receipt dated 21-3-2014 issued by the defendant No.1 are annexed to the plaint as Annexures F to F/1 appearing at Pages 81 and 83 of the suit file.
14. ' The packing of the Air filter purchased from defendants shop clearly demonstrates that the calligraphy, design, wording/ inscription/letterings, colour scheme, distinctive getup of the said packing is same as of the plaintiff's registered trade mark, thus the defendants, though well aware of the factum of plaintiff being owner of registered trade mark, "SAKURA", are continuously violating the trade mark rights of the plaintiff for which defendant are liable to account and stop sale of products of plaintiff's Trade Mark.
15. ' The defendants have also fixed sign boards on their shops showing the "SAKURA" brand name and offering the potential customers the products of "SAKURA" filters. Plaintiff has also taken photographs showing that the goods of "SAKURA" brand are lying in the shops of the defendants meant for sale to general public.
16. ' The learned counsel for the plaintiff further submits that the plaintiff personally approached the defendants and request them to stop the illegal sale of "SAKURA" Air filters the defendants at first assured the plaintiff that they would no more violate the trade mark rights of the plaintiff, however, subsequently they refused to honor their commitment and continue to violate the registered trade mark right of the plaintiff.
17. ' In order to substantiate his arguments, the learned counsel for the plaintiff has relied upon section 40(1) of the Trade Marks Ordinance, 2001, which is reproduced as under:- "Section 40 Infringement of registered trade mark (1) "A person shall infringe a registered trade mark if such person uses in the course of trade a mark, which identical with the trade mark in relation to goods and services which are identical with those for which it is registered."
18. ' The learned counsel for the plaintiff further submits that the trademark of the plaintiff consisting of word "SAKURA" and "SAKURA" + device of flower (label) are registered under Trade Mark registration No.116186 and 122894 in Class 7 under the then Trade Marks Act, 1940 and that since July 1992 and October 1993 respectively, and that the said two trademark registrations are still valid and subsisting the name of the plaintiff till today and renewed for a further period of 15 years. The plaintiff is .The sole proprietor of the aforesaid two trademarks in Pakistan to the exclusion of anyone including the defendants. The learned counsel for the plaintiff submits that in order to give legal cover to their act of infringement the defendant's principal PT SALAMAT SAMPURNA tbk Indonesia have applied on 14-4-2014 for registration of trademark "SAKURA" + Flower device (label) in Class 7 in Pakistan in respect of the goods identical with those of the plaintiff.
19. ' The learned counsel for the plaintiff submitted that PT SELAMAT SEMPURA tbk, Indonesia, of which the defendants claim to be dealers and distributors had applied for the registration of trade mark "SAKURA" under No.144461 in Class-7 in Pakistan on 20-10-1997 in respect of Air Oil and fuel filters, which was published in the Trade Marks Journal, (No.588) January 1, 2000 for inviting opposition, if any, and upon plaintiff's filing opposition to the same, the said "PTSELAMAT SEMPURA Tbk Indonesia, abandoned the aforesaid application and did not contest the opposition.
20. ' The learned counsel for the plaintiff further argued that no opposition was filed either by the defendants or PT SELAMAT SEMPURA Tbk, Indonesia of which the defendants claim to be sole dealers, to the registration of the aforesaid trademarks of the plaintiff when the same were published in the Trade Marks Journal and no opposition having been received on the advertisement as aforesaid, the Trade Marks Registry, IPO Govt. Of Pakistan registered the marks in class 7 and issued the certificates of registration to the plaintiff. The learned counsel for the plaintiff submitted that now in order to give legal cover to their acts of infringement and passing off the defendants have convinced PT SELAMAT SEMPURA Tbk Indonesia to file yet other trademark applications in Pakistan for registration of trademark "SAKURA" Device (Label) in classes of 7 and 12, which appear at Annexures D/B and D-14 to the counter affidavit filed by the defendants. The learned counsel for the plaintiff further submits that on 23rd May, 2014, the said PT SELAMAT SEMPURA Tbk, has applied for the Rectification of Trade Marks SAKURA No. 163352 in class 12, SAKURA No. 122294 in Class 7 on Form TM-26 at the Trade Marks Registry, belonging to the plaintiff.
21. ' The learned counsel for the plaintiff has relied upon the following judgments to substantiate his case for the grant and confirmation of temporary injunction, the relevant portions of which are reproduced as under:-- ' 2004 CLD 315 (Naseem Ahmed v. Samuddin Remzan Khan and 2 others) (a) Trade Marks Act (V of 1940)---Registration of trade mark---Right conferred by registration---Scope and extent-- principles---Application for registration, in the present case, was apparently examined by the Trade Mark Registry to ensure that the same meet the requirements of registration and that its registration was not prohibited under Ss. 8 and 10, Trade Marks Act, 1940--- ---User on the said registration, acquired the exclusive right to use the registered trade mark in Class 16 in relation to the goods specified, thereby prohibiting and restraining every and all persons from using registered trade mark S.21 Trade Marks Act, 1940 further declared that the said right shall be deemed to be infringed by any other person who, without the authority of the registered user, used any mark identical with it or so resembling it which was likely to deceive or cause confusion in the course of trade in relation to the goods in respect of which registered user's trade mark was registered--- ---Registration certificate of the trade mark; was a prima facie evidence, in all legal proceedings relating to the relevant trade mark, to the effect that the registration was valid and after the expiration of the seven years from the date of registration shall be taken to be valid and conclusive in all respects unless such registration was obtained by fraud or the trade mark offended against the provision of S.8, Trade Marks Act, 1940---Held, after the registration of the trade mark of the applicant, by virtue of the Registration certificate and its renewal the registration of the trade mark became valid and conclusive in all respects unless it was proved to have been obtained by fraud or offended against S.8....
22. ' 1986 MLD 886 Ghulam Muhammad Dossal & Co. v. Vulcan Company Ltd. And another ----Civil Procedure Code, 0. XXXIX, Rr. 1, 2, 5.151---Infringement of registered trade mark---Grant of injunction against the person infringing said trade mark---Registered user of said trade nark had the right to obtain an injunction against the person who infringed his registered trade mark in the manner prescribed, merely, on production of the Registration Certificate under S. 75, Trade Marks, Act, 1940--- ---Civil Procedure Code, 0. XXXIX, Rr. 1 & 2---Registration of trade mark---Saving of vested right of registered, user---Grant of interim injunction to the registered user---Case put up by the objector to the registration of trade mark was that the trade mark in question did not originally belong to the registered user as the same as first used by a Foreign concern who got the same registered in its name in Taiwan in 1976 and in 1977 and that the registered user in Pakistan had been importing the goods bearing the said trade mark from the said concern of foreign country which the latter produced under its own, registration and that the registered user obtained the registration of the said trade mark in his name in Pakistan fraudulently---Validity--Registered user in the present case, admittedly, was the proprietor or trade mark in Pakistan Class 6 and in view of registration of the trade mark in his name and its renewal after seven years, was entitled to the protection provided to him under the Act as long as his mark remained on the Register with the exception that any other person, who, might have been using the mark prior to the registration of the mark in favour of the registered user, had the right to continue to do so---If the objector was aggrieved by the registration of the mark in favour of the registered user he could have filed an application for rectification of the Register as provided in S.46, Trade Marks Act, 1940--- ---Objector had not produced any single documents to show that goods bearing the trade mark consisting the registered word printed on a circular loop had been imported by him or anyone else in Pakistan prior to its registration in favour of the registered user---Neither the trade mark registered in Pakistan was an internationally well-known mark, nor the objector had produced any evidence to show that goods bearing the trade mark imported by him enjoyed worldwide reputation and were recognized by the general public to be the product of the manufacturing concern abroad except two registrations in China in 1976 and in USA 1-977---Export of the goods by the said foreign manufacturer to other countries of the world did not confer any right on the objector to import the goods which infringed the registered trade mark in Pakistan---Registered user, in circumstances, would continues to enjoy the right to use the registered trade mark exclusively until the renewal expiry subject to further renewal for another 15 years thereafter unless the mark was cancelled or varied under S.46 of the Act.
23. ' The learned counsel for the plaintiff submits that the defendant's principal Messrs PT SALAMAT SAMPURNA tbk Indonesia has filed trade mark application on 14th April, 2014. Messrs PT Salamat filed an earlier application on 20-10-1997 in Pakistan, but when published was opposed by the plaintiff and was abandoned by PT Salamat SAMPURNA tbk Indonesia and thereafter no further steps were taken by them to secure registration of Trade Mark "SAKURA" + flower device (label) in Pakistan, however, the plaintiff on the other hand enjoyed all along the exclusive proprietorship of the said mark in Pakistan along with its user. The registrations in favour of the plaintiff are still valid and subsisting and renewed for a further period of 15 years.
24. ' The next case-law cited by the learned counsel for the plaintiff is 2003 CLD 26 (Karachi) M.
25. Sikandar Sultan v. Masih Ahmed Shaikh. O.XXXIX. Rr. 1 & 2---Suit against infringement of registered trade mark---Temporary injunction, grant of---Held, in deciding question of prima fade case, it had to be shown that plaintiff's case was primarily based on infringement of registered trade mark. ----Ss. 10 & 21---Infringement of registered trade mark Registration of a person in register of proprietor of a trade mark in respect of any goods would give to that person exclusive right to use that trade mark in relation to those goods---Such right would be deemed to be infringed when other person would use a mark identical to registered trade mark or nearly resembling said registered trade mark so as to deceive or cause confusion in course of trade in relation to any goods in respect of which trade mark was registered. ----Ss. 10, 21 .& 73---Infringement of registered trade mark---Suit for---Consideration which had to be kept in mind with regard to infringement of registered trade mark was whether a member of public buying products of defendant was likely to be deceived into believing that he was buying goods of plaintiff (p/33). ----Ss. 7, 10, 21 & 73---Infringement of registered trade mark---Suit for---Colourable imitation Trade Mark "AALI SHAN" was a colorable imitation of plaintiff's registered Trade Mark "SHAN"---Get up, design and colour scheme of both trade marks were identical which could cause confusion in market to the consumer in general and amounting to a. Flagrant infringement of plaintiff's registered trade ,nark---Such colourable limitation of plaintiff's registered trade mark, would constitute its infringement. ----Very strong prima facie case having been made out by plaintiff, defendant could not say that he ought to be allowed to continue to take advantage of his own wrong---Pendency of defendant's application, for registration of his trade mark with Registrar of Trade Marks, would not disentitle plaintiff who was proprietor of a registered trade mark, to obtain injunction restraining infringement of his registered trade mark merely because person against whom injunction was sought had applied for registration of his trade mark---Interim injunction earlier granted, was confirmed.
26. ' In this case also injunction was confirmed on the basis of registered trade mark of plaintiff.
27. ' Next case is 2000 YLR 1376 (Karachi) The Wellcome Foundation Limited v. Karachi Chemical Industries (Private) Limited ----Ss. 21 & 73---Civil Procedure Code (V of 1908), 0.XXXIX, Rr.1 & 2---Trade mark, infringement of and passing off---Interim injunction, grant of---Exclusive right of user registered trade mark-- Exceptions---Scope---Registration of a trademark had given for the person an exclusive right to use the mark and such right was to be deemed to be infringed by any person who, not being the proprietor of that trade mark or registered user thereof, used a mark identical with the same or so nearly resembling it as it was likely to deceive or cause confusion in the course of trade in relation to any goods in respect of which such mark was registered---Provision of S. 21, Trade Marks Act, 1940 pointed out two exceptions against the exclusive right of user---One exception was in favour of the proprietor of that trade mark which the other in respect of a registered user using such mark by way of permitted use---Defendant had failed to set any such case--- ---Under section 21 of the Trade Marks Act, 1940 the registration of person in the register of proprietor of a trade mark in respect of any goods shall give to the person the exclusive rights to the use of the trade mark in relation to those goods and that right be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembles it as to likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered.
28. ' I have already indicated hereinabove that while the plaintiff's trade mark is registered, the trade mark of the defendants is not registered. This registration given to the plaintiffs exclusive right to use the trade mark and that right is to be deemed to be infringed by any person who not being the proprietor of the trade mark or registered fuser thereof uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade.
29. ' In view of the above, prima facie, the defendants seem to be guilty both of infringement of the trade mark and passing off. The consensus of the authorities appears to in favour of restraining the defendants from using the trade mark which is deceptively similar to the plaintiff's trade mark once the plaintiffs have made out a prima facie case in their favour. I have already held above that the plaintiffs have made out a prima facie case in their favour. The plaintiffs are, therefore, entitled to the interim injunction prayed for.
30. ' There is yet another case cited by the learned counsel for the plaintiff in which the Court confirmed temporary injunction recognizing the exclusive right of user by the proprietor of the registered trade mark.
31. ' The next case-law cited by the learned counsel for the plaintiff in which also injunction was confirmed on the basis of registered trade mark is 2010 CLD 890 (Karachi) Messrs Exide Pakistan Limited v. Pakistan Accumulators (Pvt.) Limited and 2 others. ---Ss. 5(2), 39(2), 40(1), 46 & 53---Infringement of registered trade mark---Suit for permanent injunction, damages and accounts-- Plaintiff had sought restraining order against the defendant on the ground that the plaintiff was the owner of Trade Mark "EXCIDE" and defendant was also manufacturing the same in Pakistan under orders of a foreign based company thereby infringing his registered trade mark---Trade mark of principal of defendant foreign based company, which had been registered under foreign law; would be subordinate to the provisions of the Trade Marks Ordinance, 2001 in Pakistan---Defendant on the basis of such a claim, could not manufacture Batteries "EXIDE" in the name of plaintiff, which ex facie would be violative of provisions of 5.40(1) of Trade Marks Ordinance, 2001---Defendant in law had no authority to manufacture batteries under the trade name of "EXCIDE" on the strength of an order placed from abroad---Defendant was restrained from accepting any such order by which right of plaintiff as owner of registered trade mark EXCIDE' was infringed in terms of Ss.40 and 39 of Trade, Marks Ordinance, 2001.
32. ' Section 15(c) of the Customs Act prohibits and restricts import as well as export of goods.
33. Infringement of the right of an owner of trade mark under the Trade Marks Ordinance, 2001 action under section 32 of the Customs Act. The trade mark of the principal of the defendant No.1 which has been registered under Singaporean Law would be subordinate to the provisions of the Trade Marks Ordinance, 2001 in Pakistan and on the basis of such a claim the defendant No.1 cannot manufacture batteries in the trade name of plaintiff, which, ex fade, would be violative of provisions of section 40(I) of the Trade Marks Ordinance, 2001. ...Defendant No.1 is restrained from accepting any such order by which right of plaintiff as owner of registered trade mark 'EXCIDE' is infringed in terms of section 40 read with section 39 of the Trade Marks. Ordinance, 2001.
34. ' In this case-law as well the Court confirmed injunction and restrained the local manufacturer from exporting goods carrying trade mark of the plaintiff.
35. ' The next case-law cited by the learned counsel for the plaintiff is 2004 CLD 1210 Rio Chemical Company and another v. Pakistan Drug House (Pvt.) Ltd. Suit for infringement of trade mark and damages---Interim injunction Order granting injunction would not be erroneous, where damages were also claimed---Usurping of goodwill of trademark by defendant, who prima facie, had no right under Copyright, Ordinance, 1992, would be unjust.
36. ' Suit for infringement of trade mark---Interim injunction, grant of---Pendency of appeal preferred by defendant against order of Copyright Board would not restrict the Court from granting injunction, if plaintiff was otherwise entitle thereto---Person prima facie having no legal right could not be allowed to continue his business.
37. ' In this case also the Court granted temporary injunction on the basis of registration.
38. ' Thereafter the next case-law cited by the learned counsel for the plaintiff is PLD 2000 Karachi 192 J.N. Nichols (Vimto) PLC a company incorporated in the United Kingdom v. Mehran Bottlers (Pvt.)
39. Limited, Karachi.
40. ' S.23---Trade mark registration of---Prima facie evidence of validity---Scope---Registered Trade mark can be exclusively used by its proprietor till the registration continues---Registration of trade mark is prima fade evidence of validity. ----Ss 21 & 57---Infringement, test of---Onus to prove---Scope--- Test in case of infringement of trade mark is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trade mark as the goods of the proprietor of the trade mark---Initially the onus that the defendant's mark is likely to deceive or cause confusion lies on the plaintiff and when ex facie some resemblance is found to exist between two marks then it is for the defendant to establish that two marks are so dissimilar that there is no possibility of anybody being deceived on the basis of defendant's mark. ---Ss. 21, 73 & 79---Suit for infringement of trade Mark---Trade usage---Proof---Scope---Where the disputed trade mark had been registered in the names of the plaintiff for seven years, after such time the registration had become conclusive as to its validity---Plaintiffs were entitled to sue for infringement without being liable to prove user in circumstances. ---Interim injunction grant of---Plea of balance of convenience--Scope---Where a strong prima facie case was made out in favour of the plaintiffs, in such situation the balance of convenience went into backgrounds---Defendants could not be permitted to take advantage of their own mischief by raising the plea of balance of convenience as the plaintiffs were likely to suffer irreparable loss---Interim injunction was confirmed by High Court in circumstances.
41. ' 0.XXXIX. Rr. 1 & 2---Rectification and correction of Register of Trade Marks---Remedy--- Application for injunction---Scope---Proper remedy for rectification and correction of the Trade Mark Register is to take up the matter before the relevant Authority under the provisions of S.46 of Trade Marks Act, 1940---Such point cannot be resolved in application for injunction, as the same may have an adverse effect on the case of any of the contenting parties.
42. ' In this case the Court has recognized, exclusive right of the registered user of the mark and granted interim injunction.
43. ' Next case-law cited by the learned counsel for the plaintiff is 2007 CLC 1610 Messrs Dewan Sugar Mills (Pvt.) Ltd. v. M. B. Abbasi and others wherein the Court held as under:-- ---Ss. 40(4) & 17---Application seeking restraining order against the defendants from infringing and/on passing off their right in respect of the trade mark, house mark, service mark, trade name Dewan by using the trade mark---Validity---Once a trademark/trade name is registered under the provisions of the Trade Marks Ordinance, 2001, then it restricts the other party from using such trade mark, more so when it is distinct and its use would lead to confusion or deception-- ' 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 Trade Marks Ordinance, 2001. Mere, granting of declaration under the Press Council of Pakistan Ordinance, 2002 does not authorize the defendants to infringe the right of the plaintiff guaranteed under the provision of the registered Trade Marks Ordinance, 2001.
44. ' Once a trade mark/trade name is registered under the provision of Trade Marks Ordinance, 2001, then it restricts the other party from using such trade mark, more so when it, is distinct and its use would lead to confusion or deception.
45. ' The plaintiff prima facie had made out a case for grant of injunction and allowing to use the trade mark "DEWAN" by the defendants would cause inconvenience and would lead to deception and confusion in terms of the provision of section 17 of the Trade Marks Ordinance, 2001. The balance of convenience also rested with the plaintiff for the purpose of granting of injunction.
46. Injunction application, restraining the defendants from using the trade name/trade mark word in question in their publication was allowed.
47. ' In this case also registered trade mark of the plaintiff was held to be the basis of grant of temporary injunction by the Court.
48. ' Next case-law cited by the learned counsel for the plaintiff is 2004 CLD 1383 (Peshawar) Societe Des Products Nestle S.A. v. Food International (Pvt.) Ltd. In this case it is held as under-- ' Registered Trade Mark of plaintiff had been infringed and if such infringement was allowed to be continued, protection granted to plaintiff under Trade Marks Act, 1910 would become ineffective--- ----Ss. 8, 10, 20, & 21---Protection of registered trade mark-- Law governing the trade mark, had jealously protected the registered trade mark for the growth of healthy competition in trade, commerce, industry and those who had invested their money, labour and skill for earning a remarkable reputation, should not be allowed to be exploited by rivals and to venture to take benefit of earned reputation by a registered trade mark--- ' In this case the Court is totally in favour of granting protection to the registered trade mark and held further that-- ---As a matter of law and public policy it would be the duty of the Court to ensure that 'once a trade mark had been duly registered and nurtured through advertisement and other means and had remained firmly stabilized for a long period, it should not be allowed abruptly eradicated by imitation of such trade mark---If that sense of security was not guaranteed to an owner of a registered trade mark and if uncertainty about its future was allowed to remain, no productive growth, which was most desirable in every field of activity of a civilized society; would be possible.
49. ' The last case relied upon by the learned counsel for the plaintiff is PLD 2000 Karachi 139 Dabur India Ltd. v. Hilal Confectionery(Pvt.) Ltd. In this case-law the Court held as under:- ----Ss. 20 & 73---Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 & 2---Registration of trade mark-- -Interim injunction, grant of---Registered trade mark was assailed by the petitioner on the ground of infringement-Validity-Once a trade mark had been registered the proprietor had exclusive right to its use because if it were otherwise then there would be no purpose in registration of a trade mark in the first instance---Registration of trade mark did not constitute final appropriation of the mark and the same could be challenged either in appeal or under the provisions of Trade Marks Act, 1940-Use of a trade mark by a registered proprietor could not be regarded as infringement of the mark, till the time such mark was rectified or cancelled---Interim injunction was not granted in circumstance.
50. ' In this case also the Court has recognized the rights of a registered proprietor of the mark and confirmed injunction.
51. ' The learned counsel for the plaintiff has further placed on record along with a statement dated 24-6-2014, which is taken on record, the decision of the Hon'ble Supreme Court of Thailand dated 22nd January, 2007, which is a judgment between PT SELAMAT SAMPURA tbk, Indonesia and the present plaintiff in respect of the same trademark "SAKURA + Device of a flower (label). The brief facts of the case before the Supreme Court of Thailand are that Messrs PT SELAMAT SAMPURA tbk Indonesia applied for registration of trademark SAKURA and its logo on 11-11-2003 with the Department of Intellectual property Kingdom of Thailand in respect of goods falling the Class-12 of the International Classification of goods namely; brake bands brake discs, cylinders, air filters, lubrication filters of engines of vehicles etc. However, the Registrar rejected the said application for the reason that such trademark was Identical and/or similar to that of the plaintiff which was already registered in Thailand pursuant to application No. 362314, Registration No. Khor 91087 Messrs PT SELAMAT SAMPURA tbk, Indonesia filed an action for nullity/revocation/rectification of the trademark of the present plaintiff before the Court of Intellectual property and International Business Division Thailand, which Court dismissed the claim and decided the case in favour of the Plaintiff. This judgment when impugned before the Supreme Court of Thailand by the said Messrs PT SELAMAT SAMPURA tbk, Indonesia, was upheld by the Supreme Court in favour of the present plaintiff who was regarded as the lawful proprietor of the trademark "SAKURA" and logo in English in Thailand.
52. ' This clearly shows that Messrs PT SELAMAT SAMPURA tbk, Indonesia, of which the defendants claim to be the stockists, distributors and dealers, has also lost a bout in respect of trade mark "SAKURA" + Device label in Class 12 with the present plaintiff in the Kingdom of Thailand too.
53. ' Turning now to the arguments of the learned counsel for the defendants, Mr. Sultan Ahmed Shaikh, who has submitted that:-- ' The defendant's firm is stockist and authorized dealer of FLEET GUARD, MANN, FAI FILTRI, DONALSON, RACOR CATERPILLER for the past 32 good years and enjoys impeccable and unparalled reputation and goodwill all over Pakistan. In January, 2014, the said firm became the stockist and authorized dealers of SAKURA Label filters which are imported from Messrs PT SELAMAT SEMPURA Tbk, Indonesia.
54. ' The learned counsel for the defendants Nos. 1 and 2 submitted that the plaintiff is not the proprietor of Trade mark SAKURA Label (which is a Japanese word) in respect of filters, which goods fall in class 7 and class 12. In fact this Trade Mark belongs to an Indonesian Company namely Messrs PT SELAMAT SEMPURA Tbk, Indonesia (which in turn is the subsidiary of a Japanese Company namely, ADR GROUP and the Trade Mark "SAKURA" is registered in several countries of the world). The learned counsel for the defendants Nos. 1 and 2 also refers to Annexures X-1 to X-7 to the counter affidavit which are international and home registration Certificates of trade mark "SAKURA" in favour of Messrs PT SELAMAT SAMPURA Tbk, Indonesia. The learned counsel for the defendants Nos. 1 and 2 further, submits that the plaintiff was a dealer of the said Messrs PT SELAMAT SEMPURA Tbk, Indonesia. In support of this statement, the learned counsel refers to two agreements dated 28th August and 1st August, 1993 and submits that the plaintiff has dishonestly adopted the trademark "SAKURA" and got it registered in his name. Thus the plaintiff has not approached this Hon'ble Court with clean hands.
55. ' The learned counsel for the defendants Nos. 1 and 2 further submitted that the plaintiff has been importing filters from the said Messrs PT SELAMAT SEMPURA Tbk, Indonesia from time to time. Bank Invoice Bill of Lading, Certificate of origin of the goods (namely).
56. ' Filters from the said Indonesian company and Two Invoices prove this averment.
57. ' As such, the plaintiff has failed to establish a prima facie case against the answering defendant.
58. ' Presently defendant No.1 's wife's firm Rizwan Automobiles is the authorized dealers of Messrs PT SELAMAT SEMPURA Tbk, Indonesia for selling SAKURA label filters in Pakistan.
59. ' The learned counsel for defendants Nos. 1 and 2 next submits that the plaintiff has obtained registration of the Trade Mark SAKURA Label under No. 116188 and 122294 both in class 7 by misrepresentation and fraud. The word SAKURA is neither English nor an Urdu word and is totally alien word to the Pakistan society. SAKURA is a common Japanese feminine given name.
60. ' The learned counsel for the defendants Nos. 1 and 2 further submits that when Messrs PT SELAMAT SEMPURA Tbk, Indonesia, came to know about the illegal act of the plaintiff, the relationships between the two became estranged. The plaintiff candidly agreed to transfer the Trade Mark SAKURA label in favour of PT SELAMAT SEMPURA Tbk, Indonesia.
61. ' That Messrs PT SELAMAT SEMPURA Tbk, Indonesia had applied for the registration of their Trade mark SAKURA label as far back as on 20th October, 1997. Their Application was accepted and advertised in the Trade Mark Journal No. 588 dated 1st January, 2000.
62. ' That pursuant to the advertisement of Messrs PT SELAMAT SEMPURA Tbk, Indonesia. Trade Mark Application in the Trade Mark Journal, it was opposed by the plaintiff. This opposition was not contested by the then Attorney of them Messrs PT SELAMAT SEMPURA Tbk, Indonesia. As a result thereof, their Trade Mark application was treated as abandoned by the Trade Mark Registry.
63. ' That on 14th April, 2014 PT SELAMAT SEMPURA Tbk, Indonesia, has again applied for the registration of the Trade mark SAKURA label in classes 7 and 12.
64. ' That on 23rd May, 2014, the said Messrs PT SELAMAT SEMPURA Tbk has applied for the Rectification of Trade Marks SAKURA No 163352 in class 12. SAKURA to 122294 in class 7 on Form TM-26 at the Trade Marks Registry.
65. ' That the said Rectification Petitions are pending adjudication at the Trade marks Registry.
66. ' That the plaintiff has failed to make Messrs PT SELAMAT SEMPURA Tbk. Indonesia as party in the Suit. As such, the Suit suffers from the non-joinder of the parties. The said company has appointed Rizwan Automobiles as their dealer.
67. ' That the defendant No.3 does not deal in SAKURA label filters. As such, the suit suffers from mis- joinder of the parties.
68. ' That according to the own admission of the plaintiff (para 14 of the plaint of the plaintiff), that the, defendants have commenced marketing Filters under the Trade mark SAKURA label and the above suit was filed as late as on 19th January, 2014. As such, the suit suffers from laches and acquiescence. For this reason alone, the plaintiff is not entitled to any interim relief.
69. ' That due to the prohibitory order dated 27th May 2014, passed by this Hon'ble Court, the business of Ahmed Filters has been totally halted and stopped while no monetary loss shall be caused to the plaintiff.
70. ' That the circumstances stated above clearly prove that it is fit case where ad-interim dated 27th May, 2014 may be vacated.
71. ' In support of his arguments Mr. Sultan Shaikh the learned counsel for the defendants Nos.1 and 2 has relied upon the following case-law: ' 2004 CLD 315: This case has been relied upon by the learned counsel for the plaintiff as well but in a different context. Hence the learned counsel for the defendants Nos. 1 and 2 relies upon the same case-law from a different perspective i.e. The interim injunction was confirmed because the objector was aggrieved by the registration of the mark in favour of the registered user and the objector had not filed any application for rectification of the Registration as was provided under the Trade Marks Act, 1940. In Para 16 of their counter affidavits the defendants Nos.1 and 2 State that on 14th April 2014 PT SELAMAT SEMPURA Tbk, Indonesia has again applied for the registration of Trade Mark SAKURA label in Class FE 12 in Pakistan. The defendants further state in Para 17 the counter affidavit that on 23rd May, 2014 the said PT SELAMAT SEMPURA has applied for rectification of Trade Marks "SAMPURA" No. 163352 in Class 12, "SAKURA" No. 163355 in Class 12, "SAKURA" No.1116186 in class 7 and "SAKURA" No 122294 in Class in 7 on Form 26 at the Trade Marks Registry. But this case has no parallel with respect to the present case where the defendants are neither proprietors of the mark "SAKURA" nor registered users of the same. Applications for registration of mark "SAKURA" by PT SELAMAT SEMPURA Tbk, Indonesia is a mala fide act to given ex-post facto recognition to their defacto right to use the mark in Pakistan.
72. ' The next case relied upon by the learned counsel for the defendant is 2010 CLD 311 Ghulam Mujtaba Paracha v. Muhammad Saleem. In this case proprietor of the mark was the prior user of the mark, who could not get the mark registered due to non-service of demand notice on the plaintiff/proprietor of the trade mark; therefore, the Registrar treated it as abandoned. Thereafter, the defendant got the mark registered in his name in 2001. This case law also does not lend any support to the contention of the defendants inasmuch as the defendants are neither proprietors of the mark nor prior users of the mark. The defendants have categorically stated in their counter- affidavits that they are using the trade mark "SAKURA" since January 2014 when their firm became stockist and dealers of PT SELAMAT SEMPURA Tbk, Indonesia. Therefore, I am of the considered view that this case-law has no relevance to the present case.
73. ' Another case cited by the learned counsel for the defendants Nos.1 and 2 is 1992 M LD 2357 wherein it is held "The person who first designed or who used a trade mark first is the person entitled to claim the proprietorship thereof unless subsequently he has dealt with the same and other has obtained right thereto in the manner shown to and recognized by law. In my view, in the present case, it is the plaintiff who is first proprietor as well as registered user of the mark "SAKURA" since 1989.
74. ' The next case relied upon by the learned counsel for the defendants Nos. 1 and 2 is PLD 1991 Supreme Court 27. The facts of this case are utterly dissimilar to the facts of the case in hand. In this case the Hon'ble Supreme Court had held that it is unlawful to pick up an invented word of foreign firm who has registered the mark in this country. But here the situation is again utterly different. The registered proprietor and user of the mark is the plaintiff and not the defendants or their foreign principal. Therefore, this case-law is irrelevant.
75. ' Another case cited by the learned counsel for the defendant is 1999 YLR 638 Messrs Trista Industries v. Messrs. Trisa Bursten Tabrik A.G. This case primarily deals with "PRIOR USE" of the mark.
76. The relevant portion relied upon by the learned counsel for the defendants Nos.1 and 2 is "Where the offending party could, show that they were prior users of the mark in Pakistan, even before the registration of the mark, the right to exclude others from using the registered mark was not available to the proprietor of the registered mark".
77. ' This case-law, in my humble view, is totally irrelevant inasmuch as the defendants are not claiming to be the prior users; of the mark, on the contrary the defendants have categorically stated in their counter affidavit that they are using the mark "SAKURA" since January 2014. As opposed to that the plaintiff claims to be the prior registrant as well as user of the mark since 1989.
78. ' The next case cited by Mr. Sultan Shaikh, the learned counsel for the defendants Nos.1 and 2 is 2007 CLD 966 wherein it was held that since the defendant was using the trademark in dispute for the past 20 years (since 1985) and was prior user of the mark, therefore the plaintiff was not at all entitled to the grant of interim injunction inasmuch as the plaintiff was using the said mark for much shorter period since 1999. This case-law cited by the defendant's counsel is also utterly irrelevant on account of the reasoning already stated above in the, foregoing para. ' The next case law cited by the learned counsel for the defendants Nos. 1 and 2 is 2002 CLD 1639 Messrs Durafoam (Pvt.) Ltd. v. Messrs Vohra Enterprises (Pvt.) Ltd. In this case the same principle has been enunciated that "Right of prior user is valuable and superior right than the right of registered holder of a contentions mark". Again this case does not lend any support to the contentions raised by the defendants Nos. 1 and 2 with present case in as much as the defendants are not the prior users nor prior registrants of the mark "SAKURA" in Pakistan. It is the plaintiff who is the prior user as well as prior registrant of the mark in question as" the record of the case shows.
79. ' Turning now to the next case-law cited by the learned counsel for the defendants Nos. 1 and 2 which is 1994 CLC 2135 Telephone Soap v. Messrs Lever Brothers suffice to say that the facts of the same are also different and it is irrelevant to the present case inasmuch as in this case both the plaintiff and the defendant were registered, proprietor of the disputed mark.
80. ' The last case-law relied upon by the learned counsel for the defendant Nos.1 and 2 is 1986 M LD 886 which is also in respect of prior user of the mark. This case-law is also irrelevant inasmuch as the defendants according to their own pleadings have admitted that they are not prior users of the mark. It is an admitted position in view of the pleadings of the parties as well as material available on record that the plaintiff is the prior user and proprietor of the mark in question.
81. ' 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, after which I am of the opinion that undoubtedly the plaintiff is the registered proprietor of the trade mark "SAKURA" + Device of flower (label) in respect of goods falling in class- 7 specified above of the classification of goods since 1992 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 trade mark 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 A/3 page 33 of the file and as annexure "C" at page 69 of the file show that the plaintiff filed the said applications on 7th July, 1992 and 24th October, 1993 and obtained Registrations No. 116/86 and 122294. 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 7 and issued Registration Certificates to the plaintiff on 12-8-2006. 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 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)."
82. ' Thus, it can very easily be said that the plaintiff acquired the exclusive right to use the aforesaid two registered trademarks in Class 7 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 "SAKURA" and "SAKURA" + Device of a flower (label) is registered. The legal effects 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 fade evidence of validity. ---In all legal proceedings relating to a trade mark registered under this Ordinance, or under the Trade Mark 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 off all subsequent assignments and transmissions thereof. "
83. 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 end conclusive in all respects.
84. ' 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 "SAKURA" + device (label) in his name, the plaintiff acquired exclusive right to use the same in class-7 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 "SAKURA" 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 cited by the learned counsel for the plaintiff in 2004 CLD 315 supra.
85. ' In view of the above, I am 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 "SAKURA" + device of flower (label) and trademark "SAKURA" registered as of 7-7-1992 under No.116186 in class 7 and 24-10-1993 under No. 122294 in class 7 and renewal upto 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.
86. Consequently, this application is allowed and the defendants are restrained by way of temporary injunction from selling, manufacturing, importing, offering for sale, advertising or distributing directly or indirectly oil and fuel filters and brake oil under the trademark "SAKURA" or any other mark which is identical with or similar to the plaintiff's registered trademarks in class-7 and are further retrained from using any trademark colourable imitation of which closely and deceptively similar with the plaintiff's trademarks "SAKURA" and "SAKURA" + device of flower (label).
87. ' 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.