MUNIB AKHTAR, J.---This suit, and the application that falls for determination, raise important and interesting issues in respect of the Trade Marks Ordinance, 2001 ("2001 Ordinance"). C.M.A.
5709/2010, seeking interim conjunctive relief, was filed by the plaintiff along with the suit. On this application an ad-interim order was made on 01.06.2010. The other application, C.M.A.
520/2014, has been filed by the defendant. It seeks recall of the ad-interim order. Before turning to the dispute may note that determination of these applications has required consideration of both of the 2001 Ordinance and the predecessor legislation, the Trade Marks Act, 1940 ("1940 Act), and reference has had to be made to the trade mark legislation in other jurisdictions. For convenience, the relevant statutory provisions have been gathered in the Annex to this judgment, which also contains a list of abbreviations used in this decision.
2. Learned counsel for the plaintiff submitted that the plaintiff was part of the Aldo group of companies, which has global annual sales of USD 1.4 Billion (at the time of the filing of the suit).
The group's founder is one Mr. Albert "Aldo" Bensadoun, and it has its origins in Canada. The plaint contains a detailed narration of how the Aldo group came about, from its beginnings in the 1970's, its growth in Canada (where it has more than 450 stores operating under the Aldo banner and other names), its expansion into the United States (where it has 125 stores), and its further progress into the United Kingdom, Ireland and elsewhere. As presently relevant, I am concerned with two aspects of the Aldo global business. Firstly, Aldo has a trademark registered in many countries around the world, both for goods and as a service mark. This trademark is the word "Aldo" in a certain stylized form. It is this trademark that is now also registered in Pakistan and which, the plaintiff claims, has been infringed by the defendant in the manner described below. I am not therefore concerned with any other intellectual property rights (i,e., in respect of other brands, etc.) to which the Aldo group lays claim. Secondly, as explained in some detail in the plaint, the group's business had its origins in footwear, i,e., shoes. Thus, para 2.2 of the plaint states: "In 1972, Aldo Organization started as a footwear concession within a chain of popular fashion boutiques and four ALDO stores within these boutiques were opened in Canada". As just noted, the group then expanded by opening its own stores throughout Canada and later the United States, United Kingdom and Ireland as well. It is stated that in the four countries just mentioned, the group itself operates the stores. In addition, the group also has a franchising model, which is referred to in the plaint as the "ALDO franchise system". It is averred that using this "system" the group has expanded its business to over 40 countries in six continents. A list of those countries is given in paras 3.4 to 3.6 of the plaint. It includes many countries in the Gulf region and other Arab countries, and also India, Malaysia, Australia, China, Thailand, Turkey, Indonesia and South Africa. Thus, it is averred, as of 2009 the group had a total of 1415 Aldo stores in 46 countries worldwide. In the plaint, in para 3.9, the plaintiff has given photographic images of the frontages of some of the Aldo stores.
However, the Aldo group does not have, own, operate or franchise any stores in Pakistan.
3. Although the group's business had its origin in footwear, which still appears to constitute the major component thereof, the group has also diversified into selling other goods at its stores. According to para 5.5 of the plaint, "ALDO retails fashion shoes, boots and sandals, as well as accessories such as handbags, hats, belts and jewelry". A key aspect of the plaintiffs case is how the Aldo stores are organized and the goods sold there displayed for customers, A detailed description in this regard is given in para 5 of the plaint and its various sub-paras (which bear the heading "The ALDO Retail Concept"). The store design and construction, visual presentation (i,e., "the manner in which products are displayed both inside the store and also in the store's front window display"), marketing and sales, and organization of the Aldo way of business are highlighted and detailed in para 5. In addition to the description just quoted of the visual presentation, para 5.4 also avers as follows: "By excelling in VP [visual presentation], ALDO creates visually appealing stores, provide value to ALDO's products and create a great impression on ALDO's customers, Lifestyle pictures and displays complete the look of the store. Instructions are given to all of our stores throughout each season so that a consistent global look is maintained. Extensive training, supported by manuals and periodic memos, .keeps the store personnel up to date on how the merchandise should be placed, how shoes should be grouped, when product sequences should be changed and maintaining a focus on the best selling products. Additional examples of the basics of VP, which must be adhered to in the same manner across all of ALDO's stores, including cleanliness of the store and displayed products, lacing of footwear, labeling, stuffing products and the proper use of boot weights and shapers".
In other words, what the plaintiff avers is that to walk into (or indeed, perhaps even to approach) an Aldo store is to be immersed in what may be called the "Aldo shopping experience", and that this experience is global, i,e., would essentially be the same all over the world. I would not go so far as to regard the plaintiffs averments to mean that to experience one Aldo store is to experience all, since, e.g., the experience in and of a small franchised store operating in some mall or shopping centre would be clearly different from that when entering a flagship store (such as the ones that, it is averred, operate at such well known shopping locations as New York's 5th Avenue and London's Oxford Street and Covent Garden). However, as I understood it, what learned counsel submitted and emphasized was that there was an established "feel" and "look" to Aldo stores that was instantly recognizable.
4. In addition to the foregoing, it is averred that the Aldo group has a well established presence on the Internet. Furthermore, it is averred (and details have been given in this regard) that the Aldo group spends huge sums of money on a worldwide basis for advertising, marketing and promotional activities, which include efforts to establish, maintain and enhance awareness of the Aldo brand. As noted above, Aldo does not have any stores in this country. However, it is averred as follows in the plaint: "9. That as stated above, ALDO products have also been extensively sold in the developed countries as well as sold to various countries surrounding or in close geographical proximity to Pakistan, where a large number of Pakistani expatriates and nationals live, as well as work, such as Saudi Arabia and United Arab Emirates.
9.1 In addition to the aforesaid use, (products under the trademark ALDO have been available in Pakistan for the last many years by finding their way through various trade channels), and have also been purchased by Pakistani public in foreign countries, which are brought back to Pakistan for personal use in Pakistan and/or as gifts. Such ALDO products are also purchased and used by thousands of Pakistani expatriates, who also send such products as gifts to their relatives and friends in Pakistan."
On the foregoing basis, and other factors as listed in para 9.2 of the plaint, it is averred that "the reputation and goodwill of the Plaintiffs trademark and service mark ALDO have been created and continue to exist in Pakistan for the last many years". It is also averred that the plaintiff has also sold footwear to a commercial customer/importer in Pakistan.
The plaintiff's grievance is that in violation of the Aldo group's rights, the defendant is running a shoe store in Karachi, where it sells shoes under the brand "The Also Shoes"
(written in a stylized manner). In respect of some of its shoes, which are in the "executive class", the defendant uses a logo or device along with the inscription, which is a stylized "A" in an oval shape with "The Aldo Shoes" appearing on top of the oval. The name of the defendant's shop is also "Aldo Shoes". Learned counsel submitted that this was a clear and ongoing violation of the plaintiff's rights under the 2001 Ordinance. (Of course, the plaintiff is simply the Aldo group company that holds or claims the said rights, in essence acting for and on behalf of the group at large.)
At the time the suit was filed, the plaintiff did not in fact have any registered trademarks in Pakistan. At that time it had four applications pending for registration of "Aldo" as a trademark. These applications were in classes 14, 18 and 25, which relate to goods, and in class 35, which relates to services. All the applications were filed on or about 07.06.2009. All of these facts have been properly disclosed in the plaint. By the time the CMAs now being considered came up for hearing, three of those applications had materialized in registered trademarks, in respect of classes 14, 18 and 35. In respect of the application under class 25, the defendant has filed an opposition and proceedings in respect thereof are still pending.
In addition, the defendant has itself filed an application for registration of its mark under class 25. That application is being opposed by the plaintiff and those proceedings are also still pending. Thus, the position as regards the plaintiff's marks when the present CMAs were heard was as follows: Trademark/ Application No,Status Class and description (per Trade Mark Rules, 2004)Plaintiff's specification 269118 Registered (11.06.2014)
'14: Precious metals and their alloys and goods in precious metals or coated therewith (except cutlery, forks and spoons), jewelry, precious stones, horological and other chronometric instrumentsFashion accessories, namely, jewelry and watches; being goods included in class-14.
269117 Registered (11.06.2014)18: Leather and imitations of leather, and articles made from these materials, and not included in other classes, animal skins, hides, trunks and traveling bags, umbrellas, parasols and walking sticks, whips, haviess and saddlery.All-purpose carrying bags, namely, handbags, shoulder bags, tote bags, duffel bags, shoe bags and wallets; being goods included in class 18.
269115 Registered (27.06.2014)35: Advertising, business management, business administration, office functions -Retail store services and retail on- line services in the field of bags, footwear, footwear accessories, footwear and garment care products, clothing, leather and suede apparel, fashion accessories; being goods included in class 35 269116 Pending: under opposition from the defendant25: Clothing, footwear, headgear . .Footwear, namely, shoes, boots, loafers, walking shoes, running shoes, athletic shoes, sandals and slippers, footwear accessories, namely shoe insoles, shoe inserts, anti-slip shoe grips; footwear and garment care products, namely, shoe polish, aerosol . and non- aerosol cleaners and protectors for leather, suede and fabric; clothing, namely, coats, jackets, vests - scarves, gloves and hats; leather and suede apparel, namely, coats, jackets, belts, gloves; fashion accessories, namely, sunglasses, hair bands, barrettes, ponytail holders, belts, hosiery The defendant's application is No, 263362, which was filed on 24.03.2009 and is, as just noted, being opposed by the plaintiff. It is for registration of a mark that is a logo, which bears the inscription "The Aldo Shoes" in stylized form, along with a stylized "A" in an oval on the left hand side. The oval also has on top of it the words "The Aldo Shoes".
7. Learned counsel for the plaintiff submitted that the mark used by the defendant was clearly and obviously an unlawful imitation and copy of the plaintiffs registered trademark. Its use therefore infringed upon and violated the plaintiff's rights under the 2001 Ordinance. Since the plaintiff's trademark is registered in respect of three different classes I invited learned counsel to point out the specific provisions of section 40 on which he rested his case. The response by learned counsel can be conveniently set out as follows: Trade Mark No,ClassProvision of 2001 Ordinance 269118 14 Section 40, subsection (2)(a)
269117 18 Section 40, subsection (2)(a)
269115 35 Section 40, subsection (2)(b); subsections 3(a), (b), (c) and (d); and subsection (5)
Learned counsel emphasized that the plaintiffs registered trademarks were without restriction, conditions or disclaimer. With specific reference to Trade Mark No,269118 (in respect of class 14), learned counsel submitted that this also covered the use of such accessories as gold buckles used in, on or in relation to footwear. Elaborating his point learned counsel submitted that the goods sold by the plaintiff in many instances used a combination of the various articles for which it had the registered trademarks. Thus, there was an involvement of all three classes in respect of the goods sold by the plaintiff. He contended that it would therefore be incorrect to look at the infringement of each class in isolation. A more holistic approach had to be taken and it was the integrated use, in combination, of all three classes that was the hallmark of the plaintiff's products. It was in this manner that the grievance of infringement had to be approached and, learned counsel submitted, ought to be sustained.
In addition to the foregoing, learned counsel submitted that the "Aldo" trademark was a well known mark within the meaning of section 86 of the 2001 Ordinance and was entitled to protection accordingly. Learned counsel submitted that the various factors listed in subsection (2) of section 86 were fully shown to exist in the averments made in the plaint.
Therefore, a case for relief had been made out. In this regard, learned counsel also relied on the tort of passing off to press his case. I specifically asked learned counsel to assist me on the point that where the owner of a well known trademark had registered the same in Pakistan, whether he would then be entitled to the protection accorded by section 86, or would be limited to that provided by subsection (4) of section 40. Learned counsel submitted that both were available to the proprietor of such a trademark. Learned counsel also submitted, with specific reference to the plaintiff's pending application under class 25 and the opposition thereto by the defendant, that for purposes of section 86 it was irrelevant whether such an application had been filed and/or was being opposed. The section granted protection in its own terms and had to be applied accordingly.
In support of his submissions, learned counsel relied on a number of decisions, which are considered below as and to the extent considered appropriate. Learned counsel submitted that all of the well known "ingredients" for interim relief were in the plaintiff's favour and prayed accordingly.
Learned counsel for the defendant opposed the plaintiff's application and submitted that the ad interim order ought to be vacated and recalled. With reference to section 86 learned counsel submitted that the various factors listed in subsection (2) had to be read together.
Each had equal weight. The reference to "worldwide" in the various clauses of the subsection was a reference to the business or commercial world. Learned counsel submitted that "Aldo" was not known in the business world and no material had been produced to establish that the plaintiff's trademark had "worldwide" recognition in this sense. It was submitted that the "Aldo" trademark was not well known in the sense of such brands/trademarks as Boeing, Pepsi, McDonald's, etc. The various factors listed in section 86 had to be read accordingly.
Learned counsel also submitted that admittedly the registration in the three classes had been granted in 2014 whereas the suit had been filed in 2010. No loss or damage had been shown or established. Insofar as the pending opposition applications (of both parties) in respect of class 25 were concerned, learned counsel submitted that a decision on the CMAs before me could have an adverse impact on those proceedings. Learned counsel prayed that the plaintiff's application be dismissed. Learned counsel for the plaintiff exercised his right of reply.
I have heard learned counsel as above, examined the pleadings and the material on record, and considered the case law. Before proceeding further, it is appropriate to make certain prefatory remarks about the 2001 Ordinance from a comparative law perspective, and especially with reference to the UK Act and the Singapore Act. In Soneri Travels and Tours Ltd. v. Soneri Bank Ltd. 2011 CLD 193 ("Soneri Travels"), a Division Bench of this Court (of which I was a member) referred to the background, in terms of Pakistan's international treaty obligations, that led to the promulgation of the 2001 Ordinance: see paras 7 and 8. Commenting on the differences between the 2001 Ordinance and the 1940 Act the Bench, inter alia, observed: "Cases decided under, or in relation or with reference to, the 1940 Act mug therefore be reread and reappraised carefully before they are applied to the provisions of the 2001 Ordinance, even if those provisions may appear at first sight to be equivalent to those under the former enactment". The cases cited by learned counsel for the plaintiff, which were decided under the 1940 Act, must therefore, in my respectful view, be considered accordingly.
The position is similar in English law, with respect to the UK Act. I have had occasion to note elsewhere that the 2001 Ordinance appears to be modeled on the UK Act (see Rupali Polyester Ltd. v. Baba China Builders and Developers 2014 CLD 1601 (SB), para 17). The UK Act was enacted in order to give effect in the United Kingdom to the EU 1988 Directive. Thus, the said Directive has also had an influence on the 2001 Ordinance. The effect of the changes made in English trade mark law on account of the new legislation, as regards consideration of case law decided under the predecessor UK 1938 Act, was put as follows in West v. Fuller Smith and Turner [2003] EWCA Civ 48, [2003] FSR 44 (CA): "To a much greater degree, this case illustrates the break with our domestic past brought about by the 1994 Act.... As the respondent submits, one has to start by forgetting the preconceptions of pre-1994 Act trade mark law" (at [69]). In Kerly (13th) (2001), the first edition of that treatise to come out after the UK Act, it was stated as follows (in para 1-11, titled "Old authorities"): "... reference to cases decided under previous Acts is frequently of assistance. But assistance only: it should not be forgotten at any point that the system is fundamentally different and frequently demands a fresh look". This statement is repeated in the next edition, though, in a more nuanced form: see Kerly (14th)(2005), para 1-
011. It is interesting to note that in the edition just mentioned, the assistance is stated to be "limited" and in the next, current edition (15th, 2011) its described as being "very limited". The trajectory is clear.
Insofar as the Singapore Act is concerned, like the 2001 Ordinance it also was enacted to give effect to international treaty obligations. The predecessor legislation was the Trade Marks Ordinance 1938, which was based on the UK 1938 Act. The latter statute was also the model for the 1940 Act. An examination of the Singapore Act shows that it is influenced by the UK Act/EU 1988 Directive, which, as just noted, is also true for the 2001 Ordinance. Thus, Pakistani and Singapore trade mark law have had, and continue to have, many shared features. Professor David Llewelyn, one of the learned editors of Kerly, has, in a case-note on a 2013 decision of the Singapore High Court, noted that "[m]any countries outside Europe have adopted many of the changes and much of the wording in the European Union ... regime in a general worldwide move towards greater ease of registration of trade marks and a broadening scope of protection for those that achieve registration" (see "Is there confusion in the law of trade marks in Singapore?"
(2013)25 SAc LJ 339,340-1: available at http : //www . sal . org sg/digital library/SAcLJ2013 25 mar. aspx). English courts, on account of the continuing harmonization of trade mark law at the EU level, are now guided and bound by the judgments of the European Court of Justice ("ECJ").
However, as Professor Llewellyn notes (ibid), Singapore is one jurisdiction that "stands out for those wishing a more circumspect reaction to this headlong rush for "ever more and ever wider", and that Singapore "judges have remained resolute in their determination to examine seriously the expansive claims of trade mark proprietors". There is thus, in some respects, a certain divergence between EU/English law and Singapore law. One point that needs to be considered here is whether these differences impinge on a consideration of the 2001 Ordinance, given the many commonalities among our law, the UK Act, the EU 1988 Directive and the Singapore Act. To the extent that those differences may be relevant for present purposes, it will be necessary to consider whether, in this jurisdiction, we should adopt the approach taken by ECJ/English. 'decisions or that preferred by the Singapore courts, or indeed, whether some other course should be charted.
One last comment. The registered trademark is sometimes referred to as the "senior mark" while the allegedly infringing mark is referred to as the "junior mark". This is convenient terminology, which I have also used.
With these matters out of the way, I turn to consider section 40 of the 2001 Ordinance. The equivalent provision in the 1940 Act was section 21. When the two sections are compared, the contrasts are immediately apparent. For present purposes, it suffices to note that section 21 deemed it to be an infringement of a registered trademark if an unauthorized person used, in the course of trade, a mark (a) in respect of the same goods for which the (senior) mark was registered, the said (junior) mark being (b) either (i) identical with the registered mark, or (ii) "so nearly resembling it as to be likely to deceive or cause confusion". Section 40 on the other hand covers a range of situations. These start from use of a mark identical with the registered mark in respect of identical goods or services, as the case may be (subsection (1)), and continue through to subsection (4), which prohibits the use of an identical or deceptively similar mark in respect of goods or services which are not even similar to those for which the mark is registered, if the registered mark is a well known trade mark or has a reputation in Pakistan, and the other conditions laid down in the subsection are also met. (Other aspects of section 40, though also important, are not relevant for this part of the analysis.) Thus, while the exercise of determining infringement was relatively simple under the 1940 Act, it is of some complexity under the 2001 Ordinance. Under section 21, infringement claims, at least on the statutory language, came within one common rule of general application. Under section 40 it is important that the plaintiff be made to specify exactly the situations of infringement that he bases his case on, i,e., the particular subsection(s)/clause(s) that he relies upon. It was for this reason that, as noted above, I had asked learned counsel for the plaintiff to particularize the basis of his claims. The response has been set out in the table in para 7 above. I turn therefore to consider in detail the various subsections/clauses of section 40 relied upon, while also continuing to examine the section at large. (There is of course also a claim in terms of section 86; that will be considered separately.)
16. Subsection (2) of section 40 deals with three infringement situations. These can be stated as follows: The first situation is where the junior Mark is identical with the senior mark, and is used in relation to goods or services (as the case may be) that are similar to the goods or services for which the senior mark is registered. This is clause (a) of the subsection.
The second situation is where the junior mark is deceptively similar to the senior mark, and is used in relation to goods or services (as the case may be) that are identical with the goods or services for which the senior mark is registered. This is the first part of clause (b) of the subsection.
(c) The third situation is where the junior mark is deceptively similar to the senior mark, and is used in relation to goods or services (as the case may be) that are similar to the goods or services for which the senior mark is registered. This is the second part of clause (b) of the subsection.
As is clear from the table in para 7, the plaintiff bases its claim in terms of clause (a), i,e., the first of the situations described above, in respect of the registrations under classes 14 and 18.
As regards the registration under class 35, there the plaintiff's claim would be in terms of either the second or third situations, since reliance has been placed on clause (b).
The phrase "deceptively similar", used in relation to the junior mark in clause (b), is defined in section 2(xii): it is a mark that, on account of its near resemblance with the senior mark, is "likely to deceive or cause confusion". It will be noticed that at its end, subsection (2) has an additional requirement, applicable to both clauses: the use of the junior mark should be such that "there exists a likelihood of confusion on the part of public, which includes the likelihood of association with the [registered] trade mark". (For convenience, this requirement is hereinafter referred to as the "confusion-condition".) When the definition of "deceptively similar" and the confusion-condition are compared, they are found to have overlapping meanings. It is of course for the plaintiff to show both. that the junior mark is "deceptively similar" to the senior mark, and that the confusion-condition is met. If a claim of infringement is made under clause (b), there is therefore an overlap. The plaintiff must establish what in many ways may be the same thing twice over, first by way of the mark being deceptively similar and then by way of satisfying the confusion-condition. In this context, it will be seen that the Indian Act and the Australian Act, which have virtually the same definition of "deceptively similar", appear not to simultaneously apply this phrase and the confusion-condition in respect of the same provision; either the one or the other is used. This is obviously more appropriate. In and of itself, the overlap in section 40(2)(b) could be put down simply to poor drafting. However, the problem is rather more complex, but for this to be properly appreciated one must first consider the definitions of "similar goods" and "similar services".
The phrases just mentioned are defined in clauses (xliv) and (xlv) of section 2. Each includes, respectively, goods or services of the "same description" which are therefore, by definition, "similar" goods or services. This has certain implications for the continued relevance of the case law developed under the 1940 Act ad relied upon by learned counsel for the plaintiff. That is a point to which I will advert later. For present purposes, what needs to be considered is subsection (3) of section 40. It will be seen that it applies, in its clauses (a) and (c), to situations where the junior mark is identical with or deceptively similar to the senior mark, and is being used in respect of goods or services of the "same description". As is at once apparent, there is again an overlap. The first and the third situations covered by subsection
(2) are in respect of "similar" goods or services. By reason of the definitions just noted, these include goods or services of the "same description". That is precisely what is covered by clauses (a) and (c) of subsection (3). Thus, there is duplication: the same situations of infringement are to be found in both subsections. Again, this overlap could be put down to poor drafting. However, the problem is knottier than that. This is because subsection (3) does not have the equivalent of the confusion-condition. Therefore, if a claim of infringement is made in terms of subsection (3) the plaintiff does not need to show that this condition exists. Now, as just noted, subsection (3) applies when the junior mark is either identical with or deceptively similar to the senior mark. As has been shown above, a mark that is "deceptively similar" is a mark to which, essentially, the confusion-condition applies, Therefore, in a claim of infringement under subsection (3) on the basis that the junior mark is "deceptively similar", the absence of the confusion-condition may not matter that much.
However, when the claim of infringement is on the basis that the junior mark is identical to the senior mark, the complexion changes. An anomaly appears in the law. This is because ifA the claim was to be made under subsection (2) in respect of "similar" goods or services (which, by definition, include goods or services of the "same description"), then the plaintiff would also have to show that the confusion-condition applies. However, if exactly the same claim was to be made under subsection (3) in respect of goods or services of the "same description", then there would not be any such requirement. The anomaly can be set out in table form: Claim under subsection (2)Claim under subsection (3)
Junior mark is identical with theJunior mark is identical with the senior mark and is used in respectsenior mark is used in respect and of similar goods or services (i,e., of the same description): theof goods or services of the same description: the plaintiff does not plaintiff must additionally show that there exists a likelihood of confusion on the part of the public.have to show anything more.
19. As will be appreciated, this is a significant anomaly. It clearly effects the scope of the statutory protection provided to the senior mark. This point can also be understood if one considers the Australian Act. It will be noticed that subsection (3) of section 40 is similar to subsection (2) of section 120 of that statute. There are however, two crucial. Differences. Firstly, the Australian provision does not have any equivalent to subsection (2) of section 40, so there is no duplication.
Secondly, the Australian provision does have, at its end, a requirement similar to the confusion- condition, the difference being that in the Australian Act, the onus lies on the defendant whereas under our provision (subsection (2)), the onus lies on the plaintiff.
The question of how the anomaly is to be addressed is not susceptible to an easy answer.
One solution could be to ignore clauses (a) or (c) of subsection (3) and direct a plaintiff pressing a claim of infringement in situations covered by these clauses to instead make out his case under clause (a) of subsection (2). This could however render clauses (a) and (c) of subsection (3) redundant. As is well established, redundancy is not to be readily imputed. The other solution could be to carve out an "exception" from clause (a) of subsection (2). On this approach, the clause would be read as applying to situations where (i) the junior mark is identical with the senior mark, and (ii) the goods or services in respect of which the former is being used are "similar" to the goods or services for which the latter is registered, but (iii) the said goods or services are not of the "same description". This is no doubt a rather awkward reading. However, it would have the merit of saving clauses (a) and (c) of subsection (3) from possible redundancy. Furthermore, it could also be supported as a matter of interpretation.
This is so because section 2 of the 2001 Ordinance (i,e., the definition section) opens with the standard words, "unless there is anything repugnant in the subject or context". It could be said. that on account of clauses (a) and (c) of section 40(3), and in order to accommodate these provisions, the standard words should apply to take goods or services of the same description "out" of the definitions of "similar" goods and services insofar as clause (a) of section 40(2) is concerned.
Had greater care been taken in the drafting of section 40, the anomaly identified above would not have existed at all. However, one has to take the section as one finds it and therefore a choice must be made. On reflection, I prefer the first solution. No doubt it may have the effect of making clauses (a) and (c) of subsection (3) redundant. However, in my view the alternative, i,e., the second solution, is less preferable for at least three reasons. Firstly, it would unduly and inappropriately enlarge the scope of the statutory protection given to the senior mark. In terms of the second solution, a plaintiff who seeks to make out a case of infringement on the basis that the junior mark is identical with his (senior) mark and is being used in respect of goods or services (as the case may be) of the same description would not have also to show that on account of such use there is a likelihood of confusion on the part of the public. More importantly, even if the defendant is able to show that there is no likelihood of such confusion, it would be of no avail; other things being equal, the plaintiff would prevail. This cannot be correct. In my view, it is not consistent with the overall scope of section 40, especially when this section is looked at from the comparative law perspective. In none of the other jurisdictions referred to in the Annex is there any such "exception". Secondly, it must be kept in mind that in applying the first solution the senior mark is not deprived of protection in the envisaged situation. The senior mark continues to remain protected: it is simply that the confusion-condition must also be met.
22. The third reason is more complex, and its explanation is correspondingly lengthier. However, as will become clear later, this explanation is also relevant for other purposes and the point must therefore be treated in some detail. The third reason focuses on the meaning of goods (or services) of "the same description" on the one hand and "similar" goods (or services) on the other. One must begin by noticing that, as relevant in the present context, there are two types of proceedings under trade mark law: opposition proceedings and infringement actions.
Opposition proceedings are those where an application is made for registration of a mark, and the application is opposed. An example is the plaintiffs application for registration of the Aldo mark under class 25, which is opposed by the defendant, and the latter's application under the same class, which is opposed by the former. Infringement actions require no elaboration.
Opposition proceedings are of course taken with reference to the sections that prohibit registration of a mark. Now in this regard there is an important difference between the predecessor legislation and the statutory regimes now in force. Under the 1940 Act and the UK 1938 Act, the relevant provisions were, inter alia, sections 8(1)(a) and 10, and sections 11 and 12 respectively. (It will be noted that, as one would expect, these were similar.) Opposition proceedings were taken, inter alia, with reference to these sections. Under the 2001 Ordinance, and also in the other jurisdictions referred to in the Annex, the refusal of registration of a mark (and correspondingly, opposition proceedings) is dealt with quite differently. The grounds on which registration can be refused are divided into "absolute" and "relative" grounds. In the Annex, I have not set out the former since they are not relevant for our purposes. The sections giving the "relative" grounds have been reproduced and, as expected, there are many similarities between section 17 of the 2001 Ordinance and the equivalent sections in the statutes of the other jurisdictions. But there is another point that must be noted. When the "relative" grounds for refusal of registration on the one hand, and the provision setting out the situations in which a registered trademark is infringed on the other, as given in the 2001 Ordinance and its sister-statutes are compared, there are many similarities in the two. Thus, if we compare section 17 and section 40 of the 2001 Ordinance, we find essentially the same language being used to cover the same situations. The same position emerges when the other statutes are considered: see, e.g., respectively sections 5 and 10 of the UK Act, sections 11 and 29 of the Indian Act, and sections 8 and 27 of the Singapore Act. The similarities are of course by deliberate design and raise an obvious question of interpretation: are the "relative" grounds for refusal of registration, which are considered in opposition proceedings, to be construed and applied in the same manner as the sections that set out the infringement situations, and are applied in infringement actions? This is a question to which I will advert later. For now, it is pertinent to note that the terms "similar" goods and services are used in both sorts of provisions. It therefore follows, at least in the case of the 2001 Ordinance and the Australian Aci, that by reason of the definition clauses, goods and services of the "same description" are also covered in both provisions (see clauses (xliv) and
(xlv) of section 2 of the former, and section 14 of the latter).
23. In the predecessor legislation, while there were similarities between the sections setting out the grounds for refusal of registration, and the ones relating to infringement, there was one important difference. The former, but not the latter, used the phrase goods of the "same description". Thus, section 10 of the 1940 Act referred to such goods, but section 21 did not. Likewise, section 12 of the UK 1938 Act referred to such goods, but sections 4 and 5 (the infringement provisions) did not. One consequence of this was that the question whether the goods were of the "same description" was of direct relevance in opposition proceedings but not, as such, in infringement actions: For the reason just stated, this is unlike the position in the 2001 Ordinance and the Australian Act. Now, in both these statutes, there is no definition of what is meant by goods or services being of the "same description". There was no definition even under the old law. The question, in opposition proceedings under the old law, was therefore dealt with in the case law. The position in English law was stated as follows in Kerly (12th)(1986), the last edition of that treatise to come out under the UK 1938 Act (internal citations omitted; also see the "Important Note" in relation to this statute, as given in the Annex): "The test whether or not goods or services are "of the same description" would seem to be supplied by the question--Are the two sets so commonly dealt in by the same trader that his customers, knowing his mark in connection with one set and seeing it used in relation to the other, would be likely to suppose that it was so used also to indicate that they were his? The matter should be looked at from a business and commercial point of view. As Viscount Dunedin said in the "Nuvol," "The material considerations arising in connection with the registration of trade marks are practical." To the cases on this subject, the oft-quoted proposition that each was decided on its own facts is "peculiarly applicable": and the observations below should be read with this in mind.
It would seem clear that, before goods or services can be of the same description, there must be a description that covers both, although this is not a sufficient test for a description may be too wide to be usable.
In "Panda" Romer J. classified.the various matters to be taken into account in deciding whether goods are goods of the same description into three classes-- the nature and composition of the goods; the respective use of the articles; the trade channels through which the commodities respectively , are bought and sold." (paras 10-12)
The "Panda" case, which is reported as Jellinek's Application (1946) 63 RPC 59, and in which shoes and shoe-polish were held not to be goods of the same description, became established as a leading authority. The factors listed by Romer, J were widely cited, and were approved by the House of Lords in the "Daiquiri Rum" case [1969,] RPC 600.
24. In the UK Act the phrase goods and services of the "same description" has not been used; instead reference is only to "similar" goods or services, and the latter are not defined.
In British Sugar plc v. James Robertson & Sons Ltd. [1996] RPC 281 (also known as the "Treat" case, but herein after referred to as "British Sugar"), which was an infringement action, the question arose as to what was meant by "similar" goods or services in section 10(2). Jacob, J. in a judgment that is a leading English authority on the point, held as follows (pp. 296-7): "Under the old United Kingdom Act [i,e., the UK 1938. Act] there was a conception going by the words goods of the same description as those of the registered mark. It was important when the registrar was considering whether there was a prior conflicting registration (1938 Act, section 12(1)) .... The phrase depended on judicial gloss for its interpretation, and, as time went on, a body of examples on one side or the other built up by which people could go (See DAIQUIRI RUM Trade Mark [1969] RPC 600, HL approving lists of past decisions.) I believe that similar goods is the same sort of phrase. It not only appears in section 10(2) but is also an important matter for the registrar in considering registration. Section 5(2) forbids registration of a mark when there is an earlier identical or similar mark registered for similar goods....
I think the sort of considerations the court must have in mind are similar to those arising under the old Act in relation to goods of the same description. I do not say this because I believe there is any intention to take over that conception directly. There plainly is not. But the purpose of the conception in the old Act was to prevent marks from conflicting not only for their respective actual goods but for a penumbra also. And the purpose of similar goods in the Directive and Act is to provide protection and separation for a similar sort of penumbra. Thus I think the following factors must be relevant in considering whether there is or is not similarity: The respective uses of the respective goods or services; The respective users of the respective goods or services; The physical nature of the goods or acts of service; The respective trade channels through which the goods or services reach the market; In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are, likely to be found on the same or different shelves; The extent to which the respective goods or services are competitive. This inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectoRs, This is rather an elaboration on the old judicial test for goods of the same description (See per Romer J in Jellinek's Application (1946) 63 RPC 59 at p 70, approved by the House of Lords in DAIQUIRI RUM Trade Mark [1969] RPC 600 at page 620). It seeks to take account of present day marketing methods. I do not see any reason in principle why, in some cases, goods should not be similar to services (a service of repair might well be similar to the goods repaired, for instance). I do not pretend that this list can provide other than general guidance. The fact is that the Directive and hence our Act have introduced an area of uncertainty into the scope of registration which in many cases can only be resolved by litigation." (emphasis in italics supplied; that underlined in original)
It will be seen from the foregoing that Jacob, J aligned the meaning of "similar" goods or services with that of "same description". As he clarified, it is not exactly the same.
Nonetheless, since the factors listed by him are an elaboration of those set out earlier by Romer, J, for all practical purposes it would seem that there may now be relatively little to distinguish between "similar" goods or services on the one hand, and those of the "same description" on the other.
The factors identified by Romer, J and Jacob, J have found wide acceptance. Thus, the Singapore Court of Appeal, while considering the nature of "similar" goods in terms of section 27(2)(b) of the Singapore Act, has applied the factors set out in British Sugar: see Sarika Connoisseur Cafe Pte Ltd. v. Ferrero SpA [2012] SGCA 56 [2013] 1 SLR 531 at [40]-[49].
It is to be noted that, like the UK Act, the Singapore Act does not define "similar" goods or services. In India, where the Indian Act does not define "similar" goods and services, British Sugar is also cited. Reference may be made to a recent decision of the Bombay High Court (dated 24.06.2015) titled Indchemie Health Specialties. Pvt Ltd. v. Intas Pharmaceuticals Ltd and another, and to Balkrishna Hatcheries v. Nandos International Ltd. and another 2007
(35) PTC 295, also a decision of that High Court. In Australia, the factors identified by Romer, J were adopted by the High Court of Australia in relation to opposition proceedings under the predecessor Australian legislation: see Southern Cross Refrigeratihg Co v Toowoomba Foundry Ply Ltd [1954] HCA 82; (1954) 91 CLR 592. In McCormick & Company Inc v McCormick [2000] FCA 1335 the Federal Court of Australia applied those factors in relation to a case arising out of opposition proceedings, and with reference to the definition of "similar" goods given in section 14(1) of the Australian Act. See also Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, another decision of the Federal Court. In MID Sydney Pty Ltd v Australian Tourism Co Ltd and others [1998] FCA 1616 the Federal Court, keeping in view the definition of "similar" services in section 14(2), applied the same principles, with suitable modifications, to services of the "same description".
As the foregoing survey of foreign jurisdictions indicates, "similar" goods and services are, for most practical purposes and in relation to both opposition proceedings and infringement actions, to be treated in the same manner as goods and services of the "same description", and this is so regardless of whether or not the former terms are defined in the relevant statute. The question that now needs to be considered is whether the same approach is to be taken in relation to the 2001 Ordinance? In order to answer this question, it is necessary first to consider the Pakistani case law arising under the 1940 Act that was cited by learned counsel for the plaintiff. In particular, three Supreme Court decisions, reported as Seven-Up Company v.
Kohinoor Thread Ball Factory and others PLD 1990 SC 313 (decided on 08.08.1989), Alpha Sewing Machine Company v. Registrar of Trade Marks and another PLD 1990 SC 1074 (decided on 23.06.1990) and Kabushiki Kaisha Toshiba (also trading as Toshiba Corporation) v. Ch. Muhammad Altaf and another PLD 1991 SC 27 (decided on 20.09.1990) require close consideration. These cases arose out of opposition proceedings under the 1940 Act. Although the provision principally in issue was section 8(1)(a) the judgments are also relevant for purposes of section 10, which, as will be recalled, referred to goods of the "same description". Since this phrase has been carried over into the 2001 Ordinance not only in the definitions of "similar" goods and services and also by way of direct use (i,e., in clauses (a) and (c) of section 40(3)), these decisions continue to 'have relevance in the present context. In particular, what needs to be seen is the manner in which the decisions shed light on what is meant by goods being of the "same description'.
27. The judgment in Seven-Up Company v. Kohinoor Thread Ball Factory and others PLD 1990 SC 313 decided seven separate appeals as common questions of law were involved. The appeals fell into two categories, in one of which the senior mark was "7-Up" or "SEVEN-UP" and in the other was "SONY". Six of the appeals fell in the first category, while one was in relation to the latter trademark. The 7-Up mark was registered in class 32 of the rules framed under the 1940 Act, in respect of beverages. In three of the appeals in the first category, the application for registration of the junior mark was, respectively, for thread (class 23; CA K-32/1977), soap (class 3; CA K33/1977) and wool (class 23; CA K-34/1977). In each case the proprietor of the senior mark (the Seven-Up Company) had opposed registration but the Registrar . rejected it, and the proprietor's appeal to the High Court failed. Thus, in these cases, the appellant in the Supreme Court was the proprietor of the senior mark. The remaining three appeals. in the first category related to "pan masala" and/or "supari", for which the junior mark was sought to be registered in class 30. In one of the appeals (CA K-35/1977) the Registrar rejected the opposition filed by the Seven-Up Company and the latter's appeal to the High Court also failed, In the remaining two appeals (CAs Nos. K-40 and K-41, both of 1985) the Registrar rejected the opposition, but on appeal the High Court allowed the same. Thus, in respect of the registration of the junior mark for "pan masala" and/or "supari", in one case the appellant was the proprietor of the senior mark, whereas in two cases the appellants were the persons seeking registration of the junior mark. Finally, in the second category, the appeal relating to the SONY trademark (CA K-83/1978), the senior mark was registered in class 9 in respect of electronic appliances of various sorts and the junior mark was sought to be registered in class 23 in respect of sports goods. The Registrar rejected the opposition filed by the Sony Corporation and the latter's appeal to the High Court failed. Thus, the appellant was the proprietor of the senior mark.
28. As already noticed, the registration of the junior marks was opposed under section 8(1)
(a) of the 1940 Act. There is a similar provision in the 2001 Ordinance in section 14, which sets out the "absolute" grounds for refusing registration: see subsection 3(a). Since the present Suit is an infringement action, and does not arise out of opposition proceedings, this ground is not relevant for present purposes. Therefore, with respect, it is not necessary to consider how the Supreme Court dealt with and interpreted section 8(1)(a). What is relevant is how the appeals were disposed off. In particular, the observations made regarding the goods in respect of which the junior marks were sought to be used need to be carefully considered. It was observed as follows (pp. 345-6; emphasis supplied): "Applying the law to the facts of the cases before us, it is clear that the identity of the Trade Mark '7-Up' for wool, thread, soap and 'Sony' for sports goods does not go beyond a stage where one can infer the slightest likelihood of deception of confusion to earn protection in a Court of law. The goods are entirely different. Their manufacturing and marketing methods are different. The category of consumers served is not the same. The outlets for their sale are also different. With so many variables, all pertaining to the goods and consumers thereof the mere identity of the trademark cannot justify our interference in the conclusions drawn by the Registrar and the High Court, nor can such interference be. sustained on the plain words of the statute. Therefore, the appeals, Civil Appeals Nos. K-32, K-33, K-34 of 1977 and K-83 of 1978 are liable to be dismissed and are dismissed with costs.
As regards Nan Masala", (Powder Supari) and Sweet and Scented Supari, there are two conflicting judgments of the High Court. The fact that the [Seven-Up Company] is a multinational of international repute in the market for beverages and for that reason not likely to engage itself in trading in such an indigenous product may academically be sound for a marketing analyst but really of no or very little concern to the class of consumers served by these products. Their sale points and outlet points are quite often the same. The consumers served are largely of the same category. Both the products, though classified differently for the purpose of trademark fall, from consumers' point of view, in the same category of light refreshment or "Pep" preparations. Their features do make out a case of there being likelihood of confusion or deception with regard their source. The applicants for this registration mark had a wide and open field to choose from. They decided upon the trade name of another which also happens to be name of the company which has heavily invested in that trade name and goodwill appurtenant to it. With that real likelihood of deception and confusion it was clearly a case where registration should have been refused. For this reason Civil Appeal No,K-35 of 1977 is allowed with costs and the judgment under appeal as well as the order of the Registrar is retained and registration of the Trademark is refused, while Civil Appeals Nos.40 and 41 of 1985 are dismissed with costs."
In my respectful view, when these observations are considered, it is clear that "pan masala" and/or "supari" would be regarded as goods of the "same description" as beverages, whereas the other goods, i,e., sports goods and those relating to wool, thread and soap would not be so regarded with reference to electronic appliances and beverages respectively. The factors (especially the portions emphasized) that persuaded the Supreme Court to dispose off the appeals in the stated manner also, in my respectful view, accord with, and certainly do not contradict, the factors identified by Romer, J in Jellinek's Application (1946) 63 RPC 59.
29. The next case, Alpha Sewing Machine Company v. Registrar of Trade Marks and another PLD 1990 SC 1074, was a leave refusing order. The petitioner before the Supreme Court sought to register the "Philips" mark for their product, which were sewing machines. The proprietor of the senior mark (a company that was part of the Philips group) filed an opposition (again, in terms of section 8(a)(1)), which was sustained by the Registrar. An appeal to the High Court failed and the applicant petitioned the Supreme Court for leave to appeal. Leave was refused.
The Supreme Court reproduced the relevant extracts from the judgment of the High Court, from which the following may be noted for present purposes (pg. 1076): "With the proliferation of means of communication media the names and products of word renowned big companies are catching the eyes and ears of the public at large in all civilized countries of the world and Pakistan is no exception. Extensive travelling abroad in the recent past has made it possible for the people of Pakistan to have knowledge of the internationally renowned companies and their products. Respondent 2 is no doubt a company of world renown and its products are marketed in Pakistan as also in other countries. <u>It is not uncommon now -a-day to find sewing machines being sold at the same shop where household appliances manufactured by Respondent 2 bearing Trade Mark PHILIPS are offered for sale.</u> The contention of the learned counsel for the appellant that the goods of the appellant and respondent 2 are not purchased by the same category of customers as the sewing machines manufactured by the appellant are to be bought by tailors and some of the housewives can be accepted only with a grain of [salt]. The purchase of sewing machine is not restricted to tailors and housewives; other members of the public do make purchase of sewing machines for various purposes. Also like anybody else tailors and housewives indulge in purchase of domestic appliances manufactured and marketed by Respondent 2. If any purchaser of sewing machine were to be offered for sale a machine manufactured by the appellant bearing the mark PHILIPS, he would naturally take it to be a product of respondent 2 and with the image of quality which he has in his mind regarding respondent 2's products he might readily but it only to find soon afterwards that he had been duped and cheated. There is every likelihood of causing of deception and confusion with the use of the PHILIP by the appellant and in such a case different nature of goods loses relevance." (Emphasis underlined is in the judgment of Supreme Court; emphasis italicized is supplied)
Again, in my respectful view, as relevant for present purposes, the petitioner's sewing machines and the appliances sold by the Philips group would be regarded as being goods of the same description. Furthermore, as is clear from the extract reproduced above (which was approved by the Supreme Court), the factors involved were not different from those identified by Romer, J in Jellinek's Application.
30. The third case, Kabushiki Kaisha Toshiba (also trading as Toshiba Corporation) v. Ch. Muhammad Altaf and another PLD 1991 SC 27 involved 'the senior mark (TOSHIBA) of the appellant Toshiba Corporation, which had been registered in different classes as set out in the judgment at pg. 29, including class 11. Registration was sought for the junior mark in class 11 for electric fans. In that class, the senior mark was registered for installation for lighting and heating. Toshiba Corporation opposed the proposed registration. The registrar allowed the junior mark to proceed to registration, and Toshiba Corporation's appeal to the High Court failed.
However, the appeal in the Supreme Court succeeded, and registration was refused. To the extent relevant for present purposes, it was, inter alia, observed as follows (pg. 33): "9. ... The appellant is extensively in the manufacture of electrical appliances having a registered trade mark for lighting and heating. Electric fans fall in the category of electrical appliances for which the appellant has earned world-wide reputation apart from registration of its goods under various classes in this country. So far as Articles in domestic use are concerned, an impression can be formed even outside the recorded evidence...."
Although, with respect, it is not clear whether the Supreme Court would have regarded the goods for which registration of the junior mark war sought as being those of the same description as the goods for which the senior mark was registered, or was more persuaded by the reputation of the latter mark, what is important is that there is nothing in the judgment as would negate use, in appropriate circumstances, of the factors identified by Romer, J in Jellinek's Application.
Having considered the point, in my view, for purposes of ascertaining the meaning of goods or services of the "same description" and also "similar" goods or services, as used in the 2001 Ordinance, reliance can be placed on the factors listed by Romer, J and Jacob, J in Jellinek's Application and British Sugar respectively. Not only is there nothing in the three Supreme Court decisions cited by learned counsel for the plaintiff that would negate such reliance, it would also be in accord with developments in other common law jurisdictions, as noted above. Since the factors listed in British Sugar are an elaboration of those identified by Romer, J., for all practical purposes, the meaning of "similar" goods or services can be regarded as aligned with the meaning of goods or services of the "same description" for purposes of the 2001 Ordinance. I conclude and hold accordingly, subject only to this reservation that I do not agree with Jacob, J's observation that he did not "see any reason in principle why, in some cases, goods should not be similar to services". With respect, this does not accord with the language used in the various subsections of section 40 or its overall structure.
It will be appropriate to pause here in order to recapitulate. What has been under consideration is the anomaly in section 40 identified in paras 18 and 19 above, and my elaboration of the third reason as to why I have preferred the first solution over the second in order to address it (see paras 20 to 22 above). As the extended analysis just concluded makes clear, the second solution cannot be adopted also because of the alignment in the meaning of goods or services of the "same description" on the one hand, and "similar" goods or services on the other. Because of this alignment no "exception" can meaningfully be carved out, as would be required for purposes of the second solution.
Accordingly, I conclude that if the proprietor of the registered mark seeks to make out a case of infringement of his mark in terms of clauses (a) or (c) of subsection (3) of section 40 on the basis of the identity between the senior and junior marks, then he ought not to be allowed to do so as this would be anomalous. He must, instead,. be directed to make out a case in terms of clause (a) of subsection (2).
I turn to consider the next question, which is as regards the approach to be taken in applying section 40, especially in its subsection (2). The approach taken by English law is informed by the decisions of the ECJ since EU law is involved. Those judgments include Sabel v. Puma (C-251/95 dated 11.11.1997) [1998] RPC 199 ("Sabel") and Canon v. MGM (C-39/97 dated 29.09.1998) [1999] RPC 117 ("Canon"). By these decisions the ECJ has established what is known as the "global appreciation" approach. This is the approach applied by English courts in respect of section 10(2) (infringement) and section 5(2) (relative grounds for refusal of registration) of the UK Act.
(There is however an important distinction in ECJ/English jurisprudence between opposition proceedings on the one hand and infringement actions on the other. This will be alluded to later.) The "global appreciation" approach has been described as follows in Kerly (15th)(2011)
(Ram 14-083; internal citations omitted; emphasis supplied): "As in the case of section 5(2) of the [UK] Act, the words of section 10(2) and of Article 5(2)
(b) of the [EU 1988 Directive] require that the likelihood of confusion is caused by the identity or similarity of the marks and the goods or services. That likelihood is to be assessed globally taking into account all relevant factors, including the degree of similarity between the relevant marks, the degree of similarity between the relevant goods or services, the likely perception of the marks in the minds of the average consumer of the goods or services in question and the degree of distinctiveness of the earlier mark."
The Singapore courts have not accepted the "global appreciation" approach. They have developed a "step-by-step approach" while applying section 27(2) (infringement) of the Singapore Act, This approach was first articulated by the Singapore Court of Appeal in The'
Polo/Lauren Co, LP v Shop In Department Store Pte Ltd (2006) SGCA 14, [2006] 2 SLR 690 ("Polo (CA)"), an infringement action. The Court in fact applied a test identified by Jacob, J in British Sugar (which, it will be noted, predated the two ECJ decisions noted above). It was observed as follows (emphasis supplied); "7. The trial judge ... did not accept the respondent's argument that the better approach should be the global assessment test enunciated by the European Court of Justice in cases such as [Sabel] and [Canon] which focused on the ultimate question whether or not there was a likelihood of confusion. In that test, all the other matters mentioned in section 27(2)(b) would be just factors or circumstances to enable the court to come to the ultimate issue as to confusion.
8. In our opinion, having examined the express wording of section 27(2)(b), the step-by-step approach adopted in British Sugar is conceptually more appropriate and is in line with the structure of the provision. It seems to us that there will be infringement under that provision only if three conditions are present. First, the alleged offending sign must be shown to be similar to the registered mark. Second, both the sign and the mark must be used in relation to similar goods or services. Third, on account of the presence of the first two Conditions, there exists a likelihood of confusion on the part of the public.... While we can see some link and overlap between the first and the third conditions, it is clear that they are different. The fact that a sign is similar to a registered mark does not automatically mean that there will be a likelihood of confusion on the part of the public. That is a question of fact to be determined by the court, taking into account all the relevant circumstances. Moreover, the question of similarity is really a matter of degree. In a broad sort of sense, the greater the similarity between a mark and a sign, the greater will be the likelihood of confusion. However, if either of the first two conditions is not satisfied there will not be any need to go into the third question of determining whether there exists a likelihood of confusion. Neither does it mean that if the mark and the sign are similar, and they are used on similar goods, that there will ipso facto be confusion in the minds of the public. If that was intended, section 27(2)(b) would have been phrased differently. As presently worded, there is no presumption of confusion once the two aspects of similarity are present. To determine the existence of confusion, the court is entitled to look outside the mark and the sign, as well as the articles, to assess whether there exists a likelihood of confusion.. , As we see it, the global assessment test is likely to confound the final issue of confusion with the first two prerequisite conditions...."
The "step-by-step approach" has been reaffirmed by the Court of Appeal in Stay well Hospitality Group Pty Ltd v Star wood Hotels and Resorts Worldwide, Inc and another [2013] SGCA 65, [2014] 1 SLR 911 ("Staywell"), where it was observed as follows: "15. ... It is clear from the plain words of sections 8 as well as 27 of the [Singapore] Act that the only relevant type of confusion for the purpose of grounding an opposition or an infringement action, is that which is brought about by the similarity between the competing marks and between the goods and services in relation to which the marks are used. Since this court's decision in Polo (CA), our courts have given effect to this statutory wording by applying what is now known as the "step-by-step" approach, as opposed to the competing "global appreciation approach" applied in Europe after [Sabel]. Under the step-by-step approach, the three requirements of similarity of marks, similarity of goods or services, and likelihood of confusion arising from the two similarities, are assessed systematically. The first two elements are assessed individually before the final element which is assessed in the round. Under the global appreciation approach the elements of similarity between marks and goods or services, whilst still necessary ingredients in the confusion inquiry, are elided with other factors going towards the ultimate question of whether there is a likelihood of confusion (see [Sabel] at 223-224, and [Canon] at 132). Whilst there have been suggestions that the two approaches might be distinct without being different, we maintain this dichotomy and endorse the step- by-step approach as being conceptually neater and more systematic and, importantly as being more aligned with the requirements imposed under our statute (see Polo (CA)) at [81)."
(Emphasis supplied except for the first, which is in the original)
35. Having considered the point I am of the view that the approach developed by the Singapore courts is to be preferred over that of the ECJ. In my view, the "step-by-step approach" accords better with the statutory provisions, for the reasons stated by the Singapore Court of Appeal.
Therefore, I hold that that is the approach to be taken when applying section 40 of the 2001 Ordinance, especially its subsection (2). I would however make two comments. The first is by way of a modifier. In applying the "step-by-step approach" it is not necessary to apply the first two steps in any particular order. The matter is at the discretion and convenience of the Court. It may either, as indicated by the Singapore Court of Appeal, first consider whether the senior and junior marks are identical or similar and then move on to consider the identity or similarity between the relevant goods or services, or this order may be reversed. The second comment is by way of a caveat. It is to be noted that while section 27(2)(b) of the Singapore Act refers to the senior and the junior marks as being identical or "similar", section 40(2) refers to the marks being identical or "deceptively similar". It will be recalled from para 17 above that because of the definition of "deceptively similar", there is an overlap between this phrase and what I have called the confusion-condition, and the plaintiff may have to prove the same thing twice over. This overlap has a bearing on those observations of the Singapore Court of Appeal, in the extracts reproduced above, to the effect that establishing that the senior and junior marks are similar does not ipso facto lead to a conclusion that there is a likelihood of confusion on the part of the public, etc. Since section 40(2) requires that the junior mark be shown to be "deceptively similar" to the senior mark, it may well be that under our law, to satisfy this condition is, essentially, also to establish the confusion-condition. The observations of the Singapore Court of Appeal must therefore be read and applied in the context of section 40(2) subject to this caveat.
36. Before I proceed further, one point may also be made, though this is only by way of a marker, for future consideration in an appropriate case. The European Court of Justice has highlighted, in 02 Holdings Ltd. v. Hutchison 3G UK Ltd (Case C-533/06, decided on 12.06.2008)
(an infringement action) the difference between opposition proceedings on the one hand and an infringement action on the other. Professor David Llewelyn, in the article by him referred to above (see para 13), has identified the difference as follows (pg. 347): "In the former, the registry or the court is engaging in an abstract assessment (although the distinctiveness of the registered mark may be taken into account), whereas in the latter, the decision is a contextual one, taking into account "all the circumstances of that use that are likely to operate in [the] average consumer's mind in considering the [allegedly infringing] sign and the impression it is likely to make on him" [citing here from the English Court of Appeal in Specs avers International Healthcare Ltd. v. Asda Stores Ltd. [2012] EWCA Civ 24]".
The difference can have important consequences, as explained in Kerly (15th)(2011) (para 9- 030; emphasis supplied): "The global appreciation assessments in relation to the relative grounds in section 5 must be made on the basis of fair and notional use of the earlier and later marks, rather than by taking into account the actual use in the marketplace as required in the equivalent assessments in relation to infringement (under section 10). This may have the consequence that, for example, a tribunal finds that on the basis of notional and fair use there was a likelihood of confusion between the earlier and the later mark under section 5(2) and therefore the later mark was refused registration; but another tribunal later finds no infringement of the later mark under section 10(2) by reason of the circumstances of actual use of the registered mark and the defendant's mark that the original tribunal refused to register."
These (and other) aspects of ECJ jurisprudence were considered in detail by the Singapore Court of Appeal in Stay well, a case arising out of opposition proceedings, and the foregoing extract from Professor Llewellyn's article has been cited with approval (see at [60]). However, since I am not concerned with opposition proceedings, I leave consideration from a Pakistani law perspective of the ECJ/English jurisprudence and the decision of the Singapore Court of Appeal in Stay well for an appropriate future case, when this Court has actually to grapple with such issues.
I mention these points in passing only because of their undoubted importance in, and for, the continuing development of trade mark law in this country under the 2001 Ordinance.
37. The stage is now set for consideration of the bases on which the plaintiff alleges infringement of its registered trademarks. The particulars of the marks are given in the table in para 6 while the specific subsections/clauses of section 40 on which the action is brought are set out in the table in para 7. I begin with Trademark No, 269118, whereby the plaintiffs mark is registered in class 14. It is alleged that the use by the defendant of its mark is in violation of section 40(2)(a) insofar as this registration is concerned. It will be recalled from para 16 above that subsection (2) deals with three situations. Clause (a) is the first, where the junior mark is identical with the senior mark, and is used in relation to goods or services (as the case may be) that are similar to the goods or services for which the senior mark is registered. Here of course, I am concerned with goods. By invoking clause (a), the plaintiff asserts that defendant's mark is identical with its registered mark and that is therefore the first question that must be addressed: is this so? In my view the answer should be in the affirmative. No doubt there are certain differences between the two marks, inasmuch as the senior mark is simply the word "Aldo" whereas the junior mark also has a device on one side. However, in my view, any such differences are inconsequential. It has been said in Kerly (15th)(2011), in relation to the identity of marks in terms of section 10 of the UK Act, that it is: "... a matter to be considered from the perspective of the average consumer. A [mark] will be identical with the registered mark where it reproduces, without any modification or addition, all the elements constituting the mark or where, viewed as a whole, it contains differences so insignificant they may go unnoticed by the average consumer." (para 14-066; internal citations omitted)
In my view, the defendant's mark comes within the ambit of the foregoing and I therefore hold it to be identical with the plaintiff's mark.
The next question (and it must be kept in mind that I am applying the "step-by-step approach" developed by the Singapore Court of Appeal, which I have accepted for purposes of the 2001 Ordinance) is whether the defendant's goods are similar to the goods covered by the plaintiff's specification for class 14. As has been considered in detail above, the meaning of "similar" goods and goods of the "same description" (which are in any case the same, by definition, for the 2001 Ordinance) have been aligned in the case law, principally by the decision of Jacob, J in British Sugar. The question therefore is whether the factors listed by the learned Judge (for which see para 24 above) apply in relation to the goods listed in the plaintiff's specification in class 14 on the one hand, and the defendant's goods, which are shoes, on the other? In my view, the answer might to be in the negative. The plaintiff's goods are sold in "Aldo" stores (of which there are none in Pakistan) or over the internet whereas the defendant's shoes are only sold, so it would appear, at its own store. Thus, they do not reach the market through the same trade channels. The respective uses of the respective goods and their physical nature are clearly different, one from the other. The respective goods are also not competitive. The factors listed in British Sugar are inapplicable and hence, in my view, it cannot be said that the respective goods are either similar or of the same description. As has been explained by the Singapore Court of Appeal, if either of the first two "steps" results in a negative answer, it is not necessary to consider the third "step", i,e., that there exists a likelihood of confusion on the part of the public (what I have called the confusion-condition).
In my view therefore, the plaintiff has been unable to make out a case of infringement in respect of Trademark No,269118 on the basis of a violation of section 40(2)(a).
I turn to the plaintiff's next Trademark, No, 269117, registered in class 18. This registration is also in respect of goods, as specified by the plaintiff (see the table in para 6 above). Again, the grievance is that the use by the defendant of its mark infringes this trademark in terms of section 40(2)(a). In my view the plaintiff has been unable to make out any such case. The reasons for this conclusion are essentially the same as just given in relation to Trademark No, 269118 and it would serve no purpose to set them out in detail again. This is subject to one clarification, namely that one of the goods listed in the plaintiffs specification is "shoe bags".
This could conceivably have had some relation to the defendant's goods, which are shoes.
However, in my view the factors listed in British Sugar do not apply in respect of the plaintiffs shoe bags on the one hand and the defendant's shoes on the other and hence there is no infringement. This conclusion is not unusual or surprising since all depends on the facts and circumstances of the particular case. It will be recalled that, after all, in Jellinek's Application shoes and shoe-polish were held not to be goods of the same description. Before proceeding further, I may make one point. As is clear from the averments in the plaint, the relevant extracts from which have been reproduced above, it is the plaintiffs case that its goods do reach Pakistan, although it has not specified with any clarity in what particular class or category, nor has the numbers that arrive in this country whether through direct sales or indirectly by way of gifts, etc. (as averred in the plaint) been particularized to any meaningful degree. Be that as it may, one point is at least clear: in relation to the goods specified in Trademark Nos. 269117 and 269118, it is not, and cannot be, the plaintiffs case that its trademarks are not being used in this country.
I turn to the third Trademark, No, 269115, registered in class 35. This registration is for services, and as noted in the table in para 7, the plaintiff here alleges infringement in terms of a number of subsections/clauses of section 40. I take up the provisions relied upon in seriatim. The first is clause (b) of subsection (2). It will be recalled that this clause covers the second and the third of the three situations to which subsection (2) relates (see para 16 above). Clause (b) applies when the junior mark is "deceptively similar" to the senior mark. It does not apply if the two marks are identical. Now, the plaintiffs mark, as registered in all three classes, is exactly the same. In respect of the other two registrations the plaintiff has claimed that the defendant's mark is identical with its mark, and I have accepted this position. Obviously, the plaintiff cannot approbate and reprobate. It cannot, in respect of exactly the same mark registered in different classes claim in respect of some classes that the junior mark is identical with the registered mark and in respect of others that it is "deceptively similar". Hence, it is not open to the plaintiff, in respect of Trademark No, 269115, to make out a case on the basis that the junior mark is "deceptively similar" to its mark in this (or, indeed, in any other) class. Accordingly, I hold that the plaintiff cannot be allowed to allege infringement of its Trademark No, 269115 in terms of clause
(b) of subsection (2).
The next provision that the plaintiff has relied upon is section 40(3), and here a case is sought to be made out in terms of all four of its clauses. Subsection (3), in its clauses (a) and (c), has already been considered in some detail herein above and the following discussion must be read conjunctively with that analysis. When the subsection is examined as a whole, it would appear that, in principle, it can apply in eight situations. This is because each of its four clauses relates to a separate situation, and each clause can in turn relate to two sorts of junior marks, those either identical with or "deceptively similar" to the senior mark. This thus gives, in principle, a total of eight possible situations. However, it will be recalled from the detailed analysis of the anomaly detected in section 40 that I have concluded that if the junior and senior marks are identical, and a case of infringement is sought to be made out in terms of either clauses (a) or (c) of subsection (3), then the proprietor of the senior .mark must be directed to instead make out a case in terms of clause (a) of subsection (2). Thus, as I read and apply subsection (3), two of the eight situations are not available and hence the situations actually possible in terms of this subsection are six. The position under subsection (3) can be "set out in tabular form as follows: Situation #Relation between senior and junior marksRelation between respective goods/services ' 1Identical Goods on both sides, of the same description (clause (a)): action not maintainable on account of anomaly 2Identical Services on both sides, of the same description (clause (c)): action not maintainable on account of anomaly 3Deceptively similarGoods on both sides, of the same description. (clause (a))
4Deceptively similarServices on both sides, of the same description (clause (c))
5Identical Services under junior mark, which are closely related to goods for which senior mark is registered (clause (b))
6Identical Goods under junior mark, which are closely related to services for which senior mark is registered (clause (d))
7Deceptively similarServices under junior mark, which are closely related to goods for which senior mark is registered (clause (b))
8Deceptively similarGoods under junior mark, which are closely related to services for which senior mark is registered (clause (d)).
Since the plaintiff's mark and the defendant's mark are identical, four of the situations (Nos. 3, 4, 7 and 8) are ruled out in the facts and circumstances of the present case. Of the remaining four situations, two (Nos. 1 and 2) need not be considered under subsection (3) on account of the anomaly in section 40. The plaintiff must, in relation to these two situations, be directed to make out its case in terms of clause (a) of subsection (2). However, even here, one of the situations (No, 1) would not be applicable in any case. This is for the reason that that requires both the senior and junior marks to be used in relation to goods. The trademark registration currently under consideration is in class 35, which relates to services. Hence situation No, 1 cannot in any case arise in the present context. Of the two situations remaining under subsection (3) (Nos. 5 and 6), one (No, 5) is not applicable in the present context since that requires the senior mark to be registered in respect of goods, and Trademark No, 269115 is registered in respect of services. Thus, the net position that emerges is that only two situations require consideration: Nos. 2 and 6. The former, because of the anomaly, must be considered under clause (a) of subsection (2), while the latter is to be considered under subsection (3). I turn to a seriatim consideration of these two situations.
42. Taking up situation No, 2 in terms of clause (a) of subsection (2), and applying the "step-by- stepapproach", the first step stands answered in favour of the plaintiff since the two marks have already been found to be identical. The second step in the present scenario requires the services for which the plaintiff's mark is registered to be "similar" to the services for which the defendant is using its mark. That, by definition, includes services of the "same description". The services for which the plaintiff's Trademark No, 269115 is registered are set out in the table in para 6 above and the specification can, for present purposes, be stated to be: "Retail store services and retail on-line services in the field of ... footwear, footwear accessories [and] footwear ... care products ...." The services in the case of the defendant are of course the operation of its (retail) shoe store under the name "Aldo Shoes". It will be recalled that in Australia, the Federal Court has held in MID Sydney Pvt Ltd. v. Australian Tourism Co Ltd and others [1998] FCA 1616 that the factors listed by Romer-J for goods being of the same description apply, with any necessary modifications, to a determination of whether services are of the same description. In my view, the same position obtains in Pakistani law under section 40, and the factors listed by Jacob, J in gratis Sugar for determining whether goods are similar apply, with any necessary modifications, to a determination whether services are similar. (BY definition, this would also cover a determination whether services are of the same description.)
In the facts and circumstances of the present case, it is not however necessary to consider those factor, The reason is that the defendant runs a retail shoe store, and the plaintiffs specification expressly covers retail store services in the field of footwear, etc. Therefore, prima facie, the services under the defendant's (junior) mark are similar to the plaintiffs (senior) mark. Thus, the second step also stands answered in favour of the plaintiff. This therefore requires consideration of the third step, namely whether there exists a likelihood of confusion on the part of the public. It is crucial to keep in mind that I am here considering the plaintiffs mark and its alleged infringement in the context of services only, and not goods. The plaintiff admittedly does not use its trademark in Pakistan in respect of class 35. No services as per the specification are provided for the simple reason that the plaintiff does not operate any stores in this country. Furthermore, as far as can be made out, shoes cannot be ordered directly for Pakistan over the Internet by availing the plaintiffs on-line services. Can there be a likelihood of- confusion on the part of the public even if there is no use of the senior mark at all in this country? To consider this question, reference can be made to a leading English authority, Compass Publishing BV v. Compass Logistics Ltd. [2004] EWHC 520 (Ch), [2004] RPC 41 ("Compass Publishing"). This was an infringement action and the senior and junior marks were in respect of services. It was held as follows by Laddie, J (emphasis supplied): "22. It is frequently said by trade mark lawyers that when the proprietor's mark and the defendant's [mark] have been used in the market place but no confusion has been caused, then there cannot exist a likelihood of confusion under [section 10(2) of] ... the [UK] Act .... So, no confusion in the market place means no infringement of the registered trade mark. This is, however, no more than a rule of thumb. It must be borne in mind that the provisions in the legislation relating to infringement are not simply reflective of what is happening in the market. It is possible to register a mark which is not being used. Infringement in such a case must involve considering notional use of the registered mark. In such a case there can be no confusion in practice, yet it is possible for there to be a finding of infringement. Similarly, even when the proprietor of a registered mark uses it, he may well not use it throughout the whole width of the registration or he may use it on a scale which is very small compared with the sector of trade in which the mark is registered and the alleged inf-ringer's use may be very limited also. In the former situation, the court must consider notional use extended to the full width of the classification of goods or services. In the latter it must consider notional use on a scale where direct competition between the proprietor ,and the alleged infringer could take place.
23. This is of significance in this case because, as noted above, there is no suggestion that there has been any confusion in the market place between the activities of the Defendant under the sign "COMPASS LOGISTICS" and the Claimant, or any other member of the Compass Group, under the mark "COMPASS". [Counsel for the Defendant] relies on this as being a good indication that there is no likelihood of confusion. But in my view [counsel for the Claimant] is right when he argues that the question of infringement has to be answered by assessing the likelihood of confusion were the Claimant to use the mark "COMPASS" in a normal way in respect of all services covered by the registration, including for business consultancy services in the field of logistics, that is to say the same specialist field the Defendant operates in."
On the facts before it, the High Court held that there had been infringement and gave relief accordingly. Compass Publishing has been cited and applied many times and in different jurisdictions. It has been cited with approval by the Singapore Court of Appeal in Stay well (see at [SO]) and has, most recently, been applied by the English Court of Appeal in Maier and another v. Asos plc and another [2015] EWCA Civ 220. I accept that the foregoing observations in Compass Publishing apply in Pakistani law to section 40. However, it is pertinent to note that the judgment was on the main action, i,e., in the suit after trial. I, on the other hand, am concerned with an application for interim relief. In my view, keeping in mind the facts as stated above, and the law as enunciated in Compass Publishing, the plaintiff has made out a prima facie case that there would be a likelihood of confusion on the part of the public. This is on a consideration, on the one hand, of the "notional use extended to the full width of the classification of [the] services" specified by the plaintiff in Trademark No, 269115 even though it does not operate any stores in this country (i,e., does not actually use the senior mark in class 35) and, on the other, of the defendant's actual use of the junior mark in respect of the services provided by it, i,e., the operation of its shoe store. Prima facie, the latter comes within the ambit of the former. However, as is well known, it is not enough for a plaintiff to establish only a prima facie case while seeking/interim relief. It must also show that the balance of convenience lies in its favour and that it will suffer irreparable loss and injury. Given that the plaintiff does not operate any stores in Pakistan, nor, as far as can be ascertained, has any immediate intention of doing so, it may fail to establish the other two "ingredients" for interim relief in respect of the infringement of its Trademark No,269115. However, I expressly do not record any finding on this point because there is yet another aspect to consider. It is also well established that interim relief is at the discretion of the Court and can be refused in appropriate circumstances even if all three "ingredients" lie in favour of the plaintiff. Now, it will be recalled that the plaintiff has a trademark application (No, 269116) pending for its mark under class 25, which relates to footwear. This is being opposed by the defendant. The latter also has an application (No, 263362) pending in the same class, which is being opposed by the plaintiff.
In principle, there are three possible outcomes: (i) the plaintiff's mark is registered and the defendant's application is refused; or (ii) the defendant's mark is registered and the plaintiff's application is refused; or (iii) both marks are registered subject to suitable conditions/disclaimers, etc. Thus, it cannot be ruled out that the defendant's mark may be registered. If so, then the defendant would be entitled to use it in respect of its goods, i,e., shoes. In my view, it could, in such a situation, be incongruous that the defendant would be able to sell shoes under its mark but be unable to operate a shoe store under the same name, even though the plaintiff does not operate any such store in this country. In my view, it would therefore be more appropriate to await the outcome of the pending applications in respect of registration under class 25, and defer further consideration at this stage of whether the plaintiff is entitled to interim relief in the context of situation No,
2. However, if the plaintiff succeeds in respect of its pending application under class 25, it would then be entitled to renew its application for interim relief on the basis also of infringement of its Trademark No, 269115 in the present context, and any such application, if filed, will be dealt with on its own merits. For all of the foregoing reasons therefore, I am of the view that at this stage further consideration of whether the plaintiff is entitled to relief in respect of situation No, 2 should be deferred in the discretion of the Court.
43. I now turn to consider whether the plaintiff has been able to make out a case in terms of the other situation identified in para 41 above, i,e., situation No 6. This is the allegation of infringement on the basis of clause (d) of subsection (3) of section 40, i,e., that the goods in respect of which the defendant uses its (junior) mark (shoes) are . closely related to the services for which the plaintiff's (senior) mark is registered in class 35. It will be noted from the Annex that of the various jurisdictions referred to there, only one, Australia, has provisions similar to clauses (b) and (d) of subsection (3). These are clauses (b) and (d) of section 120(2) of the Australian Act. The concept of "closely related" goods or services (as the case may be), as developed in Australia, has been stated as follows in Australian Intellectual Property Law (by Mark Davison, et. al., 2nd ed., 2012, pg. 108; internal citations omitted): "The concept of closely related goods and services acknowledges the relevance of the relationship between goods and services in consumers' consideration of whether particular goods and services may come from the same source. Usually, the service will involve some sort of interaction with the relevant goods such as 'the installation, operation, maintenance or repair of' of the allegedly closely related goods. Hence, coffins and funeral services are closely related as are the rental and maintenance of tractors,"
The leading case appears to be the decision of the Federal Court of Australia in Registrar of Trade Marks v. Woolworths [1999] FCA 1020, (1999) 45 IPR 411. It was observed as follows (pp. 423-4; emphasis supplied): "37. The concept of "closely related goods" in respect of a service mark was introduced into the 1955 Act by the 1978 amendment. It was not defined in the 1955 Act nor is it defined in the 1995 Act. It is also used in subsection 44(1) to prevent registration of a trade mark in respect of goods which is substantially identical with or deceptively similar to a registered or priority trade mark in respect of "similar goods or closely related services". The term "closely related" recognizes that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related" ....
38. ... The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods...."
Reliance was placed on an earlier decision of the Federal Court, Caterpillar Loader Hire (Holdings) Ply Ltd v Caterpillar Tractor Co [1983 ] FCA 145, (1983 ) 48 ALR 511. The following passages from the latter decision can be usefully considered in the present context (pg.
522): "Although service marks are in their infancy in Australia they may give rise to problems of confusion between service marks themselves, and between goods marks on the one hand and service marks on the other, of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone. It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready- made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programmers) on the other.
In addition to similarity between goods and services there may be confusion between trade marks used by different proprietors for.. similar services: for example the business of a real estate agent of selling flats on the one hand and the business of managing flats and bodies corporate on the other.
Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods."
Finally, I may note that the Australian Trade Marks Office, in Re Aussat Pvt Ltd. [1993] ATMO 55, developed a series of detailed tests or guidelines for determining whether goods and services are closely related. These are still used by that office in making its determinations, and can usefully supplement the foregoing observations from the Federal Court: see, e.g., Steven R Smith v Cargo GmbH [2013] ATMO 103 at [47], and FetchTV Pty Ltd. v. LemonStone Group Pty Ltd. [2014] ATMO 2 at [37].
44. In my view, the foregoing correctly state, as a matter of Pakistani law, how the concept of "closely related" is to be applied in respect of clauses (b) and (d) of section 40(3). It has already been noted in an earlier part of this judgment that subsection (3) does not have the confusion-condition requirement. This is, also as noted earlier, in contrast to section 120(2) of the Australian Act where such a requirement exists although there it is for the defendant to show that the use of the junior mark will not deceive or cause confusion. I regard the lack of the confusion-condition requirement in section 40(3), insofar as concerns situations where the senior and junior marks are identical, to be a deficiency in the law. As has been analyzed in detail earlier in relation to clauses (a) and (c), which deal with goods or services of the same description, the deficiency takes the form of an anomaly, which, insofar as these clauses are concerned, can be tackled within the existing framework of section 40 in the manner indicated above. The same approach cannot however be taken in respect of clauses (b) and (d), when the senior and junior marks are identical. The deficiency must therefore stand, and in the context of these clauses, if it is shown that the senior and junior marks are identical and that the relevant goods and services are closely related, that is sufficient to establish infringement. The inquiry is only a two "step" process.
The identity between the plaintiffs mark and that used by the defendant has already been established and therefore the first step stands resolved in favour of the former. The relevant extract from the plaintiffs specification for Trademark No, 269115 has been set out above: the services for which the senior mark is registered are retail store services in the field of footwear, etc. The goods in relation to which the junior mark is used are shoes. Are the defendant's shoes closely related to the plaintiffs services for which the mare is registered? There is a difficulty in immediately answering this question. This arises because of the fact noted above, i,e., the plaintiffs and defendant's pending applications and oppositions in respect of shoes in class 25.
As has been noted, in principle the defendant's mark may be registered in this class. The defendant would then be able to sell its shoes using its mark. If, at the same time, a determination is made on the question just posed in favour of the plaintiff that will again create an obvious incongruity. In my view therefore, it would he appropriate to defer consideration of the question whether there is, as alleged, an infringement of the plaintiff's registered mark on the basis of clause (d) of section 40(3) till such time as the pending applications in respect of class 25 are decided. If those applications are resolved in favour of the plaintiff, it will be entitled to renew its application for interim relief also on the basis now under consideration. But, for the time being, in exercise of the Court's discretion, I defer answering the question posed above.
The foregoing analysis and discussion disposes of the plaintiff's claim of infringement of Trademark No, 269115 on the basis of subsections (2) and (3) of section 40. The next provision in terms of which infringement is alleged is subsection (5). Section 40(5) has been considered by this Court in Soneri Travels: see paras 24-26 thereof. The defendant's trade name is "Aldo Shoes", under which it operates its store. The plaintiff's trademark is of course "Aldo". In Soneri Travels, the registered trademark was of the respondent, and the appellant set up a defense in terms of section 42(1)(a)(i). On the facts, such defense was found justified, and hence no infringement was found. No such defense has been set up by the defendant in the present case. Prima facie therefore, a case of infringement is made out in terms of section 40(5).
However, since I am considering an application for interim relief, the further questions of balance of convenience and irreparable loss and injury also arise. The plaintiff admittedly has no direct presence in Pakistan. Its sales in this country are also indeterminate at this stage (to say the least), although the plaintiff has attempted (though rather faintly, in my view) to. buttress its case by referring to certain imports of its goods sold under the "Aldo" trademark.
Reliance is also sought to be placed on expatriate Pakistanis bringing back gifts, etc. (see para 4 above). Having considered this material, I am of the view that the plaintiff may well be unable to make out a case of either the balance of convenience being in its favour or that it will suffer irreparable loss and injury. Hence two of three "ingredients" for interim relief may be missing in the present context. However, I expressly do not record any finding on this point at this stage.
Furthermore, there is again the complication of the parties' respective pending applications in respect of registration under class 25. If the defendant is able to obtain registration of its mark, it would be able to sell its shoes using that mark. It would be incongruous in such a situation that it would not at the same time be able to use what would then be its registered mark also as part of its trade name. In my view therefore a consideration of the claim of alleged infringement on the basis of section 40(5) should, in the exercise of the Court's discretion, also be deferred till after a determination of the pending applications in respect of class 25.
47. This brings me to the last basis on which the plaintiff has sought relief, which is section 86 of the 2001 Ordinance (see para 8 above). This is a section (but as will be seen, not the only one) that introduces into Pakistani law the concept of "dilution" of a trademark (which is defined in section 2(xiii)). Dilution is a difficult, even elusive concept and I am tempted to refer here to what has been said by a leading American authority on trade mark law, Professor J. Thomas McCarthy: "No part of trade-mark law that I have encountered in my 40 years of teaching and practicing IP law has created so much doctrinal puzzlement and judicial incomprehension as the concept of 'dilution' as a form of intrusion on a trade mark. It is a daunting pedagogical challenge to explain even the basic theoretical concept of dilution to students, attorneys and judges. Few can successfully explain it without encountering stares of incomprehension or, worse, nods of understanding which mask and conceal be wilderment and misinterpretation."
(Quoted by Lord Neuberger, President of the UK Supreme Court, while delivering the 2015 Fox Intellectual Property Lecture in Toronto on 20.02.2015 titled "Trade Mark Dilution and Parody").
Fortunately, I do not, in this judgment, have to delve into the intricacies of this concept. For present purposes, it suffices to note that dilution is regarded as comprising of it least three strands: the senior mark is said to be "diluted" by such use of the junior mark as (a) "blurs" or (b) "tarnishes" the former, or (c) takes "unfair advantage" of it (what is also referred to as "parasitism" or "free riding").
48. Section 86, in its first two subsections, sets out what is meant by a "well-known trade mark"
(subsection (1)) and how it is to be ascertained whether a trademark is well-known (subsection (2)). There can be dilution only of a well-known trade mark. Now, subsection (1) opens with the words "References in this Ordinance...", which establishes that the definition of "well-known trade mark" as given therein is not just for purposes of section 86, but also for wherever this phrase is used elsewhere in the statute. One place where it is to be found is subsection (4) of section 40.
This provision has its counterparts in the other statutes set out in the Annex. There are similarities in the language used but also important differences. However, it suffices for my purposes to focus on the UK Act, where the equivalent provision is section 10(3). The provision as set out In the Annex is in amended form. As originally enacted, section 10(3) had provided as follows: "(3) A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services a sign which- is identical with or similar to the trade mark, and 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 has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."It will be noticed that as originally enacted, section 10(3) was very closely similar to section 40(4) of the 2001 Ordinance (although there is one crucial difference, which will noted below). In particular, as set out in clause (b), it applied only when the goods or services to which the junior mark was applied were not similar to the goods or services (as the case may be) for which the senior mark was registered. This in fact conformed to the language used in Article 5(2) of the 1988 EU Directive. However, in Davidoff & Cie SA and another v. Gofkid Ltd. (C- 292/2000 decided on 09.01.2003) [2003] I WLR 1714 and Adidas Saloman AG and another v.
Fitnessworld Trading Ltd. (C-408/2001 decided on 23.10.2003) [2004] 2 WLR 1095, the ECJ held that the protection provided by Article 5(2) of the 1988 EU Directive (and hence by section 10(3) of the UK Act) was not limited to cases where the goods or services were not similar, but extended also to where they were identical or similar. It was to bring the UK Act in conformity with the decisions of the ECJ that section 10(3) was amended by omitting clause (b). In section 40(4) of the 2001 Ordinance clause (b) is of course very much there, and therefore it is to section 10(3) as originally enacted that one has to look for comparative purposes.
49. The leading English authority on section 10(3) in its original form is a decision of Neuberger, J (as he then was) in the High Court, reported as Premier Brands (UK) Ltd. v.
Typhoon Europe Ltd and another [2000] EWHC 1557 (Ch), [2000] FSR 767 ("Premier Brands").
The learned Judge considered section 10(3) and Article 5(2) of the 1988 EU Directive, observing as follows (pg. 786): "According to Recital 9 of the [1988 EU] Directive, the purpose of Article 5(2) is to provide "extensive protection to those trade marks which have a reputation", and such protection is clearly intended to be over and above that available to marks without a reputation. As already mentioned, Section 10(3) represents a significant extension so the protection hitherto accorded to proprietors of registered trade marks in this country...."
Referring to the words "is detrimental to" used in the subsection, the learned Judge held as follows (pp. 786-7): "This sort of detriment has been generically described as "dilution", and has also been said to occur normally in one of two ways, namely by "blurring" or by "tarnishing".... [I]t does appear to me that dilution is a useful concept to bear in mind when considering the application of Section 10(3) to a particular set of facts.... However, while dilution is a useful concept to bear in mind, it does not necessarily follow that every case of infringement under section 10(3) will necessarily involve dilution, nor does it follow that the proprietor of a mark will necessarily succeed in establishing infringement under section 10(3) in every case where he establishes dilution."
50. The point that I wish to make (and emphasize) is that as Premier Brands makes clear, section 10(3) and hence also section 40(4) of our statute, relate to the dilution of the senior mark. Thus, section 86 is not the only provision dealing with this concept, notwithstanding that it expressly uses the defined term "dilution". I now turn to a crucial difference between section 10(3) and section 40(4). The former applies only if the registered mark has a "reputation in the United ' Kingdom". Section 40(4) on the other hand can apply in either of two situations. Firstly, it applies if the registered mark has a "reputation in Pakistan" and this is of course exactly equivalent to the requirement found in section 10(3). Secondly however, and unlike section 10(3), section 40(4) also applies if the registered mark is a "well-known trade mark". This is independent of the mark having a reputation in Pakistan, and is a separate situation in its own right. For the reasons already stated, the phrase "well-known trade mark" as used in section 40(4) must be regarded in the same sense as section 86. This raises an important question, and one on which I specifically sought assistance from learned counsel for the plaintiff (see para 8 above): if the well-known trade mark is registered under the 2001 Ordinance, is the proprietor of the mark to look for protection under section 40(4) alone (along with of course the other subsections of that section) or is he also entitled to seek relief in terms of section 86? Learned counsel submitted that both provisions could be invoked. Having considered the point I am, with respect, unable to agree. It appears to me that section 40(4) has, at least in this regard diverged deliberately from its counterpart provisions in other jurisdictions, none of which expressly apply to the situation where the registered trademark is also a "well-known trade mark" within the meaning of the Paris Convention, separately and independently from the situation where the registered trade mark has a reputation in the jurisdiction. Sections 40(4) and 86 must be read and applied conjunctively and consistently. A registered trademark has all the protections accorded such marks as set out in subsections (1) to (3), and (5) to (7). In addition, if it is a well-known trade mark within the meaning of section 86 it is also entitled to further protection under subsection (4). In my view, in such a statutory framework the protection accorded by subsection (3) of section 86 is available only when the well-known trade mark is not registered in Pakistan. For the foregoing reason (i,e., the 'specific and separate reference to a "well known trade mark") I am also of the view that, with respect, Neuberger, J's observation, that "the proprietor of a mark will [not] necessarily succeed in establishing infringement under section 10(3) in every case where he establishes dilution", cannot apply in the context of section 40(4).
What of the situation where the proprietor of a well-known trade mark has applied for registration of such a mark in Pakistan? Can the proprietor avail the benefit of section 86(3) while such application is under process? It could be said that since an application is the mandatory prelude to registration under the 2001 Ordinance, the proprietor has made his choice, namely, that he seeks to enjoy the benefits of section 40. It could be said that he cannot, having made such choice and put himself on the path to registration, claim the benefit of section 86(3) along the way. The questions posed do not however arise in the present case since here the plaintiff already has its trademark registered under the 2001 Ordinance. I therefore defer consideration of this (important) issue to a suitable future case.
It follows from the foregoing that in my view the plaintiffs claim for relief under section 86 is misconceived. The plaintiff ought to have sought relief under section 40(4). This however is not the case. In my view it is not possible at this stage to consider the claim put forward by the plaintiff in terms of section 86(3) as though it were under section 40(4). This is because that provision has its own requirements and conditions which must be satisfied, and also because of the parties' pending applications and oppositions in respect of class 25. I accordingly hold that the plaintiff is not entitled to relief under section 86 but should its application for registration under class 25 succeed, it will be entitled to renew seeking interim relief on the basis that its trademark is a well-known trademark, by making out a case in terms of section 40(4). Finally, it remains only to note that section 40(4) has been considered in some detail by this Court in Soneri Travels although in a factual context different from the facts and circumstances at hand.
53. Before concluding, it will be appropriate also to examine the judgments relied upon by learned counsel for the plaintiff in addition to the three Supreme Court decisions already considered above. I may note that while making his submissions learned counsel had placed a bundle of authorities before me but (quite properly) did not seek to press each and every case therein. I will therefore consider only those decisions specifically relied upon.
The first judgment is Tabaq Restaurant V. Tabaq Restaurant 1987 SCMR 1090. I am respectfully of the view that had the relevant facts and circumstances of the cited case been by way of an action under section 40 of the 2001 Ordinance, it would have been a claim of an identical (junior) mark being applied to identical goods, i,e., the situation covered by subsection (1). Since the plaintiff has not sought to make out a claim in respect of any of the registered trademarks on this basis, in my respectful view this decision is of no direct relevance. The next decision cited was J.N. Nichols (Vimto) plc v. Mehran Bottlers (Pvt.) Ltd. PLD 2000 Kar. 192 (SB). The case was an infringement action. The plaintiff's mark, "Vimto", was registered in class 32 in respect of beer, ale and aerated waters, The plaintiff claimed that it had been using the trademark in Pakistan for around four decades in respect of non-alcoholic beverages. The defendant started selling syrup under the name "Pakola Vimto". On these facts, it is not surprising that the learned single Judge had little difficulty in finding infringement and granting interim relief. As is obvious, the facts of the cited decision were quite different from those at hand. Another case cited was Unilever plc v. R.B. Oil Industries (Pvt) Ltd. 1999 MLD 1447 (SHC; SB). It was also an infringement action. The plaintiff's mark, Lipton, was registered in classes 29 and 30 for various food items, including edible oils and had been used extensively in Pakistan for a number of years though not for selling edible oils. The defendant started marketing banaspati (an edible oil) under the same mark and the defense was that the plaintiff was not marketing edible oils under the registered trademark. Were these facts (and the other relevant facts as set out in the judgment) to form the basis of an action under the 2001 Ordinance, it could well be a case falling under either clause (a) or (b) of section 40(2) i,e., an identical or deceptively similar (junior) mark being applied to similar goods. However, each case turns on its own facts and nothing more can be read from the cited decision. Finally, learned counsel relied on Societe Des Products Nestle SA v. Food International (Pvt) Ltd. 2004 CLD 1383 (PHC; DB). The appellant appealed against the judgment of the Additional District Judge Peshawar dated 22.07.2000 whereby its suit had been dismissed. The appellant was the proprietor of a registered trade mark, "Milo", in respect of food products and had used the mark in Pakistan for a number of years, The respondent started selling bread (which was alleged to be low- quality) under the same mark. As noted by the High Court, the learned trial Court was "influenced by the fact that the appellant-Company does not prepare/market bread made of flour in Pakistan and abroad and that the products of the appellant-Company are restricted Chocolate drinks" (pp. 1387-8). Again, like the previous case, had the cited case been an action under the 2001 Ordinance it could well have been that a case in terms of either clause (a) or (b) of section 40(2) was made out. However, as just noted, each case turns on its own facts. I may note that in the last mentioned decision (and also in the other cases cited by learned counsel for the plaintiff) there are passages relating to the "reputation". of the registered trade mark and what would now be regarded as its "dilution" by the use of the infringing mark. The 1940 Act did not of course have any statutory equivalent to section 86 or section 40(4) of the 2001 Ordinance. Nonetheless, there was perhaps an incipient judicial development even under the 1940 Act of the concept of the "reputation" enjoyed by a registered trade mark and its "dilution" and the protection to be accorded by the Courts on such basis. However, with the utmost respect, such development had yet to take coherent shape and crystallize in a framework where the underlying principles could be readily discerned. Now of course the situation is entirely different. The concepts of "dilution" and "reputation" are expressly part of the 2001 Ordinance. The extent to which the incipient judicial developments under the old law are of any relevance is therefore, with the utmost respect, open to question, and I again draw attention to what has been said in successive editions of Kerly in a similar context in respect of earlier case law (see para 12 above). However, I defer any detailed consideration of this point for an appropriate future case.
It will be recalled that the parties' respective applications for registration under class 25 ale still pending. This class relates to footwear, which constitutes (so it would seem) the sole business of the defendant and the core (and perhaps even the bulk) of the plaintiff's business.
In many ways therefore, this is the key class and the resolution of the pending applications is correspondingly important. It will also be recalled that I have deferred consideration and determination in respect of some of the bases on which the plaintiff has claimed infringement precisely because of the pending applications (see paras 42, 45,46 and 52 above). In my view it is important that the pending applications and oppositions be resolved speedily. I therefore direct the Registrar of Trade Marks to decide the same within four months and preferably by hearing and disposing them off together. If the plaintiffs application is allowed, I grant it permission to file an application for interim relief (without prejudice of course, to the defendant's right of statutory appeal) on the basis of the registration of its mark in class 25, and I also grant it permission to renew, in such application, its claims of infringement as set out above in paras 42, 45, 46 and 52, consideration of which has been deferred. Such an application, if filed, will be decided on its own merits.
Needless to say, whatever has been said and held herein above in respect of the factual aspects of the case is tentative in nature and only for purposes of considering the application for interim relief. When the suit goes to trial, it will of course be decided on the basis of the evidence as actually led by the parties and on the merits of the dispute as then before the Court.
The Additional Registrar (OS) is directed to send a certified copy of this decision to the Registrar of Trade Marks, who is directed to ensure its immediate publication in the Trade Marks Journal. A copy of the relevant issue of the Journal must be sent to the Additional Registrar (OS), who will ensure that it is placed on the file of this Suit.
57. In view of, but subject to, what has been stated above I conclude that at this stage that the plaintiff has been unable to make out a case for interim relief. Accordingly, its application C.M.A. 5709/2010 is hereby dismissed. The ad interim order granted earlier stands recalled and vacated. In view of this dismissed, the defendant's application C.M.A.
520/2014 has become infructuous and is disposed off as such.
Abbreviations 1940 Act: Trade Marks Act, 1940 2001 Ordinance:Trade Marks Ordinance, 2001 Indian Act: Trade Marks Act, 1999 UK Act: Trade Marks Act, 1994 UK 1938 Act: Trade Marks Act, 1938 EU 1988 Directive:First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks Australian Act: Trade Marks Act, 1995 Singapore Act: Trade Marks Act of 1998 (2005 revised edition)
Kerly (xx)(Year):Kerly's Law of Trade Marks and Trade Names. The number in the first brackets (xx) indicates the edition; the year in which the edition was published follows. Thus, Kerly (12 (1986) means the 12 edition, published in 1986. The work is currently in its 15 (2011) edition.
Statutory Provisions (in material part) A. Pakistan Statutes I. 1940 Act
8. Prohibition of registration of certain matter. No trade mark not part of a trade mark is shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would-
(a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; ....
10. Prohibition of registration of identical or similar trade mark---(1) Save as provided in subsection (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and ... already on the register ... in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion.
21. Right conferred by registration---(1) Subject to the provisions of sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing provision, that right shall 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 resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either as being used as a trade mark : or to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade.
II. 2001 Ordinance
2. Definitions---In this Ordinance, unless there is anything repugnant in the subject or context ...
(xii) "deceptively similar" in relation to a trade mark, means such near resemblance between it and another trade mark that it is likely to deceive or cause confusion; "similar goods" include services which are of the same description; "similar services" include services which are of the same description; .......
17. Relative grounds for refusal of registration.----(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services, for which the trade mark is applied for, are identical with the goods or services for which the earlier trade mark is registered.
(2) A trade mark shall not be registered because- it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is registered; orth) th th it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is registered, and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which- is identical with or similar to an earlier trade mark; and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in Pakistan and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
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 is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
A person shall infringe a registered trade mark if such person uses in the course of trade a mark where because-
(a) the mark is identical with the trade mark and is used in relation to goods or services similar to the goods or services for which the trade mark is registered; or the mark is deceptively similar to the trade Mark and is used in relation to goods or services identical with or similar to the goods or services for which the trade mark is registered, there exists a likelihood of confusion on the part of public, which includes the likelihood of association with the trade mark.
A person shall infringe a registered trade mark if the person uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark in relation to goods of the same description as that of goods in respect of which the trade mark is registered; services that are closely related to goods in respect of which trade mark is registered; services of the same description as that of services in respect of which the trade mark is registered; or goods that are closely related to services in respect of which the trade mark is registered.
(4) A person shall infringe a registered trade mark if the person uses in the course of trade mark which is identical with or deceptively similar to the trade mark; and 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.
(5) A person shall infringe a registered trade mark if the person uses such registered trade mark as his trade name or part of his trade name.
86. Protection of well known trade mark.---(1) References in this Ordinance to a trade mark which is entitled to protection as a well-known trade mark shall be to a mark which is so entitled under the Paris Convention and which is well-known in Pakistan as being the mark of a person who- is a national of a Convention country; or is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country, whether or not that person carries on business, or has any goodwill, in Pakistan and references to the proprietor of such a mark shall be construed accordingly.
(2) For the purposes of this Ordinance, the tribunal while determining whether a trade mark is well-known, without having to require registration or actual use in the form of sales of goods or services under the trade mark in Pakistan, shall consider the following factors as relevant criteria for establishing the well known status of the trade mark, namely:-
(i) the amount of Pakistan or worldwide recognition of the trade mark; (B, the degree of inherent or acquired distinctiveness of the trade mark; the Pakistan or worldwide duration of the use and advertising of the trade mark; the Pakistan or worldwide commercial value attributed to the trade mark; the Pakistan or worldwide geographical scope of the use and advertising of the trade mark; the Pakistan or worldwide quality and image that the trade mark has acquired; and the Pakistan or worldwide exclusivity of use and registration attained by the trade mark and the presence or absence of identical or deceptively similar third party trade marks validly registered or used in relation to identical or similar goods and services.
(3) The owner of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark shall be entitled to restrain by injunction the use in Pakistan of a trade mark which, or the essential part of which, is identical or deceptively similar to the well-known trade mark- in relation to identical or similar goods or services, where the use is likely to cause confusion; or where such use causes dilution of the distinctive quality of the well-known trade mark.
(4) Rights conferred under subsection (3) shall be subject to the provisions of section 81 and nothing in the said subsection shall effect the continuation of any bona fide use of a trade mark begun before the commencement of this Ordinance.
B. Foreign Jurisdictions I. Indian Act
2. Definitions and interpretation. (1) In this Act, unless the context otherwise requires,-
(h) "deceptively similar"- A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion; ....
11. Relative grounds for refusal of registration
(1) Save as provided in section 12, a trade mark shall not be registered if, because of its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public. which includes the likelihood of association with the earlier trade mark.
(2) A trade mark which is identical with or similar to an earlier trade mark; and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due course would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
29. Infringement of registered trade marks. (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
In any case falling under clause (c) of subsection (2), the court shall presume that it is likely to cause confusion on the part of the public.
A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with or similar to the registered trade mark; and is used in relation to goods or services which are not similar to those for which the trade mark is registered; and the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
II. UK Act
5. Relative grounds for refusal of registration.- (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.
(2) A trade mark shall not be registered if because - it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which --
(a) is identical with or similar to an earlier trade mark, [(b) omitted] shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark or international trade mark (EC) in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
10. Infringement of registered trade mark.---(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
(3) A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services a sign which-
(a) is identical with or similar to the trade mark, [(b) omitted] where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
III. UK 1938 Act [Important Note: The 1940 Act was modeled on the UK 1938 Act. At the time when both statutes were enacted, there was no protection for trademarks in respect of services as now to be found in the 2001 Ordinance. However, the UK 1938 Act was extensively amended to include certain references to service marks in 1984 and 1986. The entire position has been explained in a "General Note" in Kerly (12th)(1986), pg. 491. Since the 1940 Act was not amended in such manner, references in the amended UK 1938 Act, and in Kerly (12th)(1986) to "services" must be read subject to this important qualification. Section 12(1) given below is as originally enacted.]
12. Prohibition of registration of identical and resembling trade marks---(1) Subject to the provisions of subsection (2) of this section, no trade mark shall be registered in respect of any goods or description of goods that is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion.
IV. EU 1988 Directive Article 4. Further grounds for refusal or invalidity concerning conflicts with earlier rights.
1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid: if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected; if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the- public, which includes the likelihood of association with the earlier trade mark.
3. A trade mark shall furthermore not be registered or, if registered, shall be liable to be declared invalid if it is identical with, or similar to, an earlier Community trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier Community trade mark is registered, where the earlier Community trade mark has a reputation in the Community and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
Article 5 Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
[Note: See also Arts. 8 and 9 of the Council Regulation (EC) No, 207/2009 of 26 February 2009 on Community trade marks, which are to similar effect. This Regulation codified, and therefore repealed and replaced, the earlier Council Regulation (EC) No 40/94 of 20 December 1993 on Community trade marks, and various amending regulations.] V. Australian Act (Emphasis in the Act itself)
10 Definition of deceptively similar For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
14 Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods: if they are the same as the other goods; or if they are of the same description as that of the other goods.
(2) For the purposes of this Act, services are similar to other services: if they are the same as the other services; or if they are of the same description as that of the other services. 120 When is a registered trade mark infringed?
(1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. ...
(2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or services that are closely related to registered goods; or services of the same description as that of services (registered services) in respect of which the trade mark is registered; or goods that are closely related to registered services.
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to, deceive or cause confusion. ...
(3) A person infringes a registered trade mark if:
(a) the trade mark is well known in Australia; and
(b) the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and
(c) because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and
(d) for that reason, the interests of the registered owner are likely to be adversely affected.
VI. Singapore Act
8. Relative grounds for refusal of registration---(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is sought to be registered are identical with the goods or services for which the earlier trade mark is protected.
(2) A trade mark shall not be registered if because--- it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the 'earlier trade mark is protected, there exists a likelihood of confusion on the part of the public.
(4) Subject to subsection (5), where an application for registration of a trade mark is made on or after 1st July 2004, if the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark, the later trade mark shall not be registered if -- the earlier trade mark is well known in Singapore; and use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered -- would indicate a connection between those goods or services and the proprietor of the earlier trade mark, and is likely to damage the interests of the proprietor of the earlier trade mark; or if the earlier trade mark is well known to the public at large in Singapore- would cause dilution in an unfair manner of the distinctive character of the earlier trade mark; or would take unfair advantage of the distinctive character of the earlier trade mark.
27. Acts amounting to infringement of registered trade mark--(1) A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
(2) A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because-- the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public.
(3) A person infringes a registered trade mark which is well known in Singapore if -- without the consent of the proprietor of the trade mark, he uses in the course of trade a sign which is identical with or similar to the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered; the use of the trade mark in relation to those goods or services would indicate a connection between those goods or services and the proprietor; there exists a likelihood of confusion on the part of the public because of such use; and the interests of the proprietor are likely to be damaged by such use.