ZULFIQAR AHMAD KHAN, J.---The above referred three appeals are emanating from a unified judgment of the learned Single Judge dated 31.03.2015 on the forwarded grounds that the learned Single Judge has erred by failing to appreciate some key issues raised in respect of the co-existed ownership of the impugned trade mark/trade name "ALLE'NORA" claiming to be honestly adopted by the appellant.
2. The appellant, a partnership firm established in the year 2002 for providing beauty salon and parlor services in Karachi claims to have commenced its business since its inception under the trade mark "ALLE'NORA". On the other hand, the respondent claims to have set up beauty salon and parlor in Lahore as early as 1990 and contends that the appellant was her employee when Alle'nora commenced its branch operations in Karachi in 2002. The dispute between the parties is in relation to trade mark and trade name (hereinafter referred to as trade mark) "ALLE'NORA" used by them which has resulted in three suits and counter suits agitated by one against the other. The above referred impugned judgment of the learned Single Judge was passed accordingly in respect of all three suits heard together adjudicating claim as to the ownership of "ALLE'NORA" trade mark between the said two contestants. An analytical look at the impugned judgment depicts that the learned Single Judge has very carefully crafted three important issues, being (i) which of the parties is a prior user of the trade mark "ALLE'NORA" in Pakistan; (ii) has any of the parties a right to the exclusive use of the trade mark "ALLE'NORA" anywhere in Pakistan; and (iii) is the prior user so determined is entitled to the relief claimed in their respective suits?
3. The admitted facts are that the respondent has established that it has a prior use commencing from the year 1990 in Lahore in respect of the above referred trade mark, as well as, it has also registered the said trade mark with the Trade Mark Registry, Government of Pakistan in Class 44 effective from 29.07.2006. On the other hand, the appellant as stated to in the foregoing, upon creation of its partnership in 2002 admits to have commenced use of trade mark "ALLE'NORA" in Karachi and has filed an application for registration of trade mark on 14.11.2006 and an application for registration of copyright with the Pakistan Copyright Registry on the same date, which applications are pending. It cannot be ignored that in both the said applications, the applicants has clainied use of the said trade mark since 2002 only.
4. The learned Single Judge, while dilating upon all the above referred three issues, has very aptly grounded his reasoning for reaching to his conclusions which in respect of issue No, 1 are to hold that the respondent is a prior user of the trade mark "ALLE'NORA"; with regard to issue No, 2, as to the exclusive right, the learned Single Judge on page 6 of the impugned judgment has also decided it in favour of the respondent holding that it was the respondent who pursuant to its early adoption and unfettered use has acquired rights to the exclusive use of the said trade mark "ALLE'NORA" in Pakistan; and with regards issue No, 3, while referring back to his reasoning vis-a-vis issues 1 and 2, the learned Single Judge has concluded that legitimate proprietorship and exclusive use of the said trade mark belongs to the respondent and the learned Single Judge in the impugned order restrained the appellant from the use of the said trade mark, whereupon the appellants filed these appeals.
5. The learned counsel for the appellant vehemently argued in favour of his client alleging that the learned Single Judge failed to appreciate the very fact the appellant adopted the trade mark "ALLE'NORA" in Karachi without any knowledge of the existence or prior use of the respondent's similar trade mark "ALLE'NORA" in Lahore since the respondent was operating from there only and there was no incident that any of its customer mentioned having been served in an identically named saloon existing in Lahore. He denied that the appellant had any trade or business connection with the respondent, although admitted that the appellant in the year 2003 made an offer for the purchase of the entire business of the respondent at the price of Rs,250,000 (as per the Examination-in-chief of Mrs Fozia in Suit Nos.1510/2006 and 625/2007). Notwithstanding therewith, the learned counsel argued that even if it is assumed that the appellant had used a mark similar with the mark of the respondent, to avoid deception, confusion and allegation of falsehood, the appellant used words "by Aliya Tipu" along with the trade mark "ALLE'NORA" to communicate to the potential customers that the appellants are different from the establishment operating with the same name of "ALLE'NORA" in Lahore.
6. The learned counsel ,went to the extent of arguing that the mark "ALLE'NORA" is inherently generic in description and thus incapable of registration thereby no party, in particular the respondent, can claim any right to such a generic French word. Thrust of the arguments of the learned counsel though largely remained on the assertion that due to the geographical divide between the cities of Karachi and Lahore, although both the establishments are offering a similar kind of services, there is no likelihood of one establishment causing any loss to another because their respective customers reside thousands of miles apart.
7. In support of his arguments, the learned counsel for the appellant cited a number of case laws, of particular relevance is the case of Office Cleaning Services, Ld., v. West Minister Window and General Cleaners, Ld. (reported as 1946 R.P.C. 3) where the plaintiffs were using trade mark "Office Cleaning Services" and the defendants were using "Office Cleaning Association" trade name in different parts of England and the Court came to the conclusion that there is no monopoly in the words "Office Cleaning", therefore the suit was dismissed. We wish to point out that in the first instance the above referred case is dated 1946 and the trade and commercial business has moved a long way from that period and today geographical distances have merged together at com accessible to more than 3 Billion persons, as well as, we would like to distinguish that the present case does not involve use of any common English words like 'office' or 'cleaning', the present controversy pertains to an unfamiliar text in Pakistan "ALLE'NORA" to which both the parties are alleging their claim. Learned counsel also brought to our attention to a relatively recent judgment of the Reckitt & Coleman v. Borden Inc. (reported as 1990 P.R.C. 13), wherein the basic ingredients of passing off have been discussed at length, in particular, the learned counsel sailed us through the process of adjudicating the matters. Related to passing off of trade marks where three primary ingredients, namely (a) presence of a goodwill or reputation in the mark; (b) mis- representation to public; and (c) damages suffered by such misrepresentation, have to be conceded by a Court. By bringing the above references about passing off, the counsel seemingly is not admitting that that tile respondent has a registration of "ALLE'NORA" trade mark under the provisions of Trade Mark Ordinance, 2001 pursuant thereto no cause of action on account of passing off arises for a registered trade mark wherein rights of such a trade mark are only remedied by an infringement action. We thus do not find the said citation of any relevance.
8. The learned counsel for the appellant also referred to the case of Poister Limited v. Marcel Fenez Limited reported as 1964 RPC 6. In the said case, the plaintiff obtained an exclusive license from the Guy Laroche, a Paris Couturier, to sell his dresses in the United Kingdom. It was a term of this agreement that the plaintiff would not sell the dress for less than twenty pounds retail. Subsequent to the plaintiff's agreement, ICI bought from Guy Laroche a dress design which was to be manufactured in a new material which ICI wanted to publicize. The defendants, Marcel Fenez Ltd., made dresses to this design and offered them for sale at less than twenty pounds. These dresses had a label bearing the words "Guy Laroche designed for Marel Fenez". The plaintiffs sought an interlocutory injunction to restrain the defendants from passing off, and from procuring a breach of the contract. The Court held that the motion based on passing off failed because the label did not in any way suggest that the goods were connected with the plaintiffs. The above cited case however, could be distinguished from the case in hand to the effect that in the former case intellectual property of Guy Laroche was replicated in a different material manufactured by ICI through the defendants and the label used on the goods gave sufficient credit to the original intellectual property holder Guy Laroche; which is not the case in hand. Here the appellant is using a ditto copy of the respondent's trade mark without crediting any respect, mention or regard to any rights in the trade mark owned by the respondent. Here, the appellant itself is trying to portray that he is the owner of the trade mark and or by mere inclusion of the word Aliya Tipu is not passing off any credit to the owner of the trade mark "ALLE'NORA".
9. The learned counsel also cited the case of Evans v. Eradicure Limited reported as 1972 R.P.C, where the Court refused to grant an interim injunction where the rival businesses were using confusingly similar trademark ERADICARE and ERADICURE in different parts of England. In the said case, instant relief was not given on the account that the plaintiff did not discharge the heavy onus in respect of prima facie case and as to the merits of the plaintiff and its correction in law. The above case can be distinguished from one in hand on the mere ground that it is not a case of confusingly similar trade marks ERADICARE and ERADICURE, here there is no dissimilarity between the trade mark of appellant and the respondent. It is not the case of creating a colorful imitation of a word or changing a part of a single word trade mark from CARE to CURE. The present case involves the appellant using identical trade mark and it is alleging that they are in possession of concurrent reputation in the identical trade mark. We thus did not find the above referred case of any influential value.
10. While we observe that the order of the learned Single Judge has very aptly addressed to the various issues raised by the counsel of the appellant, however, the following two contentions of the counsel crave for further deliberations:
(a) The ingredients and test required to establish honest and concurrent use of trade marks; and
(b) The defense of geographical distances while using another trader's trade mark.
11. With regard to the first issue, the learned counsel relied on the above referred 1947 judgment, which has been distinguished by us as to its limitation towards latter's applicability in the instant case. Thus the above citation does not satisfy us. It is an established global understanding that the key concept behind trade mark jurisdiction revolves around protection against confusion, deception and fraud. The very purpose an honest trader choses a distinctive or novel trade mark is to keep his goods or service distant from the possibility of being taken as a competitor's goods or services. The very reasons for the creation of an intellectual property legal system is to provide for a mechanism for the protection and offering rewards to creativity and fair trade. In he trade mark realm, legislations aim to protect the goodwill and cliental of the persons who first create or adopt a trade mark to let the consumers know that another product or service is available to them through this new source. The lesser the confusion as to the source of two different originators of identical goods and service, the lesser the misunderstanding will arise in the minds of common public; and at the same time the creator's intellectual ingenuity remains protected and the hard work by the first creator/adopter of the trade mark is rewarded through the scheme of trade mark laws. Competitors who try to disguise themselves by using similar or confusingly similar trade mark have two fold objectives (a) illegally benefitting themselves from the fruits of the goodwill and reputation labored by the original creator and (b) deceive public at large as to the true source of the goods or services in question.
12. While there are number of judgments to gauge the honest adoption plea on the touchstone of confusion, however, the very simple and basic test is to have a side by side analysis of the two trade marks in question. Imagine, a hypothetical case study, wherein there are three individuals in various remote parts of the planet earth, who by sheer coincidence select an identical name in respect of their business (for example, a grocery store), the very first thing that they would think is how the particular name should be stylized or calligraphed (i.e, trademarked) on the front of their shop to let street walkers know of their existence. One may use plain bold letters, other may add some graphics to it and the third one may put an image of a person or any .Other living thing or object as a part of his trade mark. Be so as it may, by no stretch of imagination could it ever be the case that these three individuals living at any three different corners of the planet would come up with same color-scheme, some font and same getup of their proposed trade mark which they wish to put in front of their shops to attract the customers. This is a simple and a basic test of honest adoption and the intellectual property regimes either domestically or internationally would come forward to protect such ingenuity and creative talent of every one of these three traders. However, if during this side by side analysis of trade marks, a common person gets confused or fails to distinguish amongst the respective trade marks or notices that some essential or prominent features of a competitor's trade mark has been put in by another trader, either with some prefix or with some suffix, the test of honest adoption fails. By such side by side analysis it becomes clearer that one trader had before its eyes the trade mark of another trader at the time the later was choosing a trade mark, style and getup for his new business, thus certain elements of another person's trade mark has been embodied in his trade mark. This is not by sheer co-incidence. It is by detailed design and by giving minute attention to details, with a clear objective of practicing deception and fraud.
13. In the instant case, the trade mark in question is "ALLE'NORA", which admittedly was first used by the respondent in Lahore as early as 1990, and was used by the appellant, who admittedly commenced their business in Karachi in the year 2002. One can easily understand that in the year 2002 when the appellant commenced their business in Karachi, they had on their drawing board (or computer screens) a copy of "ALLE'NORA" trade mark used by the respondent in Lahore. The appellant decided to select the said trade mark of the respondent in identical type-font, colors and calligraphy with the sole objective to get benefit from the existence of the respondent's earlier trade mark existing in the market place and to reap benefits from the well-earned reputation of the said trade mark. At the same time there would be present a deceitful intent in their minds of hatching a conspiracy against common people with an objective to confuse and defraud them by camouflaging themselves to appear identical to the respondent. When the counsel for the appellant was asked to satisfy this Court as to why each and every essential element of the respondent's trade mark is present in the trade mark used or proposed to be used by the appellant, the learned counsel had no answer except to say it is purely by co-incidence, he, however tried to defend his case by alleging that even if the appellant has used each and every essential feature, font, colour and style of the respondent's trade mark, but his client has put her name (Aliya Tipu) in the trade mark "ALLE'NORA" to distinguish her business apart from the possibility of creation of any confusion between the "ALLE'NORA" of Lahore and "ALLE'NORA" of Karachi. The Court reverted holding that the very fact that a trader uses a prominent or substantial part of some body's else trade mark with a prefix, suffix or with any other element along with the earlier trade mark, all he is doing is to admit to the existence of the prior trade mark, and trying to come under the umbrella of the earlier trade mark attempting to fool the general public that his goods and services are as good as these provided by the owner of the earlier trade mark, but he is not the original person. He is a Me-too!
14. Of the identical circumstances wherein use of a personal name along with a competitor's earlier trade mark was in question, the recent judgment passed in Farooq Ghee and Oil Mills v. The Registrar of Trade Marks (reported as 2015 CLD 1245) is of great relevance where the respondents were using HAYAT trade mark since 1990 and sought registration thereof. The petitioners commenced later use of trade mark HAYAT along with the company name FAROOQ's; the apex court held that merely adding a prefix and/or suffix to an already existing trade mark would not save the petitioner company from the clutches of section 8 of the Trade Marks Act, 1940, which prohibited registration of a trade mark or a part of trade mark, which was likely to deceive or cause confusion. Trade mark FAROOQ's HAYAT adopted by petitioner encompassed the mark HAYAT, which was the striking or dominating feature of the trade mark of the respondent company.
Adoption of, dominant feature HAYAT by the petitioner company was not only strikingly similar but was identical prefix FAROOQ'S as used by the petitioner company did not eclipse, over shadow or obscures the dominating mark HAYAT in a way that may distinguish its goods with that of the respondent company. The apex Court held that by allowing registration of petitioner company's competing trade mark would not only encourage unscrupulous traders to steal someone else good will and intellectual property, but at the same time the unwary purchasers would be exposed to more than reasonable probability of confusion and deception.
15. To us, therefore, the above contention of honest adoption of the respondent's trade mark by appellant in identical and substantial manner by mere inclusion of a name of a person using it without any authority or permission of the owner of the earlier trade mark only strengthens the right granted to the owner of the earlier trade mark and scheme of trade mark law will come with full force to protect the first creator of the trade mark and the public at large.
16. With regard to the contention of the counsel for the appellant as to the geographical distance between Karachi and Lahore diminishing the possibility of misuse of the goodwill and reputation of the trade mark of the respondent by the appellants, we must confess that such a defense has never been raised, usually the trade marks are held to carry trans-border reputation (i.e, the reputation flowing from one country to another on account of the goodwill and reputation of the trademark in foreign country), this trans-provincial reputation has never been alleged. We therefore deem appropriate to express our view on this assertion of the appellant. In our view, the goodwill and reputation in a trade mark does not extinguish merely because goods and services are not available in some other parts of the country. In today's world, reputation and goodwill of a trade spreads at the speed of light. The goodwill acquired by the respondent in Lahoro is not necessarily limited to that city where the services were available. The admitted fact is that these services were duly advertised in newspapers, periodicals, magazines and internet having circulation to all over the country, and even abroad. It is also an established view in trade mark jurisdiction that goodwill or reputation does not depend upon the availability of goods/services any more. We would even come to the extent to say that even if a manufacturer or service provider suspends his business activity in a particular part of the country, the cloud of the reputation and goodwill stays there even afterwards, unless it is washed away by the winds of change. The Trade Mark Ordinance, 2001 is based on equitable principles wherein if a person by hard work had established a goodwill or reputation in one part of the country, the law in terms of Section 1(2) protects such reputation and goodwill throughout Pakistan. The relevant territory under the said Ordinance is the whole of Pakistan and that the relevant public consisted of both the general public and interested customers across the country.
17. Notwithstanding a registered trade mark, even in cases where the trade mark is not registered, reputation and goodwill in a trade mark can be protected, pursuant to the procedure laid down in the said Ordinance by granting an option of filing a passing off action. For this reason, the legal system is built upon protecting the hard work, ingenuity and goodwill of a person who is first one to use a trade mark, trade name or any other similar source identifier (including domain name, etc.) from the attacks made by competitors. The established legal principle that whenever rights in a trade mark (whether registered or not), are attacked, the wheel of the legal system will spin in the direction of protecting the honest and first adopter in order to safeguard his hard earned reputation and as well as to save customers from such disguise.
18. In this regard, the age-old principles set by the apex Court formulated in Tabaq Restaurant (Lahore) v. Tabaq Restaurant (Rawalpindi) in 198,6SCMR 1090 are beacon of guidance. The dispute, as the titles suggests, was in relation to use of Tabaq trade mark in Lahore of any earlier date, which was adopted by a competing restaurant in Rawalpindi. The apex Court laid down the principle that notwithstanding the geographical distances, a trade mark owner receives protection against use of his mark by another in such a away as is likely to lead consumers to associate the other's goods with the trade mark owner.
19. We, therefore, do not find any force in the assertion either that someone else's trade mark could be used in another part of the country just because the original trader had decided not to open the branch or put his presence in other part of the country or the goods carrying with trade mark are not made available to some other parts within the country. These appeals thus have no merit.
20. These are the reasons of short order passed in Court on 10.02.2016 dismissing the above referred appeals.