' ZULFIQAR AHMAD KHAN, J.---Being aggrieved by the order dated 16 September, 2014 passed by the learned Single Judge in Suit No,752 of 2014, disposing of the injunction application in favour of the present Respondent and restraining the Appellant from using the trade mark "Shield and Device of Shield", holding it identical and deceptively similar with the trade mark "Health Shield plus Device of Shield" of the Plaintiff, the instant appeal has been filed.
2. While the learned Single Judge has dealt the matter at length in the impugned order, snapshot of the controversy is that the Respondent who is a leading national entity engaged in the business of manufacturing and selling goods related to toothpaste, toothbrushes and baby care products since 1974 and, as claimed by his counsel and as per the copies of numerous trade mark registration certificates attached along with his counter, has obtained registration of the said trade mark, which acts as a house mark, in respect of all goods/services falling in Class-1 to Class 45 of the International Classification of Goods and Services under the Nice agreement (applicable in Pakistan also), notwithstanding that the business of the Respondent doesn't fall in more than a few classes of goods, in particular, class 3 for toothpaste, class 21 for toothbrushes, and class 10 for baby feeders and alike baby products.
3. On the other hand, the Appellant is a manufacturer and one of the most renowned vegetable ghee and cooking oil brand in the country taking the inception from pre-partition days and enjoys immense household reputation in relation to their goods i.e, Banaspati Ghee and Vegetable Oils, falling in Class 29.
4. In order to give a face to the controversy, we find it prudent to reproduce the two contesting trade marks in the following:-
5. Also of relevance, is the manner in which these trade marks are used on their respective products; which we reproduce as under: {{TABLE}} IMAGE I{{TABLE}}
6. Before indulging into the side-by-side comparison of the two trade marks as reproduced in paragraph 4, from a cursory look at the images reproduced in paragraph 5, it could be noticed that while the Respondent is using its mark in true sense of a trade mark (to distinguish its goods from other competing products), the Appellant is not using the mark as a trade mark. Applicant's trade mark in question is Dalda and it is only using the impugned mark in acclamatory and exhibitionist way merely indicating that the goods being sold by it under Dalda trade mark has some special added characteristics (e.g., containing Vitamin A & D). There is a difference between the use of a mark (or sign) ordinarily and use of a mark as a trade mark. While a mark could be any graphical representation of a visually perceivable item on the packaging of a product (in the instant case), and the consumer connects it with the source of the goods. In other words when a mark (or sign) is used as a trade mark, it starts connecting products (or services) to their respective sources and origins and the customer uses the said mark when choosing a particular product, or when refusing another product instead. For example, in the above case, customer intending to buy Shield toothpaste will go to a shop and ask the shopkeeper to give him a Shield toothpaste. However, in the second case, where the impugned mark is not used a trade mark, the customer will go to a shop and will ask for Dalda cooking oil and once he has taken the container (or packaging) of Dalda cooking oil in his hand, he would look at the non- trademarked sign (which in this case is the device of Shield with words Health Shield with Vitamin A & D), comprising a fraction of the surface area of the complete packaging of Dalda cooking oil. So in the instant case, while the Respondent's mark is functioning as a trade mark, the Appellant's mark is not being used as a trade mark and if (say for example) the manufacturer of Dalda cooking oil decides to remove the said Health Shield sign from its packaging, it will not affect distinctiveness of trade mark Dalda and the customer will always reach out and choose DaIda as their choice of product, in this example. This is the key difference A between a mark (or sign) and a trade mark.
7. The very reason we attempted to distinguish a mark from a trade-mark in the above paragraph was aimed to revert to the initial controversy that use of the Respondent's trade mark is allegedly causing confusion and there is a likelihood of deception. From the example given in the above paragraph, since a customer has already made a decision to purchase a trademarked product (DaIda) and once he is in possession of the said product, on further inspection of the packaging/container he finds some additional non-trademarked information, in our mind there is no iota of doubt that the Respondent's trade mark could be construed been misused in any way by the non-trademarked type use of the impugned mark by the Appellant.
8. To us, beside what has been settled in the above paragraph, the present controversy revolves around two basic elements:
(i) A trader while in the business of selected range of goods registers his trade mark in respect of all or a large number of classes of goods/services and uses the said instrument of registration certificate to restrain other traders from using a portion of his trade mark in respect of goods which the former has never manufactured and seeks to restrain the latter from using the portion of his trade mark in relation to goods which are of prime commercial interest to the latter; and
(ii) In what circumstances a trade mark can be held to be confusedly similar with another trade mark?
9. The answer to the second point is buried in piles of cases dating back centuries where courts have established the test of comparing two trade marks. These tests have been over and over used in numerous cases including those decided by courts in Pakistan. Briefly speaking the courts have come to the conclusion that while comparing as to deceptive similarity of two trade mark, the test known as Classic Trinity requires courts to consider following three aspects: a. Goodwill of the trade mark of the plaintiff in respect of identical or similar goods; b. Misrepresentation made by the Defendant; and c. Actual damage caused to the Plaintiff from the acts of Defendant.
10. In the instant case, it is admitted that the Respondent has reputation and goodwill in its trade mark, however, such reputation and goodwill is only limited to the goods falling in Classes 3, 21 and 10, being toothbrushes, toothpastes, baby feeders and allied baby products. It is admitted position that the Respondent do not manufacture or sell goods falling in Class 29 being Banaspati ghee, vegetable Oil, cooking oil, etc., under its trade mark, therefore, first part of classic trinity, as to the prevalence of goodwill of the Respondent in respect of goods falling in class 29 (cooking oil, etc.) fails.
11. With regards, part 2, "misrepresentation" made by the Appellant, it can also be seen by looking at the complete packaging of the Appellant's product (as reproduced in paragraph 5), that no attempt has been made by the Appellant to misrepresent or disguise itself as the Respondent or to sail close to the Respondent. While dealing with cases relating to misrepresentation the important test which has to be applied in such cases is whether the misrepresentation is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors? How much is probability in the case where a person who leaves home to buy a Shield toothpaste will land home with a can of Dalda cooking oil instead? The classic test used in such circumstances is known as the "Moron In A Hurry" test, which was first used in 1978 in the case of Morning Star Cooperative Society v. Express Newspapers Limited in which the publishers of the Morning Star, a British Communist Party publication, sought an injunction to prevent Express Newspapers from launching a new tabloid, which was to be called the Daily Star. The judge ruled against the Morning Star, noting that "If one puts the two papers side by side I for myself would find that the two papers are so different in every way that only a moron in a hurry would be misled".
Applying the same test in the instant case, we tend to agree that even a moron in a hurry will not pick a bottle of Dalda cooking oil instead of Shield toothpaste, even if his last train is leaving for home in the next 5 minutes, on a Friday night.
12. With regards the third part of classic trinity, there is no iota in our mind that when products of both the parties are so different in nature, sold to different customer-needs, kept at different locations in shops (usually); a case of actual damage or loss to the Respondent on account of Appellant's use of the impugned trade mark could be imagined even. Therefore without taking any further time, we can safely conclude that the classic trinity test passes in favour of the Appellant and against the Respondent.
13. Now we come to the key contention of the use of certificate of trade mark registration by the Respondent to block entry of an honest trader commencing use of not so identical or deceptively similar trade mark in relation to a completely different range of products. To answer this question we will go to the body of the trade mark legislation, which has two arms. One protects the consumer, and the other arm protects the original creator of the mark (i.e, the honest trader). Since a trade mark is a badge of origin, the grant of a registration certificate is made to the person who uses (or honestly proposes to use) a trade mark in the course of trade to the benefit of customers so that the customers can distinguish the said trader's goods apart from other competitors' products. A trade mark registration certificate is thus a seal imposed by the Government certifying that goods manufactured (or sold) under the said trade mark will only and legitimately be sourced by the person in whose name the trade mark is registered. A trade mark registration certificate is therefore not a license to stop other traders indiscriminately.
14. The philosophy governing trade mark jurisprudence is the "use it, or lose it" principle. It usually is equated to an arm or a limb. Once a trade mark has been (honestly) adopted by a trader, (not mandatorily, but assumingly that he has even gone through the pains of registering it also), the mark will not always remain property of the said trader. As long as he is using the mark in the course of trade, he will remain the owner of the mark. If he abandons use of his trade mark, he will eventually loss all rights to the mark. That is the spirit behind "use it or lose it" principle. In this case, the Respondent seemingly has registered its, trade mark in nearly all possible goods/services around the globe, where it only uses the trade mark in respect of a selected range of products, its registration of the said mark in classes for which he has made no commercial use, is just like deadwood. The concept of purity of trade mark register hinges to the idea that trade marks which are not used by their respective owners, shall be removed from the register of trade marks since possession of the registration certificate without active commercial use of the trade mark negates the very purpose of trade mark legislation, and at best can be treated as trade mark trafficking which is an undesirable act where a trader uses the instrument of registration to gain unfair advantage against an honest trader.
15. Since there have been similar incidents in the past, the current trade mark legislation known as the Trade Mark Ordinance, 2001 was aimed to arrest such modes of unfair competition. In terms of section 67, a new scheme has been introduced which restricts use of such acts of competition, contrary to honest business, industrial or commercial practices. Also a firewall has been created by section 52, where remedy for groundless threat of infringement proceedings has been provided.
Pursuant to section 52, where a person threatens to bring an action against another person on the ground that the other person has infringed a registered trade mark, the person aggrieved by the said groundless threat may bring proceedings of relief against the person making the threat. The aggrieved person has to show that the threat is justifiable; meaning thereby that the person alleging infringement is stretching his rights beyond the umbrella provided by section 40 of the Ordinance, where to prove infringement, a trade mark owner has to show that the defendant is using the identical/deceptively similar trade mark in the course of trade and in relation to goods or services which are identical with those for which the mark is registered.
16. By stretching beyond the umbrella provided, the legislation intends to mean that the person who has registered a trade mark is threatening infringement thereof when the defendant is (a) not using the identical trade mark; or (b) not in the course of trade; and (c) not using the trade mark in relation to identical goods or services. It could be thus seen that the act of the Appellant does not come anywhere inside the triangle created by these three pillars, therefore no infringement of the registered trade mark of the Respondent has been established.
17. As a last round, the counsel for the Respondent contended the act of the Appellant is causing "dilution" of the Respondent's trade mark. While, at the first hand, since the mark of the Respondent is allegedly registered in class 29, therefore a better claim (as already raised by it) ought to be of infringement, rather than of dilution. We would still like to deliberate on this aspect of the learned counsel's contention, but in brief. Dilution is defined in the 2001 Ordinance to mean "the lessening of the capacity of a well-known trade mark to identify and distinguish the goods or services, regardless of the presence or absence of competition between owner of the well know trade mark or other parties, or likelihood of confusion or deception". As it could be seen from the foregoing, to claim dilution attack, the mark has to be a well-known trade mark.
18. Well-knowness arrives in the 2001 Ordinance from Article 6b is of the Paris Convention for the Protection of Industrial Property, 1883, which got imported into the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and therefore was embodied in our national legislation. To be well-know, a mark has to fulfill a host of requirements which are listed in section 82(2) of the 2001 Ordinance. These include:
(i) the amount of Pakistan or worldwide recognition of the trade mark;
(ii) the degree of inherent or acquired distinctiveness of the trade mark;
(iii) Pakistan or worldwide duration of the use and advertising of the trade mark;
(iv) Pakistan or worldwide commercial value attributed to the trade mark;
(vii) Pakistan or worldwide geographical scope of the use and advertising of the trade mark;
(v) Pakistan or worldwide quality and image that the trade mark has acquired; and
(vi) 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.
19. While there is no global list of well-known trade marks, but Coca-Cola; Google; Apple; McDonalds; Microsoft; IBM; Citibank; Boeing; Toyota are said to qualify such a list. With regards national trade marks, without prejudice, we are of the opinion, and such list could include trade marks like Mobilink, Telenor, Zong and Ufone, which on the basis of their immense reputation and goodwill, could be protected from unauthorized use on non-competing goods and services.
Therefore to allege the 'dilution' claim, the Respondent has to prove the highest degree of fame required under section 86, to which in our opinion, trade mark of the Respondent SHIELD does not rise.
20. Thus, in the instant case, on account of the foregoing considerations, we come to the conclusion that the allegations of the Respondent are completely flawed on all the above discussed accounts, and the Appellant has legit reasons to continue to use its impugned trade mark.
21. These are the reasons for the short order passed on 24.02.2016 allowing this appeal and dismissing the injunction application filed in the Suit No, 752/2014.