' MUHAMMAD FARRUKH IRFAN KHAN, J.---This appeal under section 104 of the C.P.C. Has been filed by Messrs Shaukat Soap and Ghee Industries (Pvt.) Ltd. (hereinafter referred to as "the appellant") through its Chief Executive Mr. Habib Ahmad against the order dated 19.2.2015, passed by the learned Additional District Judge, Gujranwala in Civil Suit No,2 of 2012 whereby application of the appellant filed under Order XXXIX, Rules 1 and 2 of the C.P.C. For grant of temporary injunction against Messrs Shaukat Brothers Soap Manufacturers (Pvt.) Ltd. (Hereinafter referred to as "the respondent") has been dismissed.
2. The background of the case is that the appellant filed a suit for permanent injunction against the respondent. Along with the suit it filed an application for temporary injunction. In the suit it was averred that the appellant's Trade Mark "SHAUKAT SOAP" is registered under Registration Nos.25850 dated 30.6.1956 and 44332 (in Class 3) dated 8.11.1965 (hereinafter referred to as the "Trade Mark").
The said Trade Mark registrations were originally obtained in the name of Abdul Ghani, Abdul Hamid, Manzoor Ahmed, Muhammad Siddique, Mushtaq Ahmed trading as Shaukat Soap Factory, Thanewala Bazar, Gujranwala. According to the extract of the certified copy of the registration No,44332, pursuant to a request for change of ownership on Form No, TM-24, on 15th August, 1979 Messrs Shaukat Soap Factory Ltd. Having the same address was registered as the subsequent proprietor of the Trademark w.e.f, 9.8.1972. Based on the Memorandum and Articles of Association of the company filed along with the suit it has been submitted that the company incorporated in the name of Shaukat Soap and Ghee Industries (Pvt.) Ltd., the appellant, has taken over the running business and concern carried out at Gujranwala in the name and style of Shaukat Soap Factory; that this subsequent merger is being recorded with the Trademarks Registry and the appellant claims that it is the true and bona fide owner of the aforesaid Trademark and that it has the exclusive right under the Trade Marks Ordinance, 2001 to use or authorize the use of the aforesaid Trademark.
3. The respondent on the other hand contested the application under Order XXXIX, rules 1 and 2, C.P.C. For grant of temporary injunction by contending that the Trademark Registration Nos.25850 and 44332 for the registration of the words "SHAUKAT SOAP" are invalid as these words cannot be considered to be of a distinctive character under section 6(1)(d) of the Trade Marks Act, 1940 and that the word "SHAUKAT" is a surname according to its ordinary significance; that the said word cannot be registered as a Trademark as it is free to be used by anyone who has the name Shaukat.
The respondent further asserted that the Trademark "CRYSTAL SHAUKAT" is a distinctive Trademark and sufficiently different from the Trademark "SHAUKAT SOAP" so there is no possibility of any confusion or deception in the market.
4. At the time of the decision of the application under Order XXXIX, rules 1 and 2, C.P.C. The above said factual background and information/material was available with the learned Additional District Judge. However, in her impugned judgment she has proceeded to decide the matter on the ground that there is very minor similarity between the trademarks "SHAUKAT SOAP" and "CRYSTAL SHAUKAT" as there is only a common usage of colour yellow by the respondents similar to those of the appellant on their wrapper in which the soap is packed. She has relied on the case law reported as Messrs Super Asia v. Anwar Industries (2007 CLD 1181) stating that it has been held in the said case that the trademark "Asia" and "Super Asia" were held to be different names and not confusingly similar. Lastly she has observed that both the parties are real brothers and since they have inherited the business, as such they have similar rights and claims on the basis of which it has been held in the impugned judgment that the appellant has failed to establish a good prima facie arguable case and, therefore, observed that there was no need to discuss other ingredients for the grant of temporary injunction.
5. I have heard the arguments and perused the pleadings of the parties and the material which is placed along with this appeal and have not found any claim of the respondent that it or its predecessors were owners of the business which is now being managed and run by the appellant or that parties have same rights/claims. During the course of arguments learned counsel for the respondent has failed to answer the query of this Court as to whether or not the claim of the respondent relates to a disputed business built around trademark SHAUKAT SOAP which they were also claiming through common usage or inheritance. In view of the above backdrop I find that the impugned order is not only ludicrous and careless but also not based on the pleadings of the respondent. Learned ADJ, Gujranwala has not made any effort to read through the pleadings of the parties and to understand the concept of Trademarks law and to apply the same. She has also failed to take into consideration the principles of deciding an application under Order XXXIX, Rules 1 and 2, C.P.C.
6. The stance of learned counsel for the respondent that the trademark "SHAUKAT" is hit by section 6(1)(d) of the Trademarks Act, 1940 (which is similar in scope as section 14 of the Trade Marks Ordinance, 2001) as such it was not registerable and thus a prima facie case is not made out in favour of the appellant, is not sustainable for the reason that section 43 of the Trade Marks Ordinance, 2001 provides that in all legal proceedings relating to a registered trademark the fact that a person is registered as a proprietor thereof shall be prima facie evidence of the validity of the original registration of the trademark and of all subsequent assignments and transmissions thereof, whereas section 44 ibid provides that in all legal proceedings relating to a registered trademark, the original registration of the trademark shall, after five years from the date of its original registration, be taken to be valid in all respects unless the registration was obtained by fraud or unless it offends the provisions of section 14(3) of the Trade Marks Ordinance, 2001.
7. The law provides a proper mechanism and procedure for seeking revocation (section 73) and invalidity of registration (section 80) to an aggrieved party for redressal of its grievance, if it considers that a trademark in dispute was wrongfully registered by its proprietor. No such application/petition appears to have been filed by the respondent before the Court/Forum of Competent Jurisdiction. In the absence of filing of any such formal application, the argument of respondent to that effect cannot be considered. Also unless any act of fraud is prima facie floating on the surface of a trademark registration, the trademark registration, which is obtained after thorough examination and publication of notice in the Trademarks *Journal for inviting public objections, must be considered to be validly registered and be enforced to provide certainty to its owner for protection of its registered rights as, otherwise, if validity of a trademark registration is doubted on raising of each and every defense of an alleged infringer, the purpose of obtaining statutory trademark rights through registration, that too after publication of notice of advertisement of the intended registration, would be defeated, which will adversely affect the sanctity of a trademark registration granted under the statute and cause pandemonium in the business world.
8. A Court dealing with an application under Order XXXIX, Rules 1 and 2, C.P.C. Has to consider which of the parties has a prima facie case, balance of convenience or inconvenience and likely to suffer irreparable loss in case of grant or refusal of interim injunction. I am afraid that the learned ADJ has failed to appropriately adjudicate on the lis before her by jumping to the conclusion that the petitioner has failed to establish a good prima facie arguable case, without tentatively considering all the facts and circumstances of the case and the judicial decisions, and to observe that there was no need to discuss the other ingredients for the grant or refusal of temporary injunction. This Court is of the view that the learned ADJ should have discussed all three ingredients necessary for disposal of an application under Order XXXIX, Rules 1 and 2, C.P.C. And should have based her decision by giving a tentative finding on each of the said three ingredients.
9. The most important aspect of the matter is that the claim of the appellant is that it is the registered proprietor of trademark "SHAUKAT SOAP" under registration Nos. 25820 and 44332 in class 3 and has been using it for the last several decades. The appellant company has exclusive right, reputation and good will therein. Where a party claims registration of a trademark which is valid, this would create a prima facie case in favour of the said party as has been observed in the case of Tabaq v. Tabaq (1987 SCMR 1090) and balance of convenience will also tilt in favour of the appellant/proprietor of the said trademark as infringement of its trademark affects its goodwill and reputation and will be likely to cause said party irreparable loss which cannot be compensated in monetary value. Therefore, the impugned order on this score alone is defective and illegal.
9.1 Even otherwise the appellant is armed with trademark registrations going back to 1956, claiming use thereof since a number of decades therefore the balance of convenience is in favour of the appellant in the grant of temporary injunction.
9.2 The likelihood of irreparable loss which also includes loss of reputation, goodwill, customer confidence and trust cannot be compensated in terms of award of damages or costs. Moreover, the Trademarks Ordinance, 2001 is a special law and therefore, has to be given effect as such. It clearly provides in section 46(2) that in an action for infringement, all such reliefs by way of damages, injunctions and accounts can be availed by the proprietor of a trademark, and not as alternative to one another . Accordingly, it is apparent that the legislation has intended to clarify that where an injunction, damages and accounts all have been claimed together, an injunction would not be refused just because in addition to an injunction, damages and accounts have also been claimed. This aspect becomes further clear when repealed law namely Trademarks Act, 1940 is reviewed as no similar provisions were available therein, which are now available in the Trademarks Ordinance, 2001. Also even otherwise, while dealing with infringement cases under the provisions of the Trademarks Act, 1940 the courts in Pakistan have, independently, held that loss which occurs to the business and reputation of the proprietor of a trademark was not measurable in terms of money. See case entitled Telephone Soap v. Lever Brothers (1994 CLC 2135). Similarly, in the case of Jamshed Aslam Khan v. Azra Jawed (1995 CLC 436) it was held that loss of reputation, goodwill and popularity of the product of the trademark owner would be irreparable and could not be measured in terms of coins. The later case was approved by a learned Division Bench of the Sind High Court in the case reported as Azra Jawed v. Jamshed Aslam Khan 1996 MLD 1203.
10. I now deal with respondent's argument that trademark Crystal Shaukat is sufficiently different from the trademark Shaukat Soap and there is no possibility of any confusion or deception in the market. In this respect, it cannot be denied that Appellant's trademark is SHAUKAT SOAP, with word Soap being name of the goods. Thus that main proprietary feature is SHAUKAT.. The respondent has adopted SHAUKAT and has added the word CRYSTAL before it. Therefore, in essence the question is whether addition of a word to a registered trademark, and in this case which has been used for a long time, makes the two marks sufficiently different based on which there is no possibility of confusion or deception. To answer this question it is useful to refer to the case reported as J.N Nichols (VIMTO) Plc A Company Incorporated in the United Kingdom v. Mehran Bottlers (Private) Limited Karachi (PLD 2000 Kar. 192) in which a learned single judge of the Sindh High Court relied on an Indian case and principles stated therein and stated as follows: In the case of Hiralal Parbhudas v. Ganesh Trading Company, reported in AIR 1984 Bombay 218, the High Court of Bombay, after taking into consideration several decisions of the Indian Supreme Court, summed up well established principles to be observed in deciding the question of similarity of two marks in the following manner:-
(a) What is the main idea or the salient features?
(b) Marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole.
(c) Overall similarity is the touchstone.
(d) Marks must be looked at from the view and first impression of a person of recollection.
(e) Overall structures, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied.
The purchaser must not be put in a state of wonderment.
(g) Marks must be compared as a whole, microscopic examination being impermissible.
(h) The broad and salient features must be considered for which marks must not be placed side by side to find out differences in design.
(i) Overall similarity is sufficient.
' In the above case while granting an injunction it was held that: "Keeping in view the established principles, it is noted that Vimto being the trade mark of the plaintiffs is being used by the defendants of course by prefixing their trade mark Pakola. Under the circumstances, an unwary purchaser, not the intelligent purchaser, is always likely to be deceived for the reason that he will only demand Vimto and is not supposed to provide necessary details about the two trade marks. A strong prima facie case is made out in favour of the plaintiffs and in such situation the balance of convenience goes into the background. This is for the reasons that the defendants cannot be permitted to take advantage of their own mischief by raising the plea of balance of convenience. Under the circumstances, the plaintiffs are likely to suffer irreparable loss."
' In another case relating to registration of a trademark, another learned Single Judge of the Sindh High Court in a case reported as Transpak Corporation Limited v. The Registrar of Trade Marks (1991 MLD 658) observed as follows: "On merits the question arises, as to, whether unwary purchaser would take the products of "Shield" to be "Bronze Shield". In the case of Ruston and Hornby Ltd. v. Zamindara Engineering Company AIR 1970 SC 1649, plaintiff owned registered trade mark "Ruston" in respect of diesel internal combustion engines, while the defendant used the words "Ruston India" on similar engines manufactured by it and in an action for infringement brought by the plaintiff against the defendant it was held that if the defendant's trade mark is deceptively similar to that of the plaintiff, the fact that the word "India" is added to the defendant's trade mark, is of no consequence and the plaintiff is entitled to succeed in its action for infringement of its trade mark. In the case of M/s. Dada Soap Factory Ltd. v.
Crescent Pak Industries Ltd. And another 1987 MLD 1256, the view taken was that "Al-Burq" was similar to "Burq". In the case of National Detergents Ltd. Co. v. Mod International (Pvt.) Ltd. Co. (Suit No, 643/89), I had taken the view, while deciding an application. For interim injunction on 30-5-1990 that addition of word "French" to the word "Flare" by the defendant would not materially affect the piracy, when the plaintiff was owner of the registered Trade Mark "Flair".
' It is to be noted that case of National Detergents v. Mod International referred to above is reported as 1993 MLD 590.
' In Mehran Ghee Mills (Pvt.) Limited v. Chill= Ghee Mills (Pvt.) Limited reported as 2001 SCMR 967 the Honourable Supreme Court held: "If the two marks are absolutely identical no further probe is needed and infringement is established.
' To constitute infringement it is not necessary that whole of the mark be adopted.
' The infringement will be complete if one or more dominating features of a mark are copied out."
11. The reliance placed by the learned Additional District Judge on Super Asia v. Anwar Industries (2007 CLD 1181) in which, according to her, trademarks ASIA and SUPER ASIA were held to be different names and not confusingly similar, is misplaced and out of context. The said case had altogether different facts and circumstances. There was some previous litigation between the parties in that case before the Registrar of Trademarks, the trademark registration for ASIA in the name of the plaintiff was subject to a disclaimer on exclusive right on the word "Asia" and there was an unexplained long delay of 11 years in instituting proceedings for infringement and passing off by the plaintiff against the defendant.
' Moreover, it appears from the said judgment that the reported cases referred to above namely, PLD 2000 Karachi 192, 1991 MLD 658, 1993 MLD 590 were neither referred nor considered by the learned Single Judge of this Court in arriving at the decision in the aforesaid case reported as Messrs Super Asia M.D. (Pvt.) Ltd. Through Chief Executive v. Messrs Anwar Industries -(Pvt.) Ltd.
Through Chief Executive and another (2007 CLD 1181). In my humble opinion, the principles laid down in the aforesaid three cases by the learned Single Judges of the Sindh High Court state the correct principles of law, and rules for comparison of similar nature have also been expressed in the apex court judgment of Mehran Ghee (Pvt.) Ltd. v. Chiltan Ghee Mills (Pvt.) Ltd. (2001 SCMR 967) referred to above.
12. Thus in light of the aforesaid cases, and as appellant's trademark SHAUKAT is wholly incorporated in respondent's trademark, the addition of word Crystal is of no consequence and does not eliminate the likelihood of confusion and deception and just because the respondent has added the word Crystal before SHAUKAT does not make respondent's trademark CRYSTAL SHAUKAT sufficiently dissimilar to the registered trademark SHAUKAT SOAP. This is also because in using the trademark CRYSTAL SHAUKAT the respondent is using appellant's registered trademark SHAUKAT wholly, even though with addition of word CRYSTAL, which cannot be allowed. If the intention of respondent is honest and it is confident of its quality and desires to avoid conflict it can use the word "CRYSTAL" by dropping the word SHAUKAT, which is the proprietary registered trademark of appellant.
13. It is also the case of the appellant that the respondent is trying not only to infringe its trademark but has also adopted a colour scheme of the packaging/wrapper identical to that of the appellant on which the respondent is also using the portrait of a person similar to a portrait of one of the predecessors of the appellant. The competing wrappers have been placed on the record. A perusal of the wrappers which are annexed with the suit and have also been filed in this appeal shows that the respondent has made an effort to pass off its goods in the said packaging/wrapper as and for that of the appellant by making this closely and confusingly similar to the appellant's as both have an over all yellow and black colour scheme, design and get up with Shaukat Soap and Crystal Shaukat written in Urdu within rectangles and respondent's packaging/wrapper is indistinguishable from the appellant's packaging/ wrapper due to former's near identity to the later's.
14. It has to be kept in mind that the Trademarks Ordinance, 2001 in its preamble states that "Whereas it is expedient to amend and consolidate the law relating to trade mark and unfair competition and to provide for registration and better protection of trade marks and for the prevention of the use of fraudulent marks, and matters ancillary thereto or connected therewith", thus the trademark law not only provides for registration and better protection of trademarks but for prevention of the use of fraudulent marks also. The scope of the trademark law revolves around prevention of confusion and deception in the market place so that the public is not confused or deceived as to the origin of goods they wish to buy and also to protect the public from the acts of unscrupulous elements. The courts of this country have strongly criticized and discouraged parties who adopt another person's trademark and there are several reported judgments of the apex Court and the High Courts on this point.
' In the case of Messrs Alpha Sewing Machine Co. v. Registrar of Marks and another PLD 1990 SC 1074 at page 1076 the Supreme Court approved the following observation of the High Court:- "it need hardly be reiterated that the law of registration operates not merely for the benefit of the traders but also for the benefit of the public at large and its main object is to secure free enjoyment of the right of manufacturing and marketing of one's products under one's registered trademark and also to save the general public from being deceived by the acts of unscrupulous manufacturers and sellers of goods bearing the fake trademarks of others".
' In the same case at pages 1076 and 1077 it was also observed as follows: "The learned counsel for the petitioner obviously remained unable to give any satisfactory reply as to why in the presence of an attractive mark of their own: 'Alpha Sewing Machine Company' the petitioners are keen to have trademark of respondent No, 2 ' In Montgomery Flour and General Mills Ltd. v. Registrar of Trademarks, reported in PLD 1973 Kar. 567 at page 593 it was observed as follows: ". Although the two words separately '7' and `UP' are words of the English language in combination these are as it were, an invented expression. One naturally wonders why, of all possible expression that the appellants might have chosen, they hit upon this particular combination. I cannot agree that this is a coincidence; it indicates quite clearly I think that there was an intention to capitalize upon the reputation of respondent No, 2."
' The above observation in Montgomery Flour case (PLD 1973 Kar. 567) was approved in the Supreme Court case of Seven-up Company V. Kohinoor Thread Ball Factory, reported in PLD 1990 SC 313 at page 345 in the following words: "The applicants for this registration mark had a wide and open filed 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."
' In the case of Cooper's Incorporated v. Pakistan General Stores reported in 1981 SCMR 1039 at page 1044 it has been held as follows: "Clearly, if the adoption of a trade mark by an appellant is proved to be dishonest, no amount of user of the trade mark by him can justify registration on the ground of "other special circumstances" under subsection (2) of the Act of the kind which exist in the present case and which existed in the two cases cited above." This observation states the correct law, ' In the same case at page 1042 it has also been held as follows: "that the respondent did not produce any evidence before the Deputy Registrar to show that its use of the mark 'Jockey' was honest, therefore, as pointed out long ago by the Privy Council in Subbiah v. Kumeraval (1) the fact that the respondent has copied the applicant's mark cast on it a heavy burden to show that its use of the appellant's mark was honest. But, as it has not produced any such evidence, it follows that it had dishonestly copied the appellant's trademark."
' In PLD 1991 SC 27 at page 33 the Supreme Court observed as follows: ' In the case of Singer Machine Manufacturers v. Wilson 3. Appeal Cases 376, the House of Lords approved the principle reproduced in Mitchell v. Henry (1880) 15 Chancery Division 181 at 191 in the following words:- " even if it were made out that the defendants had originally adopted a mark honestly and innocently, either in ignorance of the existence of the plaintiff's mark, or in the belief that their mark was so different from that of the plaintiffs' as not to be calculated to mislead an ordinary purchaser, their continuing to use the mark after they became aware that their use of it did cause their goods to be mistaken for the goods of the plaintiffs, would be not less fraudulent in the eye of the Court than if they had originally begun to use it with a fraudulent intent. The defendants must bear in mind that the original honesty of intention does not protect the continued user, if the user is found practically to have the result of deceiving, or is calculated to deceive purchasers, because it is very easy for manufacturers to avoid any possibility of misleading purchasers if they are minded to avoid it."
' In the said case at page 34 it was observed as follows:- "Applicant had shown no reason tenable at law to pick up invented word of foreign firm enjoying inside the country and outside a reputation for electric goods of various descriptions the adoption of the same trademark phonetically in respect of electric fans is bound to create likelihood of confusion and deception to the consumers of such goods. Hence, it is against public interest to register such a trademark.
15. In light of the prima facie facts available on record as well as the aforesaid binding judgments of the honourable Supreme Court, and also the judgments of the High Court, it prima facie appears that Respondent has dishonestly adopted the trademark SHAUKAT which is the registered trademark of Appellant. Respondent's addition of the word CRYSTAL before the word SHAUKAT to make it Crystal Shaukat has no bearing or consequences and does not protect it from being liable for infringement of the registered trademark SHAUKAT SOAP. This is also as the public might assume that CRYSTAL SHAUKAT is yet another product of the same party which is selling products under the trademark SHAUKAT SOAP or is another quality or range of product and/or manufactured under permission or authorization of the owners of the registered trademark SHAUKAT SOAP, which is being sold in the Pakistani market for decades.
16. In the circumstances, the impugned order is set-aside and the respondent is restrained from using the word "SHAUKAT" as a trademark either alone or along with the word "CRYSTAL" or in conjunction with any other word or device along with a wrapper of soap which is yellow and black in colour scheme, design and get up and depicts the portrait of their predecessor in the same place and position as that of the appellant till the decision of the main suit. It is, however, pointed out that no observation made by this Court in this order would be taken into account while deciding the main suit which would be decided on the basis of evidence recorded and the arguments of the parties at the relevant time. The instant appeal is allowed in aforesaid terms.