ORDER ON APPLICATION UNDER ORDER XXXIX, RULE 4, C.P.C. READ WITH SECTION 151, C.P.C.
SHAKIL AHMED ABBASI, PRESIDING OFFICER.---This order shall dispose of the above application filed by the Defendant requesting for vacation of Ad Interim Injunction Order dated 03.05.2018 granted to Plaintiff on his Application under Order XXXIX, Rules 1 and 2, C.P.C. (C.M.A. No, 38 of 2018).
An Ad Interim order dated 03.05.2018 was issued by this Tribunal in terms of Rules 1 and 2 of Order XXXIX restraining the Defendant/Respondent, its agent men, representative, distributors and employees from using the trademark/trade name "Brands 4 less" and imitated bag device along with logo/artistic work and/or from marketing, promoting, trading and selling through retail outlets or online and from passing off products under the trademark/trade name "Brand 4 Less" and/or bag device along with logo/artistic work in any manner whatsoever.
The Defendant through the instant application challenged the grant of Ad Interim Injunction and prayed for vacation on the following grounds.
1. That the instant Suit is not maintainable against the Defendant as the Plaintiff has failed to disclose any cause of action against the answering Defendant in the Plaint. The suit along with the Stay Application was liable to be dismissed.
2. That the entire premise on which the Plaintiff's case is based on is factually and legally incorrect.
The Plaintiff has purposely withheld pertinent information from this Hon'ble Tribunal in an attempt to swa y the same to pass orders to the detriment of the Defendant without taking into account the merits of the case.
3. The Defendant initiated business activities in the name and style of "Brand 4 less" in the period 2007-2008 wherein the defendant was engaged in the resale of branded/designer clothing and accessories of such brands/designers that were not already in engaged in my retail activities themselves in Pakistan. It engaged in the sale of clothing of independent third parties. Furthermore, the Defendant maintained a business account in the name of 'Brand 4 less' with Bank Al-Falah Limited from 19th September, 2017.
4. The Defendant first applied for registration of its trademark vide Form TM 1 bearing Application No 261080 in class 35 dated 29th January, 2009. Uptill 2nd February, 2011, the application abovementioned was pending which can be evidenced vide the Memorandum of the Trade Marks Registry dated 24th March, 2011. The application abovementioned however was deemed abandoned as the Defendant had applied for the registration personally and did not have the legal expertise to move forward. However, for the purpose of clarity it must be noted that Defendant did not cease to use its trademark at any juncture and has continued to do so until it was restrained from doing so as per the orders of this Hon'ble Tribunal dated 3rd May 2018.
5. From the inception of his business, the Defendant invested heavily in marketing of it's the hopes to make proper. In this regard, the Defendant incurred heavy cost on account of advertising and promotion of the business.
6. The Defendant a has filed its Notice of Opposition vide Form TM-5 with the Trade Marks Registry dated 22nd May, 2018 to the Application for Registration (TM-1) filed with the Trade Mark Registry bearing No 472/2018 in class 35 dated 16th October, 2017 (Plaintiff's Application). The same is pending adjudication it is the submission of the Defendant that until such time that the same is decided, any and all orders pursuant to the instant Suit and its accompanying applications be set aside.
7. That the Plaintiff has failed to make out a prima facie case and the balance of convenience also does not lean in its favour while the Defendant has established a prima facie right to use the trademark applied for it prior to the Plaintiff and had been in use for an extensive period of time i,e, from 2008 till date.
8. That in order to obtain an injunction, there must be a prima facie case, it must be shown that unless such injunction was granted, it would result in irreparable damage to the plaintiff and the balance of convenience should be in favour of granting the same. Where any of such ingredients was missing, the injunctions could not be granted. Without prejudice to the frivolous nature of the instant suit, the Plaintiff having no stake or footprint in Pakistan, the same has not in any way suffered any loss(es) or damage whatsoever, 9.That it is settled principle of law as upheld by superior courts of Pakistan that an order granting temporary injunction which is not based on any ground and is without any reason, is liable to be set discharged, varied and aside in the best interest of justice and equity.
10.That the Defendant has prima facie strong case with balance of convenience also leaning in its favour and is suffering irreparable loss if the ex parte interim stay order granted by this Hon'ble Court on 03.05.2018 is not discharged, vacated and set aside.
The matter was fixed and hearing conducted from time to time. The main contention of learned counsel for Defendant is that the Plaintiff has no cause for grant of a Injunction as all the three essential ingredients simultaneously required for such injunction are missing in the Plaintiff's case.
He contended that the Plaintiff has no prima-facie case as he is not registered Trade Mark Owner in Pakistan to bring an infringement Suit with seeking injunctive relief, neither balance of convenience in his favour nor there is no likelihood of causing an irreparable loss to him. In view of admitted fact that Plaintiff is not doing any business nor having any office/show room/outlet in Pakistan by virtue of which it could be proved by evidence, if any, which plaintiff has failed to furnish, that by use of the impugned Trade Mark (Brand for Less) by the defendant, certain amount of loss in terms of sale/market etc. is caused to him. He also contended that being prior user/adopter of the impugned Trade Mark his Application for registration of Trade Mark, although filed earlier, is pending whereas the Plaintiff managed to get his Trade Mark registered even though applied much after to his Application. He accordingly requested the Court to vacate the Ad Interim Injunction order dated 03.05.2018.
Conversely the learned counsel for Plaintiff argued that the Plaintiff being the owner of well known mark is entitled to injunctive relief in' terms of section 86(3) of Trade Mark Ordinance, 2001 which requires no registration or actual use in the form of sales of goods or services under the impugned Trade Mark in Pakistan. He further argued that under the Principle of "Dilution" the loss is being caused to him. In this connection for grant and confirmation of Injunctive relief he relied upon the case law cited as Pioneer Cement v. Fecto Cement Ltd. (PLD 2013 Lahore 110 and (1) Tabaq Restaurant v. Tabaq Restaurant (1987 SCMR 1090).
On the principle of "Dilution" the learned counsel for Defendant cited the ruling in his favour
(1) 2012 CLD 226 ARC International v. Ahmed Mansoor
(2) 2016 CLD 1864 Dalda Foods (Pvt.) Ltd. v. Messrs Shield Corporation Limited
(3) Suit No, 35 of 2007 El Baik Food Systems v. Al BAIK He emphasized that the ratio of these Judgments in his favour and on the basis of which the instant Injunctive Order is liable to be vacated/withdrawn .
1. In the 1st case the criteria to determine whether a Trade Mark is well known or not is terms of section 86(2) of the Ordinance ibid are narrated which are required to be ful-filled first to established a mark to be "well known". According to him the said criteria are not available to the Plaintiff.
2. In 2nd case also a similar ratio has been found as laid down by the Hon'ble High Court holding that "Plaintiff had contended that the act of defendant caused "dilution" of the plaintiff's trade mark. In order to claim 'dilution', the trade mark had to be a well known mark. Requirements of section 82 of Trade Marks Ordinance, 2001 had to be fulfilled to determine whether a trade mark was well known. Plaintiff, in support of his 'dilution' claim, had to prove the highest degree of fame required under section 86 of the. Ordinance".
3. The 3rd case which appears to be most relevant and applicable to the facts and circumstances of the instant case in which the Hon'ble High Court, after thorough discussion of the similar grounds and contentions on the parties was pleased to hold that "the Defendant is financially suffering since the plaintiff has filed the suit and from the facts narrated above the plaintiff in my view do not have a prima facie case or a Balance of convenience for confirmation of the interim order passed earlier by this Court and as such the same is set aside".
In view of the foregoing discussion, I find substance in the arguments advanced by learned Counsel for Defendant for vacation of Stay, in view of the above referred rulings of the Hon'ble Court as well as in view that the Plaintiff has failed to make out a case for grant of Interim relief and its confirmation as none of the essential ingredients for such purpose is available to him. Even if, on the test of prima facieness, he being owner of well-known mark although not requiring the registration, the 2 other tests are also to be qualified to bring an infringement suit for an injunctive relief which in my view otherwise are also to be qualified even by an unregistered Trade Mark owner while bringing a passing off action and seeking Injunctive relief thereof.
It may not be out of place to observe that being owner of a well known mark may be a good ground for the purpose of registration of the same in a territory other than where it is actually registered but the same may not be a good ground for injunctive relief unless the ingredients of balance of convenience and irreparable loss are established before the Court for such relief.
In my view section 86(3) ibid permits the owner of well known mark to bring a suit for infringement of the said mark instead of bringing a passing off action despite being an unregistered owner. It only absolves such owner of fulfillment the test of the first ingredient of prima facieness but not from other 2 ingredients discussed in preceding part.
Before parting with this order I must place my appreciation for the labour and assistance put in by learned counsel for defendant who infact was engaged at a later stage.
Resultantly the Ad Interim order dated 03. 05. 2018 is recalled, withdrawn/vacated through this final order in terms of Rule 4, Order XXXIX, C.P.C.
Let the Suit be proceeded accordingly.
Given under my hand and seal of this Tribunal dated 08th day of October, 2018.