MUHAMMAD JUNAID GHAFF AR, J.---All three listed applications are being dealt with and decided through this common order . Application at serial Nos, 1 and 2 have been filed on behalf of the Defendant under Order VII, Rules 10 and 11, Civil Procedure Code ("C.P.C."), whereas, application at serial No, 3 is under Order XXXIX, Rules 1 and 2, C.P .C. filed on behalf of the Plaintif f seeking an injunction against the Defendant.
2. This is a Suit for Declaration, Permanent Injunction and Damages being sought against the Defendant for allegedly infringing their trademark as well as passing-of f the same by selling such goods as a licensed vendor under the name and style of Plaintif f's trademark. This Suit has been filed on behalf of two Plaintif fs, and Plaintif f No,1 is a company governed and registered under the laws of Luxembourg, whereas, Plaintif f No,2 is a company incorporated under the laws of United Arab Emirates. It is claimed that Plaintif fs jointly own and are authorized to the exclusive use of the registered trademarks of their companies under the name and style of "SAMSONITE "
Group for trademarks which includes but are not limited to, 'SAMSONITE ' 'AMERICAN TOURISTER' and 'HIGH SIERRA' (relevant for the present purposes), in addition to various other trademarks as well. It is their claim that Samsonite brands are known as the world's largest and most recognizable brands of luggage, bags and other related items.
3. Learned Counsel for the Plaintif f has contended that admittedly the trademarks being claimed by the Plaintif fs are well known marks in most jurisdiction of the world; including but not limited to European Union, United States of America, Japan, Australia and South Korea, whereas, these trademarks are regis tered worldwide and in Pakistan the registration of such marks was procured or is being procured in the name of Plaintif f No, 2 and or through permission as provided under the Tradem ark Ordinance, 2001 read with Tradema rk Rules, 2004 and has referred to Para 4 of the plaint, wherein, the details of registration of all these trademarks is mentioned. Per learned Counsel, the trademarks of the Plaintif fs in question undoubtedly are the most well-known and recognizable names in the luggage industry , whereas, the Plaintif fs group is the world's largest travel luggage company established more than 100 years ago. According to him no exception can be drawn to the fact that under the law, Plaintif fs trademarks are well known marks, not only outside Pakistan, but so also within Pakistan. Learned Counsel has further submitted that until 2016 the Defendant was engaged by Plaintif f No,2 as an authorized distributor for Samsonite products in Pakistan and was accorded permission to use the Plain tiffs trademark(s) in Pakistan in relation to authorized genuine products procured from Plaintif f No,2, and during such period the Defendant was acting as a reseller of Plaintif fs brands in Pakistan. According to the learned Counsel there was no written agreement between Plaintif f No,2 and the Defendant, in respect of such permission to use the trademarks; nor in respect of Defendant being an authorized distributor , and further , the Defendant was never registered with the trademark registry as a registered user of the trademarks in Pakistan, and accordingly the Defendant never acquired any right in respect of such trademarks and could continue using the said trademarks only at the will of the Plaintif fs. Per learned Counsel due to disputes and the unhappy and poor performance of the Defendant as its authorized distributor , in August 2016, the Defendant was informed that a new distributor is being appointed and was requested to settle the modalities in respect of the stocks already available. According to the learned Counsel the dispute in respect of the severance of relationship between the Plaintif fs and Defendant is not before this Court; but the Court having jurisdiction in Lahore. For the present purposes, according to the learned Counsel, it is the case of the Plaintif fs that despite severance of the relationship, the Defendant is still selling Samsonite brands in their retail stores with complete display and use of signage pretending to be still working as authorized resellers.
Per learned Counsel this amounts to infringement of the Plaintif fs trademarks and is also a case of passing-of f, in the alternative. According to the learned counsel the Defendant on its letterhead as well as the display boards in and outside the shops, is still using the logo of Samsonite for which they are no more authorized. Learned Counsel has referred to the correspondence placed on record as well as the photographs placed through statement before the Court and has contended that the Defendant despite giving an undertaking before the Court on 27.09.2017 is still using the Plaintif fs trademarks and signage to promote its business which amounts to infringement of the Plaintif fs trademark and must be restra ined. According to the learned Counse l the Plaintif fs trademarks are registered worldwide, whereas, in Pakistan they are registered in some classes/categories and pending in some, whereas, assignment applications are also pending before the trademark registry due to change in name and or mergers of Plaintif fs Nos,1 and 2 worldwide. Per learned Counsel, pendency of the assignment deeds per-se cannot be construed as an impediment in grant of an injunctive relief as contended on behalf of the defendant, as it is merely a procedural delay and none has objected to ...such assignments, nor could do so in the given facts. As to the applications filed on behalf of Defendant under Order VII, Rules 10 and 11, C.P.C. learned counsel has contended that both these applications are misconceived as the Defendant had initially filed two Civil Suits in the Lahore jurisdiction in respect of the understanding between Plaintif fs and Defendant and has failed to get any injunction, Whereas, the appeal against such order also stands dismissed. Per learned Counsel it is settled law that a party cannot press upon two applications simultaneously under Order VII, Rule 10 (for return of plaint) and 11 (for rejection of plaint) C.P.C. and this amount to submitting to the jurisdiction of this Court. He has further contended that the cause of action in respect of the present Suit is distinguishable from the proceedings which were initiated in the Lahore jurisdiction, as this is a Suit in respect of infringement and passi ng-of f, under the Trade Marks Ordinance, 2001, and admittedly the Defe ndant has infringed the Plaintif fs tradem ark through its shops in Karachi and therefore, the application under Orde r VII, Rule 10, C.P.C. is liable to be dism issed, whereas, a proper cause of action is available to the Plaintif fs; hence, the application under Order VII, Rule 11, C.P.C. is also liable to be dismissed. In support he has relied upon Pioneer Cement Limited v. Fecto Cement Limited and 3 others (PLD 2013 Lahore 110), Lucky Enterprises, Goods Forwarding Agency v. Messrs Zeal Pak Cement Factory Ltd.
(PLD 2013 Sindh 277), Pakistan Industrial Credit and Investment Corporation Ltd. Karachi v. Modern Embroidery and Textile Mills Ltd. Lahore and 6 others (PLD 1976 Karachi 249), Kota Sreeramulu v. Kota Sreeramulu (AIR 1922 Madras 304), Javed Akhtar Chauhan v. Mumtaz Ali and 2 others (2016 CLD 1706 ), Bayer AG and another v. Bayhealth Care (Pvt.) Limited and another (2013 CLD 2087 ), Telebrands Corporation v. Telebrands Pakistan (Pvt.) Limited (2006 CLD 580), Ramrichpal Singh v. Dayanand Sarup (AIR 1955 Allahabad 309), Mrs. Farzana v. Muhammad Mateen Khan (2011 CLC 1371 ), Ahmed Nawaz Jagirani v. Sindh Industrial Trading Estate Ltd. (2017 CLC 40), Asif Islam v. Muhammad Asif (PLD 2001 SC 499) and Jewan and 7 others v . Federation of Pakistan and 2 others (1994 SCMR 826 ).
4. On the other hand, learned counsel for the Defendant while arguing the two applications filed on behalf of the Defendant has contended that the Defen dant is not using any signage or name of the Plaintif fs trademark in its shops within the jurisdiction of this Court; hence plaint be returned under Order VII, Rule 10, C.P.C. She has further contended that Defendant's head office is at Lahore and all negotiations between the Plaintif fs and Defendant always used to take place at Lahore; therefore, the Suit is not competent before this Court. As to the application under Order VII, Rule 11, C.P.C. she has contended that Plaintif f No,1 has no cause of action as to the present Suit, as according to her, Plaintif f No,1 is not a registered owner/proprietor of the trademarks in question; hence cannot seek protection under sections 40 and 46 of the Trade Marks Ordinance, 2001. As to the assignment in question she has submitted that those have not been recorded or registered and therefore, no case for infringement is maintainable; but at the most, only a claim for passing-of f can be pressed upon; however , for that the plaintif fs must lead evidence at trial. As to the injunction application she has contended that the Defendant admittedly was appointed as a distributor and for such purposes various shop s were established throughout Pakistan and during the entire period in question, the goods under various brands of the Plaintif fs were being sold with due and implied permission. Accordi ng to her, the Defendant is no more using any signage and or brands of the Plaintif fs marks as alleged for promotion of its business, and is only selling various brands of luggage, including the brands of the Plaintif fs company , which have been procured either directly from Plaintif f No,2 during subsistence of the agreement, or subsequently from the International Market readily available, and for that there is no restriction under the law. She has referred to the undertaking given in this regard before the Court on 27.09.2017. According to the learned Counsel despite repeated requests and efforts, the Plaintif fs failed to lift the unsold stock, and now selling of such goods which have been lawfully permitted, the Defendant cannot be restrained as this is not a case of infringement. Per learned counsel the Defendant is selling the original goods and not counterfeit; hence no case of infringement is maintainable. According to her the Plaintif fs have failed to meet any of the conditions for obtaining an injunction as they have failed to make out any prima facie case, nor balance of convenience or causing of any irreparable loss. As to the claim of well-known marks she has contended that the same applies only for obtaining registration and is only for convenience, whereas, in the present case the issue of well-known mark is not relevant; hence the Plaintif fs are not entitled for any protection in this regard. She has further contended that no confusion is being created or caused, whereas, the Plaintif fs have now open their own retail stores and they are selling the goods under their own trademark whereas, the defendant is selling the goods under its own trade name i,e, "International House of Luggage" hence no confusion has been caused. In support she has relied upon the case reported as Khalid Mehmood v . Shabir Ahmed (2017 MLD 1497 ).
5. I have heard both the learned Counsel and perused the record. Facts have been briefly stated hereinabove and it appears that the Plaintif fs claim and hold Intellectual Property Rights of various trademarks such as `SAMSONITE"AMERICAN TOURISTER' and 'HIGH SIERRA' which are relevant for the present dispute. The Plaintif f No, 1 is presently the company which owns the entire business of the Samsonite group including various trademarks worldwide. To that effect trademark registration certificates of various brands in International Jurisdiction under Class 18 and 35 of the Trade Mark Classification of Goods and Services have been placed on record and do not appear to be in dispute. As to the registration of such marks within Pakistan details have been mentioned in Para 4 of the plaint and it would be advantageous to reproduce the details of such trademarks of the Plaintif fs for which relevant applications have been filed and or are granted by the trademarks registry at Karachi:- MarksClassStatusApplication # AMERICAN TOURISTER Word 018 Registered 81872 AMERICAN TOURISTER Word 035 Pending 389279 AMERICAN TOURISTER Logo 018 Pending 358897 AMERICAN TOURISTER since 1933 Logo035 Pending 389278 HIGH SIERRA Logo 018 Pending 450584 Swirl Logo 018 Pending 271551 Swirl Logo 035 Pending 383070 SAMSONITE Word 018 Published 247820 SAMSONITE Word 035 Pending 383071 SAMSONITE Logo 018 Published 258674 SAMSONITE Logo 035 Pending 383069
6. Before proceeding further on merits of the injunction application, firstly I would like to deal with the two applications of the Defendant under Order VII, Rules 10 and 11, C.P.C. Both these applications have been filed simultaneously seeking return and or rejection of the Plaint. The precise ground taken in the application under Order VII, Rule 10, C.P.C. is to the effect that the relationship and or terms and conditions between the parties were being handled at Lahore, whereas, the head office of the Defendant is also in Lahore, therefore, this Court has no jurisdiction. It has been further stated that various litigations are already pending in the Lahore Jurisdiction and therefore, on this ground also this Court has no jurisdiction. However , I may observe that Defendant is admittedly operating an office in Karachi as well as retail shops within Karachi and the present dispute and cause of action so stated on behalf of the Plaintif fs is to the effect that after termination of the relationship, the Defendant is still using and pretending to be an authorized reseller by displaying the logo of Samsonite on the signboards in and outside its shops. Hence, in view of such position, I am of the view that this is a separate and independent cause of 'action and the alleged cause falls within the jurisdiction of this Court; hence, the plaint cannot be returned merely on this ground. As to the application under Order VII, Rule 11, C.P.C. the ground taken is to the effect that the trademarks are not registered in the name of Plaint iff No,1, hence, there is no cause of action. Again to this effect, I may observe that firstly there are some marks which are registered and or advertised, and secondly , the Plaintif fs have also sought protection under well-known trademark and have also alleged passing-of f and for that it is not necessary that a trademark be registered. This in fact is not a valid ground for rejecting the plaint summarily without evidence, at this stage of the proceedings. Notwithstanding this, at the very outset, I had also confronted the learned Counsel for the Defendant as to how both these applications under Order VII, Rules 10 and 11, C.P.C. are maintainable simultaneously , to which the learned Counsel for the Defendant failed to respond satisfactorily . It needs to be appreciated that an application under Order VII, Rule 11, C.P.C. can only be entertained by a Court of competent jurisdiction. It is settled law that a plaint can only be rejected by a Court which otherwise has jurisdiction to entertain the Suit/plaint and decide the entire /is on its merits, and if during such proceedings, an application has been filed by the Defendant for rejection of the plaint on the grounds so mentio ned under Order VII, Rule 11, C.P.C., the Court having such jurisdiction can decide the application either way. However , once it is pleaded on behalf of the Defendant that the Court has no jurisdiction and plaint be returned under Order VII, Rule 10, C.P.C., then perhaps, this Court is of the view that no application can be filed and entert ained under Order VII, Rule 11, C.P.C. by the same Court. By filing such application the Defendant submits to the jurisdiction of the Court and waives the objections to that effect, and therefore, cannot press upon an application under Order VII, Rule 10, C.P.C. for return of the plaint. In view of these observations, I am of the view that both these applications do not merit any consideration at the present moment and are liable to be dismissed and it is so ordered accordingly .
7. Insofar as the injunction application bearing C.M.A. No,12935/2017 is concerne d, the Plaintif f's case primarily is that after termination of the relationship with the Defendant, whereby , the Defendant was permitted to act as a distributor and reseller , the Defendant is no more authorized to sell goods bearing the Plaintif fs trademarks. The ground for such prayer is based on the premise that firstly , the trademarks in question belonging to the Plaintif fs are well known marks as defined in the Paris Convention as well as under sections 85 and 86 of the Trade Marks Ordinance, 2001. Secondly , the contention is that certain marks are already registered and are protected under section 40 of the Ordinance ibid, whereas, the remaining marks have already been applied for and in some cases the assignment deeds are pending, but notwithstanding the pendency of the assignment deeds, these marks belong to the Plaintif fs and the act of Defendant tantamount to infringement as defined under section 40 of the Ordinance, 2001. It is also the case of the Plaintif f's that such act of the Defendant also amounts to passing-of f the Plaintif fs goods. For the purposes of injunction, it is the case of the plaintif fs that the defendant is using the "Samsonite" signage on its retail shops. In order to appreciate the contention raised on behalf of the Plaintif fs, it would be advantageous first to refer to the relevant provisions of the Paris Convention which reads as under:- "Article 6bis Marks: W ell-Known Marks
(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party , to refuse or to cancel the regis tration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark const itutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.
(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.
(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith."
8. The need to protect well-known marks was discussed amongst member countries of the Paris Convention in 1920, which resulted in the aforesaid Article. This Article places all member states under obligation either to reject/cancel the registration, or prohibit the use, of trademarks which are confusingly similar to a well-known mark.
This protection was originally available only for trademarks relating to goods, not services. However , countries belonging to Paris Convention were not prevented from extending the protection to services. This Article at times was noted and considered to be extremely insuf ficient, and since 1995 World Intellectual Property Organization ("WIPO ") had been advocating for a separate treaty for its protection in more clear terms. Thereafter in the Agreement on Trade-Related Aspects of Intellectual Property Rights (more commonly known as "TRIPS - agreement"), Article 6 of the Paris Convention has been improved to a great extent, by incorporating Article 16 in the following terms; Well-known trademarks are to be protected for services as well as products. The protection extends beyond just similarity to situations where use of the trademark would indicate a connection between the product/service and the owner of the well-known trademark, and could cause detriment to the trademark owner .
Account must be taken of knowledge of the relevant sector of the public i,e, the mark needs to be famous in relation to the goods and services where its use is likely to cause confusion.
The relationship between TRIPs and Paris Convention is regulated in Article-2 of TRIPs which incorporates all substantive provisions of the Paris Convention, and makes these binding on contracting parties who are not members of the Paris Convention. The idea and consensus appears to be to give protection to well-known marks worldwide, notwithstanding its non-registration individually in a country , where, allegedly it is being infringed. Now the question is, what is a well-known mark? And despite stressing so much for protection of a well-known mark internationally , neither in the Paris Convention nor in the TRIPs Agreement, member countries have been able to particularly and specifically define a well-k nown mark. The interpretation of whether a trademark can be considered well-known is to be done independently on a national scale of each individual coun try. Of course for doing so there is always help from the judicial pronouncement amongst the member countries including extensive research and assistance by WIPO as well. In the case of McDonalds Corporation v Joburger , the South African Supreme Court has been pleased to hold that "the term well-known should be tested by reference to whether sufficient people knew the .mark well enough to entitle it to protection against deception or confusion; a degree of knowledge similar to that protected by the law of passing off." In the case reported as The Commissioners of Inland Revenue v. Muller & Co's Margarine Ltd. [1901 1 AC 217 (HL) at 223-4 Lord Macnaghten has defined goodwill as: "It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start. The goodwill of a business must emanate from a particular Centre or source. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates ... For my part, I think that if there is one attribute common to all cases of goodwill it is the attribute of locality . For goodwill has no independent existence. It cannot subsist by itself. It must be attached to a business.
Destroy the business, and the goodwill perishes with it, though elements remain which may perhaps be gathered up and be revived again." The WIPO joint recommendation concerning provisions on the protection of Well-known Marks has observed the following guidelines;
(1) The degree of knowledge or recognition of the mark in a ' relevant sector of the public.
(2) The duration, extent and geographical area of any use of the mark.
(3) The duration, extent and geographica l area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies.
(4) The duration and the geographical area of any registrations, and/or any applications of the mark, to the extent that they reflect use or recognition of the mark.
(5) The record of successful enforcement of rights in the mark, in particular , the extent to which the mark was recognized as well known by competent authorities.
(6) The value associated with the mark
9. The more clear and easy definition of a well-known mark has been arrived at by the following the guidelines which determine the action of passing-of f. But not in its entirety , as this protection only pertains to infringement and not for damages. Resultantly , it is less burdening I may say. In an action for passing off, the onus is much higher and difficult, as against seeking infringement of a well-known mark. Kerly's Law of Trade Marks and Trade Names (15th Edition ), has defined the well-known marks at various places as follows; 14-136 Protection is given in respect of marks which are shown by the proprietor to be "well-known". No guidance is given in the Paris Convention as to what this means. TRIPS , on the other hand, provides that in determining whether a trade mark is well-known, members shall take account of the knowledge of the trade mark in the relevant sector of the public, including in the member concerned, which has been obtained as a result of the promotion of the trade mark. It is to be expected that, with this limited guidance, the provision will be construed as a matter of ordinary language so to require that the mark is well-established amongst, and familiar to, the interested public and so, in short, that the marks is famous.
14-139 The proprietor of such a well-known trade mark is entitled to restrain by injunction the use in the United Kingdom of a trade mark which, or the essential part of which, is identical or similar to his mark, in relation to identical or similar goods or services, where the use is likely to cause confusion. As in the case of the infringement provisions of section 10(2) of the 1994 Act, the provision calls for a consideration of the extent of the similarity of the goods or services in issue and of the likelihood of confusion. The likelihood of confusion must be assessed globally taking into account all relevant factors, includin g the degree of similarity of the marks in issue, 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 and the degree of distinctiveness of the well-known mark. Nevertheless similarity between the goods or services does still seem to be a threshold requirement, as in the case of infringement.
14-140 There appears to be no requirement that the use of the mark complained of has damaged or is likely to cause damage to the proprietor of the well-known mark. In this respect the right is again different from passing off, which not only requires the claimant to establish damage or, in the case of a quia time action, the likelihood of damage, but also that the damage is the result of the misrepresentation and confusion. Correspondingly the right provided under section 57 is to an injunction only and there appears to be no right to claim damages or an account of profits.
10. Following the Paris Convention and TRIPs Agreement, Pakistan as a signatory to the Convention, in addition to providing for infringement of registered Trademarks under section 40, has legisla ted locally through sections 85 and 86 of the Trade Mark Ordinance, 2001, in respect of welt-known Trademarks which reads as under; "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.
(2) A person shall infringe a registered trade mark if such person uses in the course of trade a mark 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
(b) 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.
(3) 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-
(a) goods of the same description as that of goods in respect of which the trade mark is registered;
(b) services that are closely related to goods in respect of which trade mark is registered;
(c) services of the same description as that of services in respect of which the trade mark is registered; or
(d) 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-
(a) is identical with or deceptively similar to the trade mark; and
(b) 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.
(6) A person shall infringe a registered trade mark if the person uses such registered trade mark as his domain name or part of his domain name or obtains such domain name without consent of the proprietor of the registered trade mark, with the intention of selling such domain name to another including the proprietor of the registered trade mark.
(7) A person who applies a registered trade mark to material intended to be used for labeling or packaging goods shall be treated as a party to any use of the material which infringes the registere d trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) In all legal proceedings, a person who sells or offers or exposes goods for sale, or puts them on the market or has in possession for sale or any purpose of trade or manufacture any goods bearing a mark which infringes a registered trade mark shall be treated as a party to infringement of a registered trade mark, unless he proves that-
(a) having taken all reasonable precautions, he had no reasons to suspect the genuineness of the mark; and
(b) on demand made by tribunal, he gave all the information in his power with respect to the persons from whom he obtained such goods; or
(c) he had otherwise acted innocently ."
"85. Meaning of "Paris Convention" and "Convention country".
In this Ordinance-
(a) "Paris Convention" means the Pairs Convention for the Protection of Industrial Property of the 20th March, 1883, as revised or amended from time to time; and
(b) a "Convention country" means a country other than Pakistan which is a party to the Paris Convention."
"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 who-
(a) is a national of a Convention country; or
(b) 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 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;
(ii) the degree of inherent or acquired distinctiveness of the trade mark;
(iii) the Pakistan or worldwide duration of the use and advertising of the trade mark;
(iv) the Pakistan or worldwide commercial value attributed to the trade mark;
(v) the Pakistan or worldwide geographical scope of the use and advertising of the trade mark;
(vi) the Pakistan or worldwide quality and image that the trade mark has acquired; and
(vii) 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 injun ction 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-
(a) in relation to identical or similar goods or services, where the use is likely to cause confusion; or
(b) where such use causes dilution of the distinctive quality of the well-know trade mark.
(c) (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."
11. Insofar as the applicability of section 40 of the Trade Marks Ordinance, 2001 is concerned, it provides that 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. The primary consideration provided therein is that the Trademark of which infringement is being alleged, must necessarily be "registered". And in case it is not registered, then at least claim of infringement is not maintainable, but a claim of passing-of f can always be pressed upon, subject to the parameters prescribed for entertaining such claim. Here there are several trademarks in question and out of such only one of the said trademarks is registered and i,e, "American Tourister Word" in class 18 against application No, 81872. The other marks in question as mentioned in Para 6 above are either pending or publication has been made in the Trade Mark Journal; but admittedly they are not registered as yet. Hence, in the given circumstances, it is only one trademark as above for which infringement could be pressed upon in terms of the Ordinance. For rest of the marks, at the most, it is only a case of passing-of f which could be pressed upon. As to sections 85 and 86 of the Trade Marks Ordinance, 2001, admittedly Pakistan is a signatory to the Paris Convention and TRIPs for the protection of industrial property as revised and amended from time to time and in view of such signing of the treaty the legislature has enacted section 86 giving protection to well-known trade marks. Subsection (2) thereof provides that the Tribunal (Court) while determining whether a trade mark is well-known, without having to require registration or actual use in the form of sale of goods or services under the trade mark in Pakistan, shall consider the factors provided therein as a relevant criteria for establishing the well-known status of the trade mark in question. It empowers the Court to make determination without requiring registration and or use of such mark in Pakistan and could be either in relation to goods or services, as the case may be. Learned Counsel for the Defendant while controverting the claim of the plaintif fs in respect of applicability of Section 86 ibid had made a submission that this is only relevant for the purposes of deciding an application for registration of a trademark by the Registrar and cannot be considered in a claim of injunction. However , with respect I am unable to agree with such stance. The law discussed hereinabove is clear in terms and subsection (2) of section 86 ibid, provides that it is not necessary that for having protection of this nature a mark must necessarily be registered; and subsection (3) further provides that the owner of a trade mark which is entitled to protection under the Paris Convention as a well-known 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 fact it the other way round; and has been mandated to give protection to well-known marks, who are not even registered or in use in Pakistan; but are well known and registered worldwide.
Though not necessarily required in view of no defence to the fact that Samsonite is a mark of world recognition and is in use in Pakistan on behalf of the plaintif fs, as well as claim of registration going on without opposition; it may be observed, that it is not in dispute with a serious degree of contention that Samsonite Corporation was established in the year 1910 and perhaps is the world's largest travel luggage company . The relevant Company information can be have accessed on http://www .samsonite.com/investorsi/home.do and reads as under; Samsonite International S.A. is the world's largest travel luggage company , with a heritage dating back more than 100 years.
The Company was founded by Jesse Shwayder in 1910 in Denver , Colorado and began business as a trunk manufacturing company . Over the last century , we have developed and widely commercialized numerous innovations in luggage establishing key industry trends and adapting to evolving consumer needs.
We are principally engaged the design, manufacture, sourcing and distribution of luggage, business and computer bags, outdoor and casual bags, travel accessories and slim protective cases for personal electronic devices throughout the world, primarily under the Samsonite. Tumi, American Tourister, Hartmann, High Sierra, Gregory, Speck. Lipault and Kamiliant brand names as well as other owned and licensed brand names.
Our products are sold in over 100 countries in Asia, North America, Europe and Latin America through a variety of wholesale distribution channels, our company-operated retail stores as well as through e-commerce.
Our core brand, Samsonite, is one of the most well-known travel luggage brands in the world and has been central to the growth and success of our business since it was first introduced in 1941.
In 1993, we acquired American Tourister , Inc., based in Providence, Rhode Island. This enabled us to market products under two of the most well-known and respected brands in the luggage market.
In 2012, we acquired the High Sierra and Hartmann brands. both based in the U.S. Founded in 1978, High Sierra's products are targeted at active lifestyle consumers and the acquisition enabled us to expand into the casual outdoor and sport segments of the global luggage market. The Hartmann brand, founded in 1877, is recognized as a mark of quality among American luxury consumers and the acquisition enables Samsonite to expand its presence in the high end luggage and leather goods market in the U.S. and internationally .
In 2014, we further expanded our brand portfolio with the acquisition of the Lipault, Speck and Gregory brands.
Founded in 2004, Lipault is a chic and youthful French luggage brand known for its functional and fashionable products. It allows us to engage with female consumers through Lipault's signature Parisian style and vibrant colors. Speck, founded in Silicon Valley, California in 2001, designs and distributes slim protective cases for personal electronic devices. This acquisition enabled Samsonite to enter the fast growing market for smart phone and tablet protective cases. Founded in 1977, Gregory is a leading provider of premium technical backpacking, mountaineering, and trail running products and accessories. A pioneer in its field. Gregory is well-known for setting performance standards in terms of the innovative design, ergonomics, high quality and durability of its products.
On August 1, 2016, Samsonite completed the acquisition of Tumi Holdings, Inc. Founded in 1975, Tumi is a leading global premium lifestyle brand offering a comprehensive line of business bags, travel luggage and accessories. The brand is consistently recognized as "best-in-class" for the high quality , durability . functionality and innovative design of its products, which range from its iconic black ballistic business cases and travel luggage synonymous with the modern business professional, to travel accessories, women's bags and outdoor apparel.
Our market-leading position results from our strong international brand presence, our significant scale, our sizeable investment on advertising and product innovation, our global distribution and sourcing ability , and our market- leading, high quality products.
12. After having perused the record before me and in the light of the above informa tion and for the fact that nothing has been put in defence as to the claim of the plaintif fs that their marks are well-known, except that this protection only applies while seeking registration of a trademark (which I have already disagreed with), here in this case the three trademarks of the Plaintif fs in question including the trademark Samsonite in my view falls within well-known marks as defined under section 86 of the Trade Marks Ordinance read with the definitio n so provided in the Paris Convention. I have already discussed hereinabove as to what constitutes a well-known mark under the Paris Convention to which Pakistan is already a signatory , whereas, corresponding legislation in the form of sections 85 and 86 in the Trade Marks Ordinance, 2001, is already in place. Therefore, in this situation when the law itself waives the condition of being registered as against requirement of section 40 ibid, denying a Trade Mark holder , the benefit of such protection of infringement/injunction would be against the law. It is a matter of legal right and must not be denied ordinarily . In fact nothing has been pleaded on behalf of the Defendant to the effect that the trademarks in question including Samsonite is not a well-known mark; therefore, in the given facts and circumstances the Plaintif fs case for a restraining order through an injunctive relief merits consideration under section 86 of the Trade Marks Ordinance, 2001 notwithstanding the fact that except one; other trademarks are not yet registered.
13. Now adverting to the stance of the Defendant that in fact they are not involv ed in or selling any counterfeit products and therefore, it is not a case of deceptive use and no infringement as alleged can be pressed upon, it may be observed that to that effect there is no specific denial from the Plaintif fs, nor any case of such nature has either been pleaded or argued. The goods being sold by defendant are not counterfeit and original is not in dispute.
This in fact is also called a case of "Para llel Imports". Though, once it is not contested by the plaintif fs, no further deliberations are needed; however , this Court has been regularly burdened with such issue and taking this opportunity I would like to dilate upon this aspect of the case for the benefit of litigants and Courts as well in future.
These days' parallel imports are a common concern and issue for the Trade Mark holders, as well as the Courts due to rapid expansion of the world market and availability of goods from various direct and indirect suppliers.
These type of goods are genuine in all respects but have come from a third party or indirect supplier or trader who has obtained the same from the original manufacturer or supplier of that goods. Normally , these goods which are though original but have come from a third party , without the consent of the proprietor of an intellectual property right, produced legitimately in the country of origin, to be sold and distributed in parallel to and in competition with identical goods being sold by the authorized distributor of the owner of that property right. These are to be distinguished from fake and counterfeit (infringing) goods, as they have originated from the owner or its licensee, whereas, counterfeit are not. It is but natural that a Trade Mark holder would not like to have its due share undercut in a specific market due to such parallel imports. But for that it must be noted that presently , at least in this Country , there is no law which could restrict or prohibit such import or sale. Countries all over the world are willing to permit such imports as it benefits the consumers to a certain extent, besides creating healthy competition in the market. At the same time it is depriving the owner of the trade mark and goods, the premium and real benefits of spending and investing in such intellectual propert y rights. In this case the defendant claims that it is presently selling the goods with plaintif f's trademark which were procured during subsistence of the relationship between the parties and despite best efforts the left over stock was not lifted. Secondly , even the arrangement which was existing between the plaintif fs and defendant also reflect that goods were first being shipped by the plaintif f or its authorized company to Dubai, United Arab Emirates , in the name of Majata General Trading LLC (owned or operated by the defendant) and from there onwards it was being shipped to the defendant. This itself is a case of permitted parallel imports so to say. Notwithstanding this, there appears to be no impediment in procuring any sort of brand and goods from Dubai, U.A.E. or any other free port or trading hub and bringing the same in Pakistan. The only requirement being it must be a genuine product. Recently there was an issue in Singapore jurisdiction about parallel imports and its restriction claimed by the owner of the trademark. Coincidentally , the case also pertains to Samsonite and is reported as Samsonite IP Holdings Sart v. An Sheng Trading Pte Ltd. [2017] SGHC 18. The real obstacle for the plaintif f in that case from getting any injunctive relief was of "exhaustion of rights" as provided under section 29 of the Trade Mark Act in Singapore. The Plaintif f sued the defendant, a parallel importer , for trade mark infringement arising from the importation of a shipment of backpacks bearing the plaintif fs trade mark "Samsonite" into Singapore. These backpacks were not produced by Samsonite for sale on their own, rather , they were produced under a co-branding agree ment between Samsonite's Chinese subsidiary and a third party , Lenovo .
Under the co-branding agreement, backpacks manufactured had to bear at least one each of Samsonite's trademarks and Lenovd's trademarks. Lenovo or its authorized dealers would then give away for free the co- branded backpacks, but only in conjunct ion with the sale of certain models of laptops in China. It was expressly provided that these co-branded backpacks could not be sold or disposed of independently from the sale of the said laptops. However , some of the authorized dealers had unbundled the co-branded bags and sold them separately to unauthorized dealers, who in turn sold the co-branded backpacks to parallel importers, such as An Sheng Trading, who then tried to import them into Singapore. Samsonite sued, and thereafter sought summary judgment against An Sheng Trading for trade mark infringement, on the ground that An Sheng Trading had used signs that are identical to Samsonite's registered trademarks in relation to identical goods. One of the defences raised by An Sheng Trading was the Exhaustion of Rights Defence. The High Court found that there was prima facie infringing use of Samsonite's trade marks in relation to the backpacks. And for that the Court framed two questions that whether the goods in question were "put to market", and whether the goods were put on market by either the proprietor with his express and or implied consent, conditional or otherwise. Insofar as the expression "put to market" is concerned, the Court observed that it must involve the realization of the commercial and economic value of the trademark. It came to the conclusion that the goods in question i,e, backpacks were never "put to market" as it was only an offer of sale in the process of preparatory acts. As to the second question (though it was not required to be answered), the Court held that Samsonite had never consented to the backpacks being unbundled and sold by some of the authorized dealers to parallel importers such as defendant. However , this is a rare case largely dependent on the peculiarity of its facts, wherein, a trademark owner was able to enforce its rights against a parallel importer and was only able to do so as the parallel importer had procured the goods in a rather specific manner . It is only an exceptional case for restricting the parallel imports and is not a binding precedent in normal circumstances. Coming to the instant matter , as stated, the Plaintif fs while making sales to its Dubai company has already reaped the economic benefit from its trademark through first putting the goods on the market, and then even permitting its further export to the defendant in Pakistan, hence, cannot be allowed any further benefit or protection to exercise any monopoly rights in relations to those very goods on which once an economic benefit has been earned. Further it is not the case of the Plaintif fs that any restriction to further export or sale was ever agreed upon. In fact it is the other way round as admittedly the export was permitted to Pakistan. This covers the category of goods which are available in stock with the defendant having procured from the Plaintif f No,2 during subsistence of the relationship between the parties. As to the second category of goods (which has though not been pleaded), is of third party or parallel imports as noted hereinabove. Again as noted there is no legislation prohibiting such imports and sale. In fact in the Trade Marks Ordinance, 2001, there is not even a concept of extinguishing of rights as against the Singapore Law just discussed hereinabove (S. 29 of TmA). Therefore, if the goods are not counterfeit or fake, and have been procured through legalized channel(s), from third party supplier(s) or even from any other sources (depending upon the transaction individually), selling of such goods within Pakistan, would not amount to any infringement under the Trade Marks Ordinance, 2001, per-se. On this count as well the defendants selling of luggage of Samsonite and its other brands does not constitute infringement. In fact while confronted on this issue the learned Counsel for the Plaintiff had conceded that to that effect perhaps there is no law in field and the Defendant cannot be restrained in selling such goods.
14. However , this is not the only issue agitated on behalf of the plaintif fs. Rather , the Plaintif fs claim is and as rightly contended that while doing so, the Defendant cannot benefit from the display of the Plaintif fs trademarks as "signage". In support the Plaintif f's Couns el has placed on record through statement various photographs, whereby , it is shown that in some of the shops, the Defendant is using the signage of Samsonite to mislead the customers and pretending still to be an authorized distributor and reseller of the said goods. It appears that on 27.09.2017 after notice to the Defendant the following order was passed:- "Ms. Amna Salman Ahmed, Advocate has filed Vakalatnama for the defendant and requests for time to file counter affidavit. At this juncture, Mr. Omer Soomro, Advocate submits that in Lahore the same defendant filed one suit for claiming declaration that the defendant is exclusive distributor of the Samsonite, but the injunction application was dismissed, on which Ms. Amna Salman Ahmed, Advocate for defendant submits appeal has already been filed, but she is not aware about the latest update. Learned counsel for the plaintif f submits that one more suit for claiming damages filed by the defendant has been dismissed for non-prosecution. Learned counsel for the plaintiff further argued that in Karachi infringement has been committed in some outlets. Learned counsel for the defendant clearly stated that in Karachi outlets there is no use of Samsonite signage. This undertaking of the learned counsel for the defendant is taken in record. By consent the matter is adjourned to 1 1. 10. 2017 . "
15. Perusal of the aforesaid order reflects that on Plaintif fs contention that Defendant is causing infringement in some of the outlets in Karachi, a statement was made by the learned Counsel for the Defendant that in Karachi outlets thex are not using the Samsonite signage, at least. This statement of the Defendant's Counsel was recorded as an undertaking before the Court and the same has continued thereafter , and even while making arguments the learned Counsel for the Defendant had submitted that insofar as the outlets in Karachi are concerned, they are not using any signage. On examination of the photographs placed on record, it appears that though a statement has been made at bar which has been recorded as an unde rtaking; but still there are some outlets on which it appears from the photographs that signage of Samsonite is still being used by the Defendant.
Since an undertaking has been given, whereas, I have come to the conclusion that the Plaintif fs have already made out a prima facie case of infringement under section 86 of the Trade Marks Ordinance, 2001, as the defendant even after submitting an undertaking before the Court is still using the identical signage in the name of "Samsonite" for which there is not consent of the owner/proprietor of the trademark/trade name, in relation to goods and services falling within Class 18 and 35 of the Fourth Schedule of Trade Mark Rules, 2004, read with Rules 11, 71 and 88 thereof, the injunction application bearing C.M.A. No,12935/2017 is granted and the defendant and its officers, servants and agents are restraine d from infringing the Samsonite Mark and or other marks of the plaintif fs and while allowing injunction application, I direct the Defendant to immediately remove the signage being used by them in their outlets within 30 days from the date of this order and shall file a proper affidavit to that effect in the office duly executed by any of the Directors and or owners of the Defendant company .
16. In these circumstances, the applications at serial Nos, 1 and 2 are dismissed whereas, the application at serial No, 3 is allowed in the above terms.