Through this First Appeal filed under Order XLIII Rule 1 of the CPC read with Sectio n 104 of the CPC appellant has challenged the order dated 14.4.2018 passed by the learned Presiding Officer, Intellectual Property Tribunal at Lahore whereby in a suit filed by the plaintif f-respondent while deciding application for grant of temporary injunction appellant was restrained from using the Mark "Almaida".
2. Brief facts of the case are that plaintif f-respondent is running a business of providing/serving fast foods, burger , pizza under a trade mark/trade name "Almaida" with unique logo and color scheme and to strengthen his right he has procured registration of this trade mark and copyright in respect of artistic work, get up, style, color scheme, associated with the trade mark, that he permitted defendant-appellant vide franchise agreement dated 24.5.2006 to use this mark without any legal permission which amount to infringement of his trade mark and copyright. The suit as well as application for temporary injunction are being contested by the defendant-appellant. In the written statement the defendant-appellant denie s the franchise agreement and claims that this mark was created and adopted by him in 2006 and since then he has been doing business in bonafide and continuously without any interference and his business has earned reputation of its own due to high quality of his service. It is also denied that he is copying artistic work of plaintif f-respondent. He has also denied that plaintif f-respondent holds any valid registration trade mark in Class 43 which deal with provision of services and has requested for dismissal of the suit and rejection of application.
3. Learned counsel for the appellant has reiterated the grounds mentioned in the appeal and while relying upon case law reported as "Muhammad Ashraf alias Makkhan versus Muhammad Akram" (2016 MU) 389) prays for acceptance of this appeal.
4. On the other hand, learned counsel for the respondent While relying upon "Messrs Tabaq Restaurant versus Messrs Tabaq Restaurant " ( 1987 SCMR 1090 ), "Pioneer Cement Limited through Company Secretary versus Pecto Cement Limited through Chief Executive Officer and 3 others " (PLD 2013 Lahore 110), "Messrs Hilal Confectionary (Put) Ltd. Versus Messrs Naveed Enterprises and another" (2018 CLD 1) and "Ghulam Mujtaba Paracha versus Muhammad Saleem" (2010 CLD 31 1) prays for dismissal of the appeal.
5. '1 have heard learned counsel for the parties at length, gone through the recor d appended with this appeal as well as case law cited by learned counsel for the parties.
6. The upshot of the arguments is that plaintif f-respondent is having a registered trade mark under Class 29 with a disclaimer with the following words:-- "with disclaimer of letter "AFC" AL-MAIDA and all other descriptive words and feature appearing as label."
Admittedly Class-29 is as follows:-- "Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs, milk and milk products; Edible oils and fats."
Whereas for registration under Class 43 both the parties have moved their respective applications which are still pending. Learned counsel for the appella nt has relied upon the judgment reported as "Muhammad Ashraf alias Makkhan versus Muhammad Akram" (2016 MLD 389). The relevant paragraphs are Para No, 6 and Para No, 9 which are reproduced respectively:--
6. Section 21 of the Trade Marks Ordinance, 2001 deals with the treatment of registrations which are subject to disclaimer . The said section for ease of reference is reproduced as hereunder:--
21. Registration subject to disclaimer .--If a trade mark contains:--
(a) any part not separately registered as a trade mark in the name of the proprietor;
(h) any part for the separate registration of which no application has been mark; or ( c) any matter common to the trade, or otherwise of a non-distinctive character , the Tribunal, in deciding whether the trade mark shall be entered or shall remain on the register , may require, as a condition of its being on the Register , that the proprietors shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter , as the case may be, to the exclusive use of which the Tribunal holds him not to be entitled, or make such other disclaimer as the Tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration: Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made."
It is, therefore, quite apparent that a disclaimer would be imposed by the Registra r on any part of trademark, as a condition for allowing registration, where the Registrar finds that the said part is, inter alia, common to trade or otherwise of a non-distinctive character and the Tribunal (registrar) holds the appellant not to be entitled to the exclusive right to use thereof. A disclaimer , thus, limits the extent of the exclusive rights, which a registration may give to trademark owner . Therefore, in view of the disclaimer noted in para 5 supra, it is manifest that the appellant has himself disclaimed any exclusive right to the words "MAKKHAN SWEET & BAKERS". As such, in the absence of having an exclusive right on the use of the word "MAKKHAN", he cannot be held to be entitled to be considered to have made out a prima facie case on the basis of Registration No, 247678 in class 30.
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9. The appellant has failed to show that he has a prima facie case and the balance of convenience is also in his favour and that he will suffer an irreparable loss by the continuation of business by the respondent by selling his goods under the word "MAKKHAN" considering what has been stated above. In view of the aforesaid findings, the order dated 09.02.2015, passed by the learned Additional District Judge, is within its legal boundary and this Court finds no occasion to interfere therein. Appeal is dismissed."
7. In these circumstances, now the picture comes that plaintif f-respondent is having registration of trade mark under Class 29 that too with disclaimer and with regard to registration of Class 43, the applications of both, the parties are in process. In these circumstances, the order dated 14.4.2018 passed by the learned Presiding Officer, Intellectual Property Tribunal at Lahore is not sustainable under the law. The appellant-defendant cannot be restrained from using the mark "Al-maida" for services for providing food and drinks. The case law cited by learned counsel for the respondent is distinguishable from the facts of this case, therefore, not beneficial for the respondent. Resultantly , instant appeal is allowed the order dated 14.4.2018 impugned in the appeal is set aside ,and the application for grant of temporary injunction stands dismissed.