Adnan Iqbal Chaudhry J. The dispute between the parties is over the use of the name of the celebrity , late Junaid Jamshed. This order decides competing applications for temporary injunction moved in the subject suits.
2. Jazaa Foods (Pvt.) Ltd. (hereinafter 'Jazaa Foods') is in the business of packing and distributing food items such as rice, fried onion, spices etc. It's trade mark 'Jazaa' is registered in Class 30 in respect of rice, wheat flour, flour milling products, sauces (condiments), spices etc. The late Junaid Jamshed was one of the founding members/shareholder of Jazaa Foods and presently one of his sons is a shareholder and Director thereof. Therefore, in conjunction with it's registered trade mark 'Jazaa', the goods of Jazaa Foods bear the words 'by Junaid Jamshed', hereinafter referred to as 'the mark in question', albeit those words are not part of the registered trade mark of Jazaa Foods.
3. U&I Garments (Pvt.) Ltd. is in the business of manufacturing clothing, ready-wear garments, footwear , bags, fragrances etc. bearing the trade mark 'JunaidJ.Jamshed', which goods are then supplied by it to the company , Junaid Jamshed (Pvt.) Ltd., for onward retail. Per Suit No. 94/2020, the late Junaid Jamshed was a shareholder also in Junaid Jamshed (Pvt.) Ltd., and presently , his son is still shareholder . However , the registered trade mark 'JunaidJ.Jamshed' is the property of U&I Garments (Pvt.) Ltd., and the company Junaid Jamshed (Pvt.) Ltd. is an authorized user thereof pursuant to a license. The Defendant No.3 of Suit No. 94/2020 is the Chief Executive of both U&I Garments (Pvt.) Ltd. and Junaid Jamshed (Pvt.) Ltd.
(collectively 'U&I Garments' ). The trade mark 'JunaidJ.Jamshed' is registered not only in Classes in respect of textiles, garments, footwear and handbags, it is also registered in a number of other Classes including Class 30 (rice, spices etc.) in which the trade mark of Jazaa Foods is registered.
4. Suit No. 94/2020 has been filed by Jazaa Foods (plaintiff No.1) and by Taimur Jamshed son of late Junaid Jamshed (plaintiff No.2) inter alia for an injunction to restrain U&I Garments and others from creating hindrances or obstructions in the use by Jazaa Foods of the mark in question, and by CMA No. 745/2020 they pray for a temporary injunction accordingly. It is the case of the said plaintiffs that the business of Jazaa Foods had been started by the late Junaid1 Jamshed along with other members; that during his lifetime Junaid Jamshed spear-headed the marketing campaign of Jazaa Foods, and in that vein, given his celebrity status, he had vide a written authorization dated 28-06-2016, permitted Jazaa Foods to use the mark in question; that Jazaa Foods has ever since been using the mark in question without any objection from U&I Garments; that in December 2019, three years after the death of the Junaid Jamshed, the Defendant No.3 who is the Chief Executive of U&I Garments, asked Jazaa Foods to obtain a license from U&I Garments for the use of the mark in question, thus implying that unless Jazaa Foods obtains such a license, U&I Garments would treat that as an infringement of its trade mark; and that on the refusal of Jazaa Foods to comply, the Defendant No.3 has threatened to impede and damage the business of Jazaa Foods.
5. Right after Suit No. 94/2020, U&I Garments (Pvt.) Ltd. And Junaid Jamshed (Pvt.) Ltd. (hereinafter collectively U&I Garments) also filed Suit No. 124/2020 against Jazaa Foods inter alia for trade mark infringement and for passing-off.
By CMA No. 933/2020, U&I Garments has prayed for a temporary injunction to restrain Jazaa Foods from using the mark in question in any fashion or manner.
6. Mr. Arshad Tayabaly, learned counsel for Jazaa Foods had submitted that Suit No. 94/2020 had been filed by it for protective relief which is also envisaged under section 52 of the Trade Marks Ordinance, 2001, which provides that where a person threatens to bring an action against another person on the ground that the other person has infringed a registered trade mark, or a trade mark alleged by the person to be registered, any person aggrieved by the threat may bring proceedings against the person making the threat for relief envisaged in the said section. Learned counsel submitted that right after this suit, U&I Garments has threatened the distributors of the Jazaa Foods and have also approached Facebook for removing the content of Jazaa Foods, which acts are a manifestation of the apprehensions expressed by Jazaa Foods in its suit. Learned counsel submitted that the mark in question is not deceptively similar to the trade mark of U&I Garments, and that in any case, the registered trade mark of U&I Garments is subject to the disclaimer that they do not have the right to the exclusive use of the name Junaid Jamshed?.
7. It is the case of U&I Garments that the use of the mark in question by Jazaa Foods is deceptively similar to the registered trade mark of U&I Garments and hence trade mark infringement. Mirza Mehmood Baig, learned counsel for U&I Garments submitted that the name Junaid Jamshed? is not part of the registered trade mark of Jazaa Foods, whereas, the said name was central to the registered trademark of U&I Garments; and that the trade mark of U&I Garments was also registered in Class 30 in respect of the same food items as of Jazaa Foods and therefore Jazaa Foods is also liable for passing-off.
8. Heard the learned counsel and perused the record.
In the circumstances of the case, where the action threatened, or at least one such action contemplated under section 52 of the Trade Marks Ordinance, 2001 has already materialized by U&I Garments filing Suit No. 124/2020, I need not dwell on the import and scope of section 52 of the Trade Marks Ordinance, 2001 for the purposes of deciding the applications for temporary injunction, especially when sub-section (3) of section 52 envisages that while considering relief under sub-section (2), the Court will satisfy itself that the acts of the plaintif f do not constitute infringement of a registered trade mark. In other words, the circumstances of the case are such that the temporary injunction sought by Jazaa Foods depends on the fate of the temporary injunction sought by U&I Garments. It would thus be expedient to first and primarily examine the case of U&I Garments.
9. The respective trade mark of the parties as those appear on the Register of trade marks are as follows: TABLE I {{IMAGE}} The mark in question, i.e. the name 'Junaid Jamshed' , as used by Jazaa Foods in conjunction with its registered trade mark is as follows: TABLE II {{IMAGE}}
10. While U&I Garments objects to the use of the name 'Junaid Jamshed' (mark in question) by Jazaa Foods, but almost all of the trade mark registration certificates of U&I Garments, and in particular the certificate in respect of Class 30 in which Jazaa Foods also carries on business, are with the following meets the test of the said three ingredients for the grant of a temporary injunction. Jazaa Foods has relied upon photographs to show that during his lifetime, Junaid Jamshed himself used his name (mark in question) to promote Jazaa Foods; that the mark in question is being used by Jazaa Foods at least since 2016 without objection; that Junaid Jamshed had given a written authorization to Jazaa Foods to use his name; and therefore unless the Defendants of Suit No. 94/2020 (U&I Garments & others) are restrained from interfering in the said use, Jazaa Foods is likely to suffer irreparable loss. Consequently, CMA No. 933/2020 moved by the Plaintiffs in Suit No. 124/2020 is dismissed; whereas, CMA No. 745/2020 moved by the Plaintiffs in Suit No. 94/2020 is granted in terms that pending suit the Defendants of Suit No. 94/2020 are restrained from interfering in the use of the mark/name 'by Jamshed Junaid' by Jazaa Foods in conjunction with their registered trademark 'Jazaa' in Class 30 in the fashion and get-up that appears in Table II supra.
1 Under section 2(xxiv) of the Trade Marks Ordinance, 2001, a 'mark' is defined to include a personal name.