MUHAMMAD FAISAL KAMAL ALAM, J.---By this order an Injunction Application [C.M.A. No.5259 of 2022], filed in present. Lis is decided, primarily challenging the Decision of Official Defendants, who have registered the Trade Mark 'HAMZA' of Defendant No. 1 inter alia, as the said Mark has become 'publici juris' and is not registerable.
2. Relevant facts for deciding this Injunction Application is that Plaintiffs are exporters of Rice to over forty countries worldwide, including Federal Republic of Somalia. Plaintiffs own and operate a state of the art equipment and rice milling equipment: besides, Plaintiff No.1 possesses highest capacity for parboiling Basmati Rice, whereas, Plaintiff No.2 also has presence in Dubai. United Arab Emirates ("UAE"): Plaintiff No.3 has received the Presidential Award for highest export of Pakistani Basmati Rice to various countries around the globe.
Averred that up till 07.03.2022. Plaintiffs have been exporting 'PK-386 Long Grain Rice' with the package livery stating HAMZA' (in a green ellipse. coupled with paddy leaves). Collectively Plaintiffs have a considerable market share in the Somalian market.
3. Ms. Amna Salman Ahmed Advocate, assisted by Messrs Saifullah Sachwani and Muhammad Shaikh, Advocates, has referred to various paragraphs of the pleadings and stated that on 07:03.2022 a Public Notice was published, whereby, Defendant No.1 caused for the threatening of legal consequences against exporters of rice, whose package livery shall bear the Hamza' in a green ellipse, coupled with paddy leaves; this Public Notice published in the daily `Nawa-e-Waqt is appended as Annexure 'F' of the plaint, at page-2263.
Legal team of Plaintiffs argued that upon investigation, it was found that the Subject Mark bearing No.500595 in Class-30 was registered on 07.12.2021, besides, Defendant No.1 also fraudulently obtained registration under the category of 'Artistic- Work' bearing Registration No.44834-COPR on 04.02.2022, given by the Defendant No.3 (Copyright Office Karachi -- Intellectual Property Organization of Pakistan). Sections 52 and 67 of the TM Law have been referred to fortify the arguments that the impugned registration granted by official Defendants Nos.2 and 3 is in violation of these provisions and results in unfair competition, as Defendant No.1 has ousted the Plaintiffs from the export of subject rice to other countries, particularly, Somalia. The afore referred public notice was in fact a threat of infringement proceeding, against which the present Lis is filed and the record appended with the plaint, inter alia, relating to the exports of Plaintiff shows that both the Official Defendants Nos.2 and 3 have wrongly registered the mark so also the logo. page-263 [1st Part of the Court File] has been referred. which is a commercial invoice of Plaintiff No.1. showing Long Grain PK-386 parboil rice, Hamza brand is being exported to a company in Somalia. Various invoices have been appended with the plaint in support of the arguments. Annexure 'A/5' to A/11'
(pages-2249 to 2261) are the pictures of packing used by the Plaintiffs. It is pointed out that the above logo is commonly used by all the exporters including Plaintiffs, therefore, the same is a publici juris, that is. common logo/mark used by many traders, thus, under the law cannot be registered. Case law mentioned in the opening part of this Order has been relied upon by the Plaintiffs' legal team to augment their arguments.
On the conclusion of hearing, Plaintiffs' Counsel has filed a Statement to bring this fact on record in support of their stance that another competitor, namely, T.M. Commodities, has preferred a proceeding before the official Defendants for the revocation and cancelling of the impugned Trademark 'HAMZA' [subject matter of present Lis].
4. Mr. Mirza Mehmood Baig, Advocate, assisted by Ms. Alizeh Mehak, Advocate, representing Defendant No.1, has opposed the arguments of Plaintiffs' counsel and argues in favour of dismissal of injunction application. He has relied upon subsection (3) of section 52 of the TM Law so also section 39. He has referred to registration certificate given by the UAE Authority to show that even the mark is registered in United Arab Emirates; states, that Plaintiffs were negligent in not pursuing their case before the Registry [Official Defendants] and, hence, they cannot challenge the registration of Trademark granted by Defendant No.2 and Certificate of Registration of Copyrights given by Defendant No.3 in favour of Defendant No.1 argued that status of publici juris' can only be declared by the competent Authority, which is the Registrar of Trademarks - Defendant No.2, as held in the Nadeem Ijaz case (ibid).
5. Mr. Salim Ghulam Husein, Advocate appearing for Defendant No.2-Registrar of Trademarks has filed the Statement, crux of which is that Plaintiff No. 1 did not oppose the Application of Defendant No. 1, and while granting the impugned registration, due process was followed, including publication in the Trademarks Journal in its issue of March, 2021. Copies of the relevant record, as relied upon by the Defendant No.2 (Registrar), have been appended with the Statement.
6. Arguments heard and record perused.
7. In a later development, learned counsel for the Plaintiffs has filed a Statement dated 03.06.2022 along with the Letter dated 26.05.2022 addressed on behalf of Defendant No.1 by its Counsel, to the Customs Authority, informing the latter that a Suit No.09 of 2022 has been filed by the present Defendant No.1 in the learned Intellectual Property Tribunal at Lahore. It is further mentioned that the above subsequent litigation, in which, Defendant No.1 obtained an interim injunction, is tainted with mala fide and is a blatant attempt to interfere in the legitimate bona fide business of Plaintiffs with the intent to disrupt the same.
8. The contention of Plaintiffs, that 'HAMZA' is a common trademark used by different entities, including Plaintiffs, hence, it should not have been registered is considered in the light of case law cited by both learned Advocates for Plaintiffs and private Defendant No. 1. None of the cited decisions has determined this crucial point that if a person or an entity has a registered trademark in its favour, even then he or the said entity would not be entitled for its exclusive use, on the basis of `publici juris'. The case law relied upon by Plaintiffs' legal team, in particular, the reported Decisions handed down in Master case and Haico case (supra) though have discussed the concept of publici juris', but the injunction was not granted, primarily, considering the fact that in both cases the mark' was not registered in favour of plaintiffs (of the reported cases).
Adverting to the second contention of Plaintiffs, about applicability of sections 52 and 67 of the TM Law. In this regard judgment handed down by learned Division Bench of this Court in Dalda Foods
(ibid) is perused, wherein, inter alia, sections 52 and 67 of the TM Law are also discussed. Shield Corporation Limited/respondent (of the reported case) has obtained an injunctive order in the suit filed by it, against the appellant-Dalda Foods, restraining the latter from using the trademark 'Shield and Device of Shield'. Learned Division Bench has allowed the Appeal and set aside the injunction order, mainly, on the basis that use of the word 'health shield' by appellant Dalda Foods on its product is neither a misrepresentation nor a deceptive tactic for confusing some unwary buyer. While discussing the scope of sections 52 and 67 of the TM Law, following ratio is laid down:- "15. Since there have been similar incidents in the past, the current trade mark legislation known as the Trade Marks Ordinance, 2001 was aimed to arrest such modes of unfair competition. In terms of section 67, a new scheme has been introduced which restricts use of such acts of competition, contrary to honest business, industrial or commercial practices. Also a firewall has been created by section 52, where remedy for groundless threat of infringement proceedings has been provided. Pursuant to section 52, where a person threatens to bring an action against another person on the ground that the other person has infringed a registered trade mark, the person aggrieved by the said groundless threat may bring proceedings of relief against the person making the threat. The aggrieved person has to show that the threat is justifiable; meaning thereby that the person alleging infringement is stretching his rights beyond the umbrella provided by section 40 of the Ordinance, where to prove infringement, a trade mark owner has to show that the defendant is using the. identical/deceptively similar trade mark in the course of trade and in relation to goods or services which are identical with those for which the mark is registered."
10. Conversely, situation here is opposite; admittedly, the trademark of Defendant No.1 has been registered, against which, as mentioned in the foregoing paragraphs, revocation proceeding has been initiated, which is sub judice.
Secondly, as per the official version, present Plaintiffs did not contest the proceeding before the Registrar when the trademark in question was in the process of registration.
Thirdly, the Certificate of Registration (impugned), appended with the Counter Affidavit of Defendant No.1 dated 17.12.2021, bears a disclaimer, that registration of this trade mark shall give no right to the exclusive use of word "HAMZA" except substantially as shown on the label.
Fourthly, with the Counter Affidavit of Defendant No. 1, it has also attached the Copyright registration dated 4-2-2022, in the artistic work (Label Design) entitled "HAMZA".
11. In view of the above discussion, I am afraid, basic ingredients for gram of an injunctive relief are not present in the case of Plaintiffs, as admittedly, it is the Defendant No. 1, which is the holder of a Registered Trade Mark and not Plaintiffs. Consequently, injunction application [C.M.A. No.5259 of 2022] is dismissed.
12. Defendant No.1 is further directed to maintain proper accounts of its business activities and, particularly, relating to exports, from the date of registration of the Impugned Trademark till the pendency of present Lis and the same should be furnished/tiled monthly, under the Statement of learned Advocate for Defendant No.1. In this regard the Office will make a separate File for keeping the record of above Accounts.
It is further clarified that any observation made in this Order is of tentative nature and will neither influence the final decision in this Lis nor any other pending proceeding between the Parties hereto.
APPENDIX Case Law cited by Plaintiffs' Counsel
1. 1984 SCM R 1024 [Messrs Ghulam Muhammad Dossul & Co. v. Messrs Vulcan Co. Ltd and another] - Dossul case
2. 2008 CLD 190 [Messrs Hub Pak Salt Refinery through Duly Authorized Partner v. National Foods (Pvt.) Limited]
3. 2016 CLD 1062 [Alle Nora Beauty Salon and Parlour through Partner and others v. Mrs. Qurat-ul-Ain Munsoor and others] - Alle' Nora case
4. 2007 CLD 991 [Messrs Master Textile Mills Ltd. through Duly Authorized Signatory v. Master Fabrics through Managing Partner and 5 others] - Master case
5. 2016 CLD 1864 [Dalda Foods (Private) Limited v. Messrs Shield Corporation Limited] -- Dalda Foods case
6. 2002 CLD 1623 [Abdul Wasim v. Messrs Haico through Sole Proprietor Partner and 2 others] - Nalco case.
Case Law cited by Defendant No.1's Counsel
1. 2006 CLD 234 [Nadeem Ijaz and others v. Malik Ehsan Ulluh and others] - Nadeem Ijaz case;
2. A Compromise Decree passed in Suit No.2270 of 2015 [Messrs Ostindo International Austrailia v.
Messrs Alfarid Corporation Limited and others];
3. Ad-interim Restraining Order passed in Suit No.2561 of 2015 [Mehran Spice and Food Industries v. Muhammad Nudim Khan and others].
Law under discussion:
1. Trade Marks Ordinance, 2001 ("TM Law")
2. Civil Procedure Code, 1908 ("C.P.C.").