' This suit has been filed by the plaintiff against the defendant for permanent injunction against infringement of trade mark, passing off, damages and for accounts of profits. Plaintiff is the registered proprietor of Trade Marks Nos. 55341 and 60474 in Class 34 in respect of safety matches.
According to the plaintiff, who claim to be leading manufacturers of wax matches in Pakistan with very large sales, they have since 1971 used their trade mark consisting of the &vice of a cancel with the word "Shama" with its "particular get up, design, colour scheme and reverse panel with black and white stripes, so it has become distinctive........... ", and that their mark has become well-known in the market. Haintiff alleges that the defendant started manufacturing and selling wax matches of substandad quality its boxes bearing device of candles and black and white stripes which is "almost identical to the plaintiff's registered trade mark" and that the use of a similar and deceptive mark by the defendant in respect of the same description of goods is calculated or likely to cause confusion or deception in the market and "in the minds of the dealers, buyers and consumers most of whom are illiterate."
2. Apart from the fact that the mark of the plaintiff was registered, the defendant in their written statements denied the various allegations made in the plaint taking the stand that the mark being used by the defendant bad no resemblance with the registered mark of the plaintiff. The defendant further pleaded that they had applied for the registration of their own mark and they were awaiting its registration. An additional defence has been taken by the defendant in para. 12 of their written statement, which paragraph is reproduced here :- "12. The plaintiff's trade mark is a composite mark and it has no exclusive right in any part thereof separately. His right is limited to the mark as it appears on its label. It has not obtained any registration of any part thereof separately as required by section 11 of the Trade Marks Act, 1940."
3. On 30-3-1981, this suit was fixed before the Court for hearing of the temporary injunction application filed by the plaintiff, when the two learned counsel agreed that no oral evidence was necessary and that the entire suit could be decided on the basis of documentary evidence and affidavits already on record. In the circumstances, after framing the following issues, this suit was fixed for arguments : Issu es
(1) Whether the suit is not properly valued and maintainable in law?
(2) Whether the defendants have infringed the trade marks of the plaintiff?
(3) Whether the defendants are guilty of passing off?
(4) Relief.
' It may be mentioned here that Mr. Muzaffar Hassan, learned counsel for the defendant, did not press issue No, 1 and as such by consent issue No, 1 was dropped.
4. I have heard at length the arguments of Mr. I. M. Patel, for the plaintiff and Mr. Muzaffar Hassan for the defendant. The two registered marks of the plaintiff are Nos. 55341 and 60479. Both are in class 34 relating to wax matches and registered under the Trade Marks Act, 1940. Trade Mark No, 55341 is registered with effect from 24-4-1971. Trade Mark No, 60479 is registered with effect from 8-4-1974 and it is associated with Mark No, 55341 with the condition that the mark is limited to colour as shown in the representation on the form of the application. In fact both marks relate to the same label of the plaintiff. The mark of the plaintiff may now be described. Label on the top portion of the box of matches has two main colours-yellow and red. About four-fifth of the label is yellow and lower one-fifth portion is red. There is a device of one candle in white with a flame coupled with wax dripping from the candle. The candle is white with black lines drawn vertically from the top to the base of the candle. Dripping wax in black appears on one side of the candle. The candle rests on a red lamp-a traditional lamp like Aladin's lamp. The word "SHAMA" appears in bold capital letters in the middle of the label in red colour with borders. The candle, the lamp 'and the word "Shama" are printed on the top yellow portion of the label.
' The defendant's mark is not registered, but, as observed earlier, it has been averred by them that their application No, 70405 is awaiting registration. The mark of the defendant which has been challenged in this suit may now be described. In their label also the top bigger portion is yellow in colour and the bottom small portion is red. The word "CHANDA" appears in yellow colour on the small red part of the label. Then there are two candles in white with black lines drawn vertically on the two candles. On both the side of the two candles dripping wax is shown in white. The two candles rest on holders which are in red colour. The holders rest on black stands. There is a crescent in red on the top left portion of the yellow part of the label with the lower part of the crescent going behind the top portion of the left hand side candle. All these figures are on the top yellow portion of the label.
5. Before dealing with the issues in this case I may here refer to the reported judgments relied upon by the learned counsel for the parties in support of their respective contentions. Mr. I. M. Patel relied upon the following cases :-
(i) Rexona Proprietary Ltd. v. Majid Soap Works PLD 1956 Sind L
(ii) A & F Pears Ltd. v. Ghulam Haider PLD 1959 Kar.
154.
(iii) Insaf Soap Factory v. Lever Brothers Port Sunlight Limited PLD 1959 Lah.
381.
(iv) Bandenawaz Ltd. v. Registrar of Trade Marks, Karachi PLD 1967 Kar.
492.
(v) Pakistan Battery Manufacturing v. Muhammad Hussain PLD 1970 Kar.
92.
(vi) Abdul Jabar v. Ahmad Jan PLD 1973 Kar.
289.
(vii) In the matter of Turney & Sons Trade Mark 11 R P C 37.
(viii) Brvand & May Ltd. v. United Match Industries Limited 50 R P C 12.
(ix) De Cordova v. Vick Chemical Co. 68 R P C 103.
(x) Taw Manufacturing Co. Ltd. v. Notek Engineering Co. Ltd. 68 R P C 271.
(xi) Colgate Palmolive Ltd. v. Pattron 1978 R P C 635.
' Mr. Muzaffar Hassan, learned counsel for the defendant referred to the following judgments :-
(Xi) Coca Cola Co. v. Pepsi Cola Co. AIR 1942 P C 40.
(xii) Ram Kumar JaLAN v. R. J. Wood & Co, AIR 1942 Lab, 262.
(1) PLD 1956 Sind 1 is a Division Bench Judgment of the Chief Court. This judgment decided on application for interim injunction in a case of infringement of tiade mark and accordingly it is, strictly speaking, not a precedent for the points in issue in the instant case. However, learned counsel cited this authority for the following passage from the judgment written by Constantine, C.
J. :- "It is common ground that the trade mark of the appellant was registered in 1943 and that this registration was advertised. It is common ground that the appellant's Soap widely sold in Pakistan and in particular Karachi. The appellant as filed alongwith the appeal its own wrapper and that used by the defendant. Both are coloured green, though not exactly the same shade of green. On the upper face of the wrapper when it is wrapped round the soap appear the name in cursive script, below that a horizontal bar in black with white lettering and below a circle with white and black in it. On the other sides appear on each wrapper the name in cursive script. The learned Judge held that the difference between the two names was obvious and that the colour was not exactly the same, and hence he thought that there was not sufficient resemblance as to be likely to deceive the purchaser or cause confusion. We respectively but firmly disagree with this conclusion.
Lord Lindley in Lever v. Goodwin (XXXVI C. D. 1) stated at page 8:- "Of course, in all these cases there are differences as well as resemblances, and the question, so far as the packages are concerned, must always be decided by contrasting the striking resemblances with the striking differences. Now, the only difference which strikes me at all is this : that Goodwin has substituted the word "Goodwin." in large letters, for "Sunlight." That is the whole differences which catches the eye. Then look at the resemblances ; look at the paper ; look at the printing ; look at the blank space, and the catch words ; look at the whole thing ; and it is impossible not to arrive at the conclusion not only that one was intended to pass for the other, but that intention has been realised. I say that apart from the evidence." In this case it might equally be said, look at the printing look at the horizontal bar with the white lines, and look at the circla below, look at the proportions and relative distribution of these features on the face of the green wrapper and equally it may be said that the whole get up shows that the defendant represented to the public that his goods were the goods of the plaintiff."
' It is, we think, significant that in the -counter-affidavit of the defendant it was stated in paragraph 14 : "That there are others who are wrapping soaps in wrappers 'quite similar to Rexona, as shown in Annexure 'C', but nothing is being done by the plaintiff's against them," And during the course of arguments before us the defendant's Advocate handed up a wrapper showing similar wrapper entitled "Raisina" soap. The grievance in this paragraph appears to be that the plaintiffs have done an injustice to the defendants by picking on them instead of other persons who have infringed their trade marks.
' The next point that arises in this appeal is that it was said that there is no evidence that any one has in fact been deceived. The authorities are plain that where the get up is so similar, it is not necessary there should be evidence that any one has in fact been deceived. It is enough if the plaintiff satisfied the Court that the defendant sells his goods marked in manner so as to lead purchasers to believe or to create a probability of so believing that they are buying the goods of plaintiff. The learned Advocate for the respondent relied upon AIR 1938 Cal.
458. But there the learned Judge himself described the case as a border line case and hence this was one of the factors namely, the absence of proof of actual deception, that led the Judge to refuse an injunction. Iii) PLD 1959 Kar. 154 is a Single Bench judgment of Qadeeruddin, ad learned counsel for the plaintiff had drawn my attention to following passage from this reported case :-- "It is important to draw distinction between the confusion which arises in connection with the sale of goods and the confusion which arises on account of the use of a trade mark which is the property of another person. A mark vouches for the goods which bear it. If another person borrows it, then he borrows the reputation of the other too. 'unfair competition may exist not only in the sale of goods of the same character but in the unfair appropriation and use of the trade mark of another. There can be innocent use of the trade mark of another and even then it is objectionable, but in a case like the present one where the reputation and goodwill of the appellants is widespread, the chances of the respondent, to be benefited from it lead me to the conclusion that the appropriation of the mark of the appellants by using mark of confusion sound and look is not as innocent as it may appear."
(iii) Great reliance was placed by Mr. I. M. Patel on the Division Bench authority (Yaqub Ali and Change; JJ.) reported in PLD 1959 Lah.
381. In this judgment, which was written by Yaqub Ali, J. AIR 1941 Lah. 262 was approved, AIR 1943 Lah. 196 (Modi Sugar Mills v. Tata Oil Mills) was dissented from and the Privy Council decision reported in I L R 1940 All. 466 was distinguished. Yaqub Ali, J. Disagreed with the judgment of Tek Chand, J. In AIR 1943 Lah. 196, observing as follows :- "With utmost respect to the profound learning of Tek Chand, J. And the weight to which his view is entitled, we find ourselves nimble to agree with the view that "in judging the probability of deception the test is not whether the ignorant, the thoughtless, or the incautious, purchaser is likely to be misled and that we have to consider the average purchaser buying with ordinary caution."
Paras. 8 to 12 of the judgment reported in PLD 1959 Lah. 381 are reproduced here :- "8. A careful examination of the judgment of their Lordships in Thomas Bear & Sons v. Prayag Narain and another would disclose that whatever has been said in it is referable to cases of widely dissimilar goods and it was in this context that Niamatullah, J. Observed- "The standard to be borne in mind is neither that of a person who is devoid of all sense of discrimination nor of persons who are very careful observers of things around them. It is of an average man-exercising ordinary caution." It is again in respect of this class of goods that their Lordships observed :- "There are many trade marks and passing-off cases which cannot be decided by a visual comparison of the rival marks or names and must depend on the evidence of witnesses."
8. In Mod Sugar Mills v. Tata Oil Mills, Tek Chand, J. Has interpreted the observations of their Lordships in Thomas Bear's case as applicable to all classes of goods, howsoever, similar in nature and use. At p. 202 of the report is observed : "In some cases decided in this country the former' view had been expressed but it is not necessary to discuss them in view of the recent authoritative pronouncements of their Lordships of the Privy Council in Thomas Bear & Sons v. Prayag Narain and another where it was held that it was not sufficient to prove that some ignorant or indiscriminating person might be deceived but it must be shown that persons exercising ordinary caution would be likely, to assume that the article sold by the defendants was that manufactured by the plaintiff." It was thus assumed that the view expressed by the various High Courts of the sub-continent including this Court, e.g. In Ram Kumar Jalan v. R. J. Wood & Co. (1) that the test in cases of infringement of trade mark is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trade mark as the goods of the owner of the trade mark had been overruled or dissented from In the light of the above analysis of the judgment in Thomas Bear's case the assumption is not correct and the test laid down in case before Mod; Sugar Mill's case continues to hold good. {{FOOT NOTE}}
(1) AIR 1941 Lah. 262 {{FOOT NOTE}}
10. Lever v. Goodwill (1) a case in which the present plaintiff was the aggrieved party, Cotton, L. J., while dealing with the issue whether the defendant's soap was represented as manufactured by the plaintiffs, observed as follows :- "That being so, can we come to any other conclusion, than this-that the use of this paper and the use of this particular printing was intended to represent these goods as the goods of the plaintiffs, which had become known in the market, and would, in my opinion, induce people who do not when they buy an article look carefully to see what the particular mark or name upon it is, to consider when they got handed down to them one of the tablets of the defendants in this new dress, that they were getting the same soap as they had been accustomed to buy in this kind of packet."
' The criterion laid down in this case was thus that of customers who do not when they but an article look carefully to see what the particular mark or name upon it is" and not that of "the average purchaser buying with ordinary caution. '
11. In his well-known book on Trade Mark, Kerley, at pp. 617 and 618 has made the following observation which is based upon the dictum of their house of Lords in Lever v. Goodwin referred to above :- "It must not be assumed that a very careful or intelligent examination of the mark will be made, and if it were shown that the class of persons who bought the goods were illiterate, that would be a material fact in cases where printing entered into the marks."
' This is followed by the following quotations from Lever v. Goodwin :- "The poorer classes, who buy this class of goods, do not seem to distinguish the goods by the label, but by the general appearance which the articles present."
12. It is needless to stress that in Pakistan nearly 80% citizens are illiterate and that the soaps in question are generally used by them for washing and laundry. As regards the decided cases in England and in this subcontinent, it will be useful to recall the observations of their Lordships in Thomas Bear & Sons v. Prayag Na rain and another "that conditions peculiar to India must be borne in mind in applying any doctrine of English Law, and 'that English decisions which turn or partly turn on questions of fact-as do most cases of common law trade marks and passing off can only be applied with care and circumspection." We are thus of the opinion that the criterion laid down by this High Court in Ram Kumar Jalan v. R. J. Wood & Co., that in cases of infringement of trade mark the test is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trade mark as the goods of the owner of the trade mark still holds good. Not much weight can, therefore, be attached to the few points of dissimilarity between the plaintiff's and defendant's wrappers to which our attention has been drawn by learned counsel for the appellant because the points of similarity in them are so great that an unwary purchaser is likely to be deceived in purchasing the defendant's goods so that of the plaintiff."
(v) PLD 1967 Kar. 492 is a judgment of Noorul Arfin, J. In this case respondent No, 2's mark depicting the device of a deer in 'standing position with curling horns and facing to the left was registered.
The appellant sought registration of a mark which consisted of a deer in rampant {{FOOT NOTE}}
(1) (1887) 36 Ch, D 1 {{FOOT NOTE}} position with straight horns and facing to the right. The learned Single Judge dismissed the appeal filed by the appellant against the decision of the Registrar of Trade Marks rejecting the application for registration of the mark by the appellant. Paras. 4, 5 and 6 of the judgment of Noorul Arfin, J.
Read as follows :- "4. The two devices which have been held by the Registrar to bear close resemblance are in connection with the same goods, i,e, lubricating oils and greases, with this difference, that the Shell Company's trade mark covers, in addition, kerosene, motor spirit and petroleum. The question is whether there is such close resemblance between the two marks as to be likely to deceive or cause confusion. The Shell Company's mark consists of the device of a Deer with the words "Deer Brand" written above it. The deer appears in a standing position, and faces to the left and has curly horns.
The deer in the appellant's device is in rampant position with face to the right and with straight horns, and with the words "Bandenawaz" written across it. The learned counsel for the appellants, Mr. J. H. Rahimtoola, reasoned that the two devices, when compared side by side, will be found to contain so many dissimilarities as to constitute distinct and different marks altogether. I am afraid this is not a correct approach to the question. As held in Sandoz Ltd's appeal (1940) 31 P C 196 for purposes of resemblance the two marks should not be compared side by side and the question in cases of allied conflict between two devices always is whether a person will be deceived when he sees one trade mark in the absence of the other mark.
5. The consideration which has to be kept in mind is whether a member of the public buying the products of the appellants was likely to be deceived into believing that he was buying the products of the Shell Company. In Aristoc Ltd. v. Rysta Ltd. (1940) 62 R P C 65 the House of Lords, while considering the resemblance between Aristoc and Rysta stated the principle to be applied in such cases as follows "The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938 (which corresponds to section 10), must nearly always depend on first impression for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived of or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher for elocution. The Court must be careful to make allowance for imperfect recollection and effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants. The tendency to slur a word beginning with 'A' is generally speaking, very common, and the similarity between `Rysta' and 'Ristoc' would, I think, be fairly obvious. It would not be surprising to learn that a person asking for 'Aristos' stockings from a shop assistant who only knew of `Rysta' stockings had been supplied with the latter and vice versa.
6. In the light of the above pronouncements, it has to be decided whether there is any resemblance between the two devices before me. The resemblance may be visual or phonetic. The basic device in the two marks is the same, i,e, a Deer. Notwithstanding the dissimilarities with regard to the shapes of the deers, the two devices shall in all probability be known in the market as Deer marks or Deer Brands. The goods of the Shell Company of Pakistan. I am, therefore, of the opinion that there is such resemblance between the two devices that the registration of the appellant's trade mark will result in causing deception or confusion in the public. I may here refer to cases where the comparison between the leading features of the two marks led the Courts to conclude that notwithstanding the points of difference, the two marks bore such resemblance as was likely to cause deception and confusion. In Northington's Trade Mark (14 Ch. D 8, 13, C A) a triangle with a double line with the name of the brewery inscribed inside it and having conspicuously thereon a figure of a church was held to be similar to a plain triangle coloured red. In Pamril Ltd.'s Application (1901) 18 R P C 181 the device of the side of an apple cut vertically into half with the word "Pomril" across it and a registered trade mark consisting of the representation of an apple with the words "Apple Brand", both marks being for cider, were declared similar. The picture of a girl in dancing dress sitting upon a bed and pulling up her stockings, with the words "Cabret Girl", and the picture of a lady in ballet dress with a wreath of flowers in her hands and the word "Carnival" or "Columbine" underneath were held to bear close resemblance to each other in the Distributing Corporation (London) Ltd.'s Application (1927) 44 R P C 225."
(v) The facts of and principles laid down in PLD 1970 Kar. 92, a Single Bench judgment of Feroze Nana' Ghulamally, J. Are manifest from the following passages at p. 96 of the report "There is no doubt in my mind as would be crystal clear even on a cursory glance at these two marks that the defendant's mark "5-Stars" is a colourable limitation of the plaintiffs' registered trade mark "3-Stars." It appears to me that the defendants have exerted every possible effort to make out a resemblance between the mark that they are using and the, trade mark registered in favour of the plaintiffs. The get up, design and colour are all identical. The only difference which it has pleased the defendants to make that they branded their mark "5-Stars" instead of "3-Stars" of the plaintiffs. It is consequential keeping these two designs, marks, etc. Side by side, that they are bound to cause confusion in the market to the customer in general and amounting to a flagrant infringement of the plaintiffs' registered trade mark definitely deceiving a purchaser of a firm acquainted with the plaintiffs' get up and leading him to purchasing the defendants' products as that of the plaintiffs', My findings accordingly on these issues.
11. Issue No, 7.-The plaintiff's have led no reliable evidence on any actual damages suffered by them on account of the infringement of their registered trade mark. In consequence they are not entitled to any damages as claimed in their plaint, the amount claimed in paragraph 11 on this point being Rs, 25,000. The plaintiffs are only entitled to nominal damages as held in the above- cited case of AIR 1944 Sind 21 where identically the plaintiffs claimed substantial damages and were only allowed nominal damages which were fixed at Rs,
100. Accordingly. In the circumstances of the present case, I fix the same amount as nominal damages suffered by the plaintiffs and award the same accordingly."
(vi) PLD 1973 Kar. 289 is a judgment of Fakhruddin Ebrahim, J. This was a judgment dealing with grant of temporary injunction. Plaintiff was the registered proprietor of the trade mark in respect of bidis described as "Koh-i-Noor Beedi 505." Defendants introduced bidis with name/mark of "Kohi-i- Soor Bidi 506." Interim injunction was granted by the lower Court in the suit filed by the plaintiff. High Court dismissed the appeal filed by the defendants. In para. 9 of the judgment, Fakhruddin, J. Had this to observe :- "In the present case a cursory look at the two wrappers will show that except for the difference in the name and number, namely, Kohi-i-Soor Biri instead of Kohi-i-Noor Bidee and 506 instead of 505, the two wrappers are identical so much so that even the name and numbers are written in the same manner. Again the design and the colour scheme of the two wrappers are identical. There is in my opinion substantial resemblance between the two wrappers, in material respects, which is likely to deceive or cause confusion in mind of unwary purchasers."
' Mr.
1. M. Patel also referred to para. 15 of the judgment reported in PLD 1973 Kar. 289 which is reported here :- "Finally the learned counsel contended that the injunction should not have been granted as his client's application for registration of their present mark is pending with the Registrar of the Trade Marks. I am shown no law or authority which denies to the proprietor of a registered trade mark, if a case is otherwise made out, an injunction restraining the infringement of his registered trade mark merely because the person against whom the injunction is sought has applied for registration of his mark. On the other hand the law as laid down in section 21 of the Trade Marks Act, 1940, is that the proprietor of a registered trade mark has the exclusive right to its use and that such right will be deemed to be infringed by any person who uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion."
(vii) 11 R P C 37 is a judgment of a Single Judge of the High Court of England (Chancery Division). In this case the applicants applied for registration of trade mark for rum consisting of a diamond with a smaller diamond superposed and the outer diamond coloured in red. The application was opposed by the owners of a diamond trade mark registered for beer and used in red colour on the ground that the trade mark applied for would cause confusion and deceive the trade and the public into believing that the applicants' goods marked with their mark were goods emanating from or some way connected with the opponents. The application was refused by the Registrar of Trade Marks and the appeal was dismissed by the High Court holding that whether beer and rum are or are not the same description of goods, still, even if they are not, there was such a probability of deception that the Court ought not to say that the mark must be registered.
(viii) 50 R P C 12 is also a judgment of a Single Judge of the High Court of England (Chancery Division). This was a case relating to match boxes. Plaintiff's had taken action against the defendants for infringement of their registered trade mark and for passing off. The defendants had started using a new mark which was considered by the Court to be an infringement of the registered mark of the plaintiff. The old mark of the defendants had no similarity with the mark of the plaintiff. Judgment was given in favour of the plaintiffs. At page 20 of the report, Clauson J.
Observed as follows :- "I have heard a body of evidence as to the way in which the matches are bought and sold. I need not, I think, travel through it again. It would be affection to pretend that most of us do not know what happens when smoker wants a box of matches and has- not one in his pocket and sees a tobacconist's shop. I do not think I need go into that evidence at any length. Bearing in mind the class of customer that I think it is proper that I should consider, namely, a customer who knows, among other things, that a box with a label in yellow and black is common to the trade, who also knows that an upturned scroll with an object like an ark in the cancavity of it is among the distinguishing chat acteristics of Bryant & May's well known label. I must consider whether looking at the boxes I am satisfied that confusion is possible or probable. In my opinion, studying the two boxes, giving such consideration as I can too what one would expect in the case of such a class of customer, giving the best consideration that I can to the evidence that I have had, which include a certain amounts of evidence of what was said to be actual confusion occasioned, I have come to the conclusion that not only is confusion possible, but indeed probable."
(ix) 68 R P C 103 is a judgment of the Privy Council on an appeal from a judgment of the Court of Appeal in Jamaica. In this decision it was held that the word "Vapour Rub" was an essential feature of the registered mark of the respondent-Company and that the words "Vapour Rub" employed by the appellants so closely resembled that word as to be likely to deceive and that respondent's registered mark was infringed.
(x) In 68 R P C 271 there was an action for infringement of the registered trade mark of the plaintiff for motor lamps comprising a device with the word "Taw". The defendant used in advertisements of motor lamps a device together with the word "Notek." The two devices had in common the use of representations of motor lamps for replacing the eyes of a cat. In the circumstance of that case, it was held by a Single Judge of the High Court of England (Chancery Division) that the characteristic feature of plaintiff's mark was neither the word "Taw" nor the device as such, but the substitution of motor lamps for eyes in the representation of a cat's head and that the mark had been iutringed.
(xi) 1978 R P C 635 is a judgment by the Privy Council against a decision of the Court of Appeal of Trinidad and Tobago. The plaintiffs in that case sold and distributed "Colgate" tooth paste in Trinidad and Tobago in packaging, the prominent colours of which were red, white and -dark blue.
The plaintiffs were the proprietors of two trade marks, one consisting of the word 'Colgate" and the other consisting of a label containing the word ."Colgate" printed in a distinctive white script on a bright red background. The defendant, a manufacturer of various toilet products in Trinidad, began to sell tooth paste under the name "Tringate" in packing red, white and blue. The plaintiff started proceedings for infringement of trade marks and for passing off. The Court of Appeal of Trinidad and Tobago held-
(a) tat it was clear from the evidence that the defendant had borrowed features from the plaintiff's packing, tubes and labels gathering them together to form his own trade mark ;
(b) that the ordinary purchaser of normal memory, purchasing with ordinary caution could not be expected to make a close and careful side by side examination of two products ;
(c) that the mark, name and get up used by the defendant constituted an implied representation that his tooth paste was that of the plaintiff or at any rate was calculated to deceive or attract the goodwill of the plaintiff's tooth paste to him ;
(d) that many persons might have concluded that Tringate toothpaste was in fact Colgate toothpaste manufactured in Trinidad ;
(e) that both trade marks had been infringed and that the defendant was liable for passing off.
' The Privy Council the appeal from the decision of the Court of Appeal of Trinidad and Tobago observing that had the appeal come directly to them from the trial Court, they would have formed exactly the same view.
(xii) AIR 1942 P C 40 was relied upon by Mr. Muzaffar Hassan, learned counsel for the defendant and attention of the Court was invited to the following passage from page 42 of the report :- "There was accordingly no evidence before the Exchequer Court of confusion actual or probable. In these circumstances, the question for determination must be answered by the Court, unaided by outside evidence, after a comparison of the defendant's mark as used with the plaintiff's registered mark, not placing them side by side, but by asking itself whether, having due regard to relevant surrounding circumstances, the defendant's mark as used is similar (as defined by the Act) to the plaintiff's registered mark as it would be remembered by persons possessed of an average memory with its usual imperfections."
(xiii) The other reported judgment referred by Mr. Muzaffar Ha.Ssan is AIR 1941 Lah.
262. It was observed in this D. B. At page 264 of the report as follows :- "It has been urged in appeal that there can be no confusion between these two face plates because there is-it is contended-difference between the get up of the two designs, the measurements of the cloth and its quality and price, differences which it is urged, would deceive no intelligent purchaser. But the test in cases of this nature is whether the unwary purchaser is likely to be deceived ; and the general similarity between the design of the two fact plates is such that in my view fully justifies the opinion formed by the trial Court that an unwary purchaser has been deceived. Some evidence was led by the defendant in an attempt to show that there could be no confusion between the two face plates. This evidence consists of some Delhi commission agents, who apparently deposed as experts and whose opinion on the subject can be of no value. D. W. 2, Naurang Rai, a shop keeper of Delhi, deposed that- ' If I were offered cloth with face plate Exh. P. B. In face of cloth with face plate Exh. P. A., I would not purchase it as there is a vast difference in them.
' Such evidence is not only of no value but inadmissible. As pointed out in 1899 A. C. 83, a House of Lords case, which the lower Court has quoted on page 17 of the printed paper book, the expert opinion of persons well-acquainted with the trade as to whether an alleged resemblance between the contrasted marks is or is not calculated to deceive the unwary is inadmissible, and in the absence of any direct evidence that the. Unwarys have been deceived, it is for the Court and the Court alone to decide whether there is a possibility of deception. After a careful comparison of the two face plates; Exh. P. A., that of the plaintiffs and Exh. P. B., that of the defendants, I see no reason to differ from the view of the learned Subordinate Judge that the similarity between them is such as is follows, therefore, that the lower Court was right in holding that an infringement of the plaintiffs' trade mark is established."
6. One contention of Mr. Muzaffar Hassan, learned counsel for the defendant, was that in respect of the marks being used by the defendant, an application No, 70405 had already been filed by them with the registrar of Trade Marks and the same was pending registration. This is no defence to an action for infringement of the trade mark if otherwise the defendant's mark comes within the mischief of section 21 of the Trade Marks Act, 1940. If the contention, as raised, is accepted, it would lead to absurd and obviously unjust consequences. A person who were to imitate the registered mark of another person violating section 21, would then have a very convenient way of escape and that is to file an application for registration of trade marks and their infringement would be rendered nugatory. I am in respectful agreement with the views of Fakhruddin, J. Expressed by him in PLD 1973 Kar. 289 in this regard.
7. Another argument advanced on behalf of the defendant is contained in para. 12 of their written statement and reproduced in para 2 of this judgment. It is an admitted position that the registered mark of the Plaintiff is a composite mark. According to learned counsel for defendant, it was open to the plaintiff to apply for and obtain registration of the different parts of their composite mark, but as this was not done, plaintiff cannot successfully maintain an action for infringement of their mark if only one or more parts of their composite mark are used by another party. It was contended that just because candles appear on the defendant's mark, it would not amount to infringement of plaintiff's mark. On the other hand, Mr. I. M. Patel, learned counsel for the plaintiff, submitted that the device of candle was an essential feature of the plaintiff's mark and it follows, therefore, that anyone who used the device of a candle on match boxes infringed the plaintiff's mark. Reference here to section 11(1) and (2) of the Trade Marks Act, 1940 is pertinent. These two subsections read as follows:- "11 (1)-Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trade marks.
(2) Each such separate trade mark shall satisfy all the conditions applying to, and have all the incidents of, an independent trade mark."
As observed earlier, Plaintiff's mark is a composite mark and one part of the several parts of this mark is the device of a candle. The whole composite mark of the plaintiff is registered as such and the separate parts of this composite mark are not separately registered. In any case, it is an admitted position that the device of candle is not separately registered. Under section 11 of the Act, the plaintiff could have applied for registration of the candle as a separate mark and such application would have been dealt with in accordance with law on its own merit by the Trade Mark Authorities. I am, therefore, of the view that the plaintiff cannot succeed in the present suit if their case rests solely on the contention that the defendant has nee candles on their mark. To succeed the plaintiff have to make out a case in terms of section 21(1) of the Trade Marks Act, 1940.
8. Reference may now be made to section 21(1) of the Trade Marks Act, 1940 which is reproduced here :- "21(1) Subject to the provisions of sections 22, 23 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark indentical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either - (a)as being used as a trade mark ; or (b)to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which ' such person as aforesaid is connected in the course of trade."
It is apparent that the two marks in question are not indentical and, therefore, the crucial point that requires consideration is whether the defendant's mark c so nearly resembles plaintiff's registered mark as is likely to deceive or cause confusion in the course of trade in the manner specified in section 21(1) of the 1940 Act.
' Now the deception or confusion that finds mention in section 21(1) of the 1940 Act is with reference to the purchaser of the goods in question. In the instant case the central figure is that of the purchaser of match boxes. There is hardly any difficulty in identifying the purchaser or customer of match boxes. He or she would in almost all cases be a smoker, or a person or household lady requiring a match box for lighting the fire in the kitchen or elsewhere. But the question is whether the law, when it contemplates a purchaser or customer who might be subjected to confusion or deception, is making reference to an intelligent and careful purchaser or an average customer exercising ordinary caution or an incautions or unwary purchaser. Case-law on the subject has been discussed at some length in para. 5 of this judgment. 'Prior to decision reported in Modi Sugar Mills v. Tata Oil Mills (1), view of the various High Courts of the sub-continent including the Lahore High Court (AIR 1941 Lab. 262) was that the concerned person was the unwary purchaser. However, in AIR 1943 Lah. 196 it was assumed that this established view of the various High Courts had been overruled by the Privy Council in I L R 1940 All. 466 and it was held that "in judging the probability of deception the test is not whether the ignorant, the thoughtless or the incautions purchaser is likely to be misled and that we have to consider the average purchaser buying with ordinary caution. "It is not necessary to discuss in any detail whether the Privy Council did over-rule the earlier view of the various High Courts. As observed earlier, a Division Bench of the erstwhile West Pakistan High Court (PLD 1959 Lah. 381), after a detailed analysis of the judgment of the Privy Council reported in I L R 1940 All. 466, in no uncertain terms held that the Privy Council had not overruled the earlier view observing that the test laid down in cases before Modi Sugar Mill's case continued to hold good. No decision of any superior Court of Pakistan was cited by the learned counsel to show that a different view has been taken in Pakistan. Respectfully following the view expressed by Yaqub Ali, Judge in PLD 1959 Lab. 381, (1) AIR 1943 Lab. 196 I may observe that what has to be determined in such cases is whether the unwary purchaser is likely to be misled or deceived. The test is not whether an intelligent or careful purchaser is likely to be deceived. The test is neither that a customer of average intelligence exercising ordinary caution is likely to be misled. It may be repeated that the test is whether the unwary or incautions or careless or unguarded purchaser is likely to be misled or deceived into purchasing the goods of the person infringing the trade mark as the goods of the proprietor of the trade mark. It may also be mentioned here that there is a vast difference in the condition of life, specially the question of literacy of the people, of the purchasers in Pakistan and the purchasers in U. K. And other developed countries. Laws are interpreted by Courts of a country keeping in mind the realities of life in that country. E While interpreting section 21(1) of the Pakistan Trade Marks Act, 1940, it is the unwary purchaser in Pakistan and not in U. K. Who has to be kept in mind.
9. It is for the Court to decide whether there is an infringement of the registered trade mark in terms of section 21(1) of the Trade Marks Act, 1940. Evidence given by purchasers to the effect that they were or were not deceived by the infringing mark is generally not of much assistance to the Court.
Evidence of an expert witness or an intelligent customer or even a customer of average intelligence who takes ordinary care while buying goods in the market, would not be relevant as the test is that of an unwary purchaser and it is only the evidence of an unwary purchaser which would be relevant. Then some witnesses for the plaintiff in a trade mark infringement action may state that they were deceived by the infringing mark whereas other witnesses giving evidence for the defendant may depose to the contrary. It may, therefore, be observed that invariably the Court, after taking into consideration the two marks-the registered and the infringing-decides whether the unwary purchaser is or is not likely to be deceived.
10. The considerations that are kept in view by the Courts in deciding whether the unwary purchaser is likely to be deceived or not may then be discussed. The Court dealing with an infringement action no doubt considers the similarities and dissimilarities between the registered mark and the offending mark but the decision of the Court does not depend upon the number of similarities and dissimilarities. Consideration of similarities and dissimilarities is only a factor or aid in reaching the final conclusion by the Court. There might very well be a case where dissimilarities may out-G number the similarities but on account of the general get up, colour scheme. Design and other features of the two marks, the Court may rightly reach the conclusion that the offending mark is likely to deceive the unwary purchaser. In PLD 1967 Kar. 492, Noorul Arfin, Judge, in para. 6 of the judgment, has made reference to several reported judgments where notwithstanding several points of difference, the Courts, after comparison between the leading features, came to the conclusions that the marks in question bore such resemblance as were likely to cause deception or confusion.
' Secondly the comparison by the Court between the two marks is not to be a meticulous comparison, the reason being to reach the mind of an incautious or unwary purchaser.
' Thirdly, as observed by Noorul Arfin, Judge in PLD 1967 Kar. 492 for purposes of resemblance, the two marks should not be compared side by side and the question in cases of alleged conflict between two mark always is whether a person will be deceived when he sees one trade mark in the absence of another mark.
11. In the light of the principles enunciated above, issues in the instance case may be decided. I may forthwith state that if the law were dealing with an intelligent customer or even a purchaser who exercised ordinary care or caution, a comparison of the two marks in the instant cases, would have led me to the conclusion that such a customer would not have been deceived. But the law requires the Court to reach the mind of the unwary purchaser and further that the comparison between the two marks is not to be a meticulous comparison. Here we have an unwary purchased presumably illiterate, as a majority of the people in Pakistan are, who has previously purchased match boxes with the registered trade mark of the plaintiff. He is purchasing a match box and he sees in the shop or given by the seller a match box with defendant's mark. Now he does not have with him a match box of the plaintiff but has an imperfect recollection of the mark of the Plaintiff.
Question is whether as an unwary or incautious purchaser he will be misled or deceived into believing that this match box of the defendant is the plaintiff's match box. In my view the unwary or incautious purchaser will have, about plaintiff's mark, the recollection-imperfect of course-of a candle with flame. He will recollect the colour scheme of yellow and red with the bigger portion being yellow and the smaller portion in red. The design on the back portion of the match box of the plaintiff is not registered, but about the plaintiff's match box, this purchaser will also remember the black back portion with lines. In my view the unwary purchaser is likely to be misled or deceived in believing that what he is buying is the plaintiff's match box. There are no doubt several dissimilarities between the two marks and if the two match boxes are placed side by side, even an unwary purchaser will notice the differences. But, as observed earlier, the test is whether the unwary purchaser is deceived or misled in the absence of the registered mark and on the basis of his recollection thereof.
' Mr. Muzaffar Hassan, learned counsel for the defendant, had laid great stress on the several dissimilarities, as noted in para. 4 of the judgment, to urge that there is no infringement in terms of section 21 of the Trade Marks Act, 1940. However, as observed already, I am of the view that there is such resemblance as would cause deception in the mind of the unwary L purchaser that he was buying plaintiffs' match box when in fact he would be buying defendant's match box.
' It is also apparent that the defendant has borrowed certain important' features from the plaintiff's mark and deliberately used them in their mark to pass off their match boxes as that of the plaintiff.
This conclusion finds further support from the fact that the defendant already had two marks registered in class 34 for match boxes-"Roshni" and "Polo"-and both these designs are absolutely different and distinct from the plaintiff's mark and further in 1976 they had a third mark registered under the name of "Chanda" (filed as Annexure P-3 to the affidavit-in-rejoinder on behalf of the plaintiff) and this design is also absolutely different from the plaintiff's mark.
12. In view of my findings hereinabove, both issues Nos. 2 and 3 are decided in the affirmative against the defendants. The other point requiring N consideration is as to what relief the plaintiff is entitled. Plaintiff has not proved any actual damage suffered by them. They are, therefore, entitled only to nominal damages.
13. I pass a decree in favour of the plaintiff and against the defendant as follows :-
(a) A permanent injunction is granted restraining the defendant from manufacturing, selling, offering for sale, advertising or otherwise using their match boxes under the infringing label which is Annexure 'B' to the plaint ; -
(b) Defendant is directed to deliver up on oath all labels, match boxes, advertising material, printing blocks, dyes, films, plates and any other material bearing the infringing mark, which is Annexure 'B' to the plaint ;
(c) Defendant pay a sum of Rs, 100 (Rupees one hundred only) as damages to the plaintiff ; and
(d) Plaintiff shall also be entitled to full costs.