' This is a Miscellaneous Appeal under Order XLIII, rule 1(r) of the Civil Procedure Code against the order, dated 13-9-1983 allowing the respondent's application under Order XXXIX, rule 1 and section 151, C.P.C. filed in Suit No. 77 of 1983, whereby the appellant 2 has been restrained from passing of the product in the name of 'Shalimar Rasily' manfacured by the appellant/defendant.
2. The facts leading to this miscellaneous appeal are that the respondent is the registered Proprietor of the Trade Marks Nos. 73036 and 73039 since 10th December, 1980 which are the trade marks 'Shalimar' with a device of Peacock and a device of Queen for sweet scented Chalia, Paan Masala, under the Trade Marks Act of 1940. The respondent in or about January, 1982 introduced in the market his product namely Sweet Scented Supari (Chalia) under the trade mark 'Rasily' alongwith his trade mark 'Shalimar' with the two devices referred to above. His application for the registration of the same is pending under No. 77963. It is alleged by the respondent that their trade marks are very famous in the public due to long and large sales thereof and also due to extensive publicity through various mass medias. On 9-6-1983 the respondent filed a Suit bearing No. 77 of 1983 for injunction against infringement of their trade marks and for passing off, and for damages and accounts of profits under section 21 read with section 73 of the Trade Marks Act, 1940, alleging therein that recently it came to his notice that the appellant was manufacturing, packing and marketing the sweet scented Supari under the trade mark 'Shalimar' with the device of Peacock and the device of Queen under the similar label/packing of the respondent's Rasily alongwith a similar and identical get-up design, pattern and colour scheme of the respondent's label 'C' annexed to the plaint. The respondent also filed an application under Order XXXIX, rules 1 and 2, C.P.C. for interim injunction which was allowed by the learned VIIIth Additional District Judge by his order, dated 13-9-1983 against which this Miscellaneous Appeal has been filed.
3. I have heard at length the learned counsel for the parties, namely Mr. Amanullah Khan on behalf of the appellant and Mr. Hussain Adil Khatri on behalf of the respondent.
4. Mr. Amanullah Khan has filed two labels in dispute of the trade mark 'Rasily Supari'. He has also placed on record the photo copies of the certified copies of the several applications for registration of the trade mark filed by the respondent as well as one application filed by the appellant.
5. On perusal of these applications it is manifest that the respondent is the registered proprietor of the two Trade Marks Nos. 73036 and 73039 duly registered on 10-12-1980 for the trade marks 'Shalimar' with a device of Peacock and a device of Queen with respect to the sweet scented Supari (Chalia) under class 30 of Schedule IV of the Trade Marks Act, 1940. The only contention raised by Mr. Amanullah Khan in this respect is that the picture of Queen has been declared common to the trade as per Trade Mark Journal for December, 1977. It is correct that the use of the device of lady is common in trade and it does not give an exclusive right to the use thereof by the registered proprietor, so as to prevent others from using it, but it may be taken into consideration if the manner of use of the device of lady, the Queen in this case, will cause deception in the mind of the public, if it is allowed to be used by another who is not a registered proprietor thereof. There is however, no challenge to the registered device of Peacock by the learned counsel for the appellant. He, however, challenges the use of words 'Shalimar' on the basis of the application advertised before acceptance in the Journal for January, 1984. He has also invited my attention to a photo copy of the certified copy issued by the Registrar Trade Marks in respect of the said mark No. 75698.
6. I find that both the contentions as to the use of the device of queen and the use of the work Shalimar are untenable in law. Admittedly the respondent is the registered proprietor of the trade mark 'Shalimar' with the device of Queen. This has been associated in the mind of the public since it is registered on 10-12-1980, if not before, and this factor should be taken into consideration while granting or refusing the request for interim injunction during the pendency to suit filed under section 21 for infringement under the Trade Marks Act, 1940.
7. I have examined the two cartons of the disputed trade mark 'Rasily' placed on record and I am clear in my mind that there is a likelihood of causing confusion and deception in the mind of an unwary purchaser, as both the labels of the cartons are similar in the calligraphy, complexion, get up and the colour scheme.
8. As regards the submission with regard to the pendency of the application for registration of the Trade Mark bearing No. 75698, the contention appears to be misconceived. This application has been submitted by the respondent for registration of the trade mark 'Shalimar' for coffee and other goods described in the application itself which, in fact, has been applied as trade mark in association with his earlier trade mark already registered. In this application it has been specifically stated by the respondent that instead of the word 'Supari' or the 'Paan Masala' the word for Coffee and other goods stated in the application may be substituted. On the basis of this document which has been produced by the appellant himself it cannot construed that the word 'Shalimar' for Supari and Pan Masala is not registered.
9. Mr. Amanullah Khan next contended that both the applications made by the respondent as well as the appellant are pending before the Registrar, Trade Marks for registration. The respondent cannot have the right of exclusive use thereof. It is admitted that the appellant's application for the registration of trade mark 'Rasily' was filed in the office of Registrar, Trade Marks on 18-4-1983 whereas the application for the registration of trade marks 'Rasily' was filed by the respondent on 7-10-1982 which is admittedly prior in time. Mr. Amanullah Khan, however, contends that in the application for registration, the respondent has shown the period of user from January, 1982 whereas the appellant has shown the period of user since last six years from the date of making the application. This plea would have, prima facie, prevailed to refuse interim injunction on the ground of the alleged prior user of the appellant but I find that the appellant has not placed any material on record alongwith his counter-affidavit filed in the lower Court and the affidavit and rejoinder filed in this Court. He has only submitted two small calendars for the years 1978 and 1979 which bear the trade mark 'Rasily'. The genuineness of these two calendars are also disputed by the respondent's counsel. I am afraid, that a trader who is trading under a certain trade mark for six or seven years, as alleged, should be armed with sufficient evidence at least to support his averment that he has been using the said trade mark for the last so many years. Merely the production of two calendars does not create confidence in my mind as to prima facie establish the user of the trade max Rasily by the appellant since 1977, as orally submitted by Mr. Amanullah Khan before me.
10. For the reasons discussed above, I find no justification to interfere with the order of the lower Court and the appeal is dismissed.
11. Mr. Amanullah Khan, however, requests that a direction may be issued for disposal of the suit at a very early date as his business is entirely held up and due to injunction he is suffering irreparable loss. Mr. Hussain Adil Khatri, learned counsel for the respondent has no objection. Even otherwise, I am inclined to grant this request and, therefore, direct the learned VIIth Additional District Judge, Karachi to dispose of this suit within six months.
12. I may, however, clarify that the above findings are tentative and will not affect the merits of the suit. The appellant shall be at liberty to make an application under Order XXXIX, rule 4, C.P.C. before the trial Court for varying the order of injunction if he is able to establish prior user since 1977 or so, by leading evidence at the proper stage of the suit.
Injunction maintained.