' AHMED ALI U. QURESHI, J.--This appeal has been filed under Order XLIII, Rule 1 (r), C.P.C. Read with section 3 of the Law Reforms Ordinance, 1972, and section 15,, C.P.C. Of Ordinance X of 1980, against the order dated 5-8-1984 of the learned Single Judge of this Court, dismissing the application under Order XXXIX, rules 1 and 2, C.P.C. Filed by the appellant in the pending Suit No, 80 of 1984, seeking temporary injunction to restrain the respondents from using word 'FORMICA' in their trading style "Pakistan Formica Limited" until the disposal of the suit.
2. Admittedly, the appellants are the registered proprietors of the trade mark 'FORMICA' in respect of all classes of goods falling under clause 17 and non-metallic laminated material for use in building and for construction purposes falling under clause (19). The appellants claim, that trade mark "FORMICA" is their invented word for use upon decorative and other laminated plastics and other products which is used by the appellants throughout the world including Pakistan to indicate the commercial origin of goods and their connection with the appellants. It is alleged, that the respondents have adopted word 'FORMICA' as a part of their trading style which is likely to convey a false impression that the respondents' products are manufactured by the appellants or with their technical assistance and are in confirmity with the standard and quality prescribed by the appellants. It is further alleged, that word 'FORMICA' has been deliberately adopted by the respondents to trade upon good-will and reputation of the appellant's Trade Mark 'FORMICA'. It is further contended, that the above act of the respondents constituted infringement of appellants trade mark 'FORMICA' and they, therefore, prayed for temporary injunction restraining the respondents from using word 'FORMICA' as part of their trading style.
3. The respondents deny, that there has been any infringement of the trade mark of the appellants as the goods of the respondents are sold and marketed under the Trade Mark 'DECORITE'. The respondent's claim to have been incorporated under provisions of Companies Act on 25-11-1981 and have been engaged in manufacture of the laminated sheets since then. It is further contended, that the appellants products are hardly sold in Pakistan and are not available in Pakistan and the people in Pakistan are unaware of trade mark of appellants, and therefore, the question of any confusion or deception does not arise.
4. Mr. Vellani, learned counsel for the appellants, has stressed upon wording of section 21(1) of the Trade Marks Act, 1940, which may be reproduced hereunder:- Section 21 (1). "Subject to the provisions of sections 22, 25 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 identifical with it or 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 a person as aforesaid is connected in the course of trade."
' He argues, that it is not merely, that the deception or confusion must have been a cause but if there is likelihood of the deception or confusion then the infringement will be deemed to have taken place. He further argues, that infringement is not caused only when that trade mark is used as trade mark by the infringer but it is caused even if the mark used by the infringer is such as to import reference that the appellants are connected with the trade of the respondents. In this connection he submits, that word used under subsection (1) is 'MARK' and not 'TRADE MARK', whereas the word 'TRADE MARK' is used only in clause (a) of subsection (1). He also relies upon definition of word 'MARK' as contained in section 2(1)(f) which reads 'Mark includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof". It is argued by Mr. Vellani, that use of word 'FORMICA' in the trading name of the respondents would be a 'mark' as defined above, and its use is likely to deceive the public at large and cause confusion and also import reference that the goods manufactured by the respondents are connected with the trade of the appellants. He further argued, that as required by sections 143 and 144 of the Companies Ordinance, 1984, the respondents are duty bound to print their trading name on their letterhead as well as on the invoices issued by them. As these letterheads and invoices would bear printed word 'FORMICA', it will clearly give rise to inference that goods are being sold or are being offered for sale or the goods which are available are manufactured by the appellants or manufactured with their consent in Pakistan. In his support Mr. Vellani has quoted from the 'Law of Trade and Merchandise Marks' by Dr. S. Venkateswaran" 1963 edition page 509. It is observed "the wrongful use of plaintiffs registered trade mark in the defendants' invoices may be used in the relation to the defendants goods and may constitute infringement" Mr. Vellani contends, that word "FORMICA" has been invented by the appellants. In support he produced the Condensed Chemical Dictionary Eighth Edition revised by Gessner G. Hawley published by Van Mostrand Reinhold Company New York. In this dictionary upon word "FORMICA" there is numerical (13). It has been described "as trade mark for high-pressure laminated sheets of melamine " In this dictionary list of the manufacturers of trade mark products are given. At page 961 against numerical (13) is shown name "FORMICA CORPORATION". He has also taken us through various dictionaries including Webster's New World Dictionary of the American language, Second College Edition, where word "FORMICA" appears at page 548 as "a trade mark for a laminated, heat-resistant thermosetting plastic used for table and sink tops, etc". In all the dictionaries referred to by Mr. Vellani "FORMICA" is shown as trade mark.
5. He has also quoted extensively from Kerly's Law of Trade Marks and Trade Names, Eleventh Edition. At page 254 Chapter 14-27, it is observed, "whether the use of a mark is likely to import a reference to the proprietor or registered user or to the goods of either of them must be a question of fact in each case. Where the trade mark is an invented word or a word which has no reference to the character of the goods and is not a name or geographical name, the inference that it would be taken to import such a reference will, no doubt, readily be drawn, as it could scarcely be used except for that purpose. In the case of names, proof may be more difficult, and the context will be important". At page 364 Chapter 16-53 it is observed, "injunctions have been granted, in a number of cases, to restrain a defendant from trading under a name resembling or including the plaintiff's trade mark, as distinct from the plaintiff's trading name. An injunction against use of the plaintiff's trade mark as a trade mark, and an injunction against use of it in a trading style, do not necessarily go together, for the types of confusion they are intended to prevent are different. If, however, (as must often be the case), use of the plaintiff's mark in the defendant's trading style leads to its application by others to the defendant's goods, the plaintiff is entitled to an injunction against the such use. It would further more seem obvious that if the trade mark is a really inherently distinctive one (as in the "Kodak" case, below) most customers will assume that any company with that mark in its name is either an offshoot of the owner of the mark or that owner having changed its name".
The learned author has remarked at page 428 Chapter 17-39. "where in fact a mark is deceptive, or is, in the opinion of the tribunal, likely to be so, it is not necessary to show that there was any intention to deceive".
6. Mr. Vellani argues, that it was not necessary for the appellants to show that the respondents intended to deceive or deception was actually caused but the Court has to see whether deception was likely to be caused.
7. This appeal is not against any final order, but against the order refusing to grant interim injunction. It is a settled law, that principles which should guide a Court in issuing ad interim injunction are as follows:-
(i) Prima facie case in favour of the party asking for the injunction.
(ii) The party seeking injunction shall satisfy the Court if injunction is not issued, the delay would cause irreparable loss, damage or injury to the party's interest.
(iii) Balance of convenience is in favour of that party.
8. Even if we agree with the contention of Mr. Vellani that the appellants have strong prima facie case, still that alone would not be B sufficient to grant the relief sought by the appellants. Reliance is placed on PLD 1970 Kar. 332 and 1974 SCMR 94. It is settled law that mere prima facie case is not sufficient to entitle a party to get interim injunction. Mr. Velliani has relied upon the case of String fellow and_ another v. McCain Foods (GB) Limited reported in 1984 Fleet Street Reports 1975, where the Court granted injunction when the evidence on record established that plaintiff's club was well known by large cross-section of public as a night club, which included high class restaurant and that many of public on seeing the name of String fellow in connection with chips had concluded that there was some connection between the plaintiffs and the defendants by way of joint interest or grant of rights in the name, and therefore, the reputation of high class night club or restaurant was likely to suffer rapidly once it has been tainted". In the string fellow case plaintiff was Mr. String fellow who had established high class night club and the restaurant which became very popular and the defendants advertised their oven ready chips under the name of string fellow.
9. However, even in this case the injunction was granted only when the plaintiffs were able to show by evidence that the public was actually misled by the use of name of string fellow by the defendants.
10. It will be pertinent to quote here from Kerly's at page 427 and 428 Chapter 17-38, "proof of actual deception, if the mark is in the opinion of the tribunal likely to deceive or if it has been substantially copied from another, is unnecessary. The absence of evidence of actual deception is a circumstance which varies greatly in weight according to the nature of the case. Nevertheless, where the marks have been circulating side by side in the market where deception is alleged to be probable, the fact that no one appears to have been misled is very material, unless satisfactorily explained." In the instant case the respondents are admittedly carrying on business under their trading name since 1981 viz. For more than four years. We now proceed to examine whether any deception or confusion has been caused or any damage has accrued to the appellants by use of the trading name by the respondents.
11. In this context the Court has to see whether before the suit is decided and legal right of the appellants is established whether they require any protection from any injury which may be considerd as irreparable loss.
12. It is contended by the respondents, that the appellants have no business in Pakistan. To controvert this contention of the respondent the appellants have filed affidavit of their Deputy Managing Director, Mr. Peter Marshal. He has filed certain documents to show the correspondence, enquiries and orders received by the appellants from Pakistan. Documents A-1, A-2, A-3, A-4, A-5 and A-6, are orders of supply of goods placed with the appellants by the officers of P.I.A. Based in London and Europe. Documents marked B-1, B-2, B-3, B-4 and B-5, are orders placed with the appellants for the supply of their goods by Agha Khan Hospital, and Medical College Foundation, care of T.C.C.O; Traffalgar House, London. Some of the goods were to be supplied to Agha Khan Hospital, Karachi (Pakistan), and some goods to Hong Kong Teak Wood, Hong Kong. Document D-1 is the invitation to tender issued to the appellants by the Crown Agents of London for Pakistan Railways. All these documents pertain to the period between 1983 to 1984. Document C-1 is dated 5-10-1980. It is an order placed with the appellants for supply of goods to Pakistan Railways.
13. Thus, these documents show, that the main purchasers of the goods from the appellants in Pakistan are P.I.A. Agha Khan Hospital, and Pakistan Railways, and these purchasers have been making purchases from the appellants even after the respondents entered into business. At least these customers of appellants have not been misled or confused by the trading name of the respondents.
14. In words of Mr. Villain the appellants, who are multinational) international company sell throughout world goods worth hundreds and hundreds of million dollars and they have lost count of the parties to whom they have sold the goods. To such a huge company irreparable damage or injury cannot possible be caused by a comparatively small Pakistani company, during the short period which may elapse before their suit is finally decided. It may be pertinent to note, that though the respondents were registered under trade name in 1981, the appellants filed suit in 1984 viz. After three years.
15. In 1982 CLC 2468 a learned Single Judge of this Court in a case under Trade Marks Act, while dealing with the question of grant of temporary injunction in that case opined, "at the stage of grant of temporary injunction, only question whether use of mark was to cause deception or confusion in trade, was to be considered". Here, we have seen that even on their own showing, the use of the trade name by the respondents does not appear to have caused any confusion, but appellants have been receiving orders from Pakistani companies even after alleged use of their mark in the trade name by the respondents.
16. Next we have to consider whether mischief or inconvenience likely to arise from withholding of injunction is greater than by granting it.
17. .We have already seen, that no inconvenience, mischief or damage prima facie appears to have been caused to the appellants during the period from 1981 till this time and it appears unlikely that if the suit is decided within a reasonable time any such inconvenience mischief would be caused to the appellants. However, if the injunction is granted and eventually the suit of the appellants is not decided in their favour, the respondents, who claim to have built their business in their trade name, may be very adversely hit. It is contended, that they are likely to lose their business and goodwill that they may have been able to build up during this period. Thus, grant of injunction is likely to cause more inconvenience to the respondents than its refusal would cause to the appellants.
18. The other case-law-cited by, the learned counsel for the appellants, has already been discussed by the learned Single Judge in the impugned order, and we are not inclined to disagree with him with regard to his views as to the applicability of those cases to the instant case.
19. After careful consideration of the material on the record and the submission of the learned counsels for the parties, we are of the opinion, that appellants have not been able at this stage to show, that the refusal to grant temporary injunction has prima facie caused or is likely to cause any mischief, inconvenience or damage to them. We, therefore, dismiss the appeal and hope, that the learned trial Judge, looking to the nature of the case, would take efforts to dispose of the suit as expeditiously as possible.
' An observation made herein or opinion expressed, is of tentative nature and we are sure, that the learned Single Judge on the Original Side will decide the suit on the evidence produced before him uninfluenced by any observations made herein.