This Miscellaneous Appeal is directed against an order dated y-6-1972 made by the learned First Additional District Judge, 14yderabad, on an application under Order XXXIX, rules 1 and 2, C. P. C.
Granting an interim injunction against the appellants herein, restraining them from infringing or passing off or attempting to infringe or pass off or from enabling others to infringe or pass off "Koh- i-Noor Beedi No. 505" or by use of packages of similar marks, appearance and get up, as those used by the respondent for his "Koh-i-Noor Beedi No. 505".
2. The respondent is the registered proprietor of a trade mark bearing Registration No. 46645, as of 11th of January 1967, in respect of 'Bidi', which mark comprises of a wrapper having several distinguishing features. On the top of the wrapper there is a prominent bracket in which "Koh-i- Noor Beedi' is written in the middle are tile figures 505 in a circle, under which appear the name of the proprietor in a bracket and at the bottom, the name of his concern. All written in English language. On both sides of the figures 505, are circles with the name Koh-i-Noor beedi in Urdu and Sindhi scripts in each of the circles and under these circles appear the name of the respondent's concern in two brackets one in Urdu script and another in Sindhi. The wrapper is printed in red with a white background.
3. On 27th of May 1972 the respondent filed a suit, being Suit No. 50/7.2 in the Court of District Judge, Hyderabad against the appellants for infringement of his aforesaid registered trade mark and sought an interim injunction in terms aforesaid. It is alleged in the plaint that in May 1972, the appellants introduced at Quetta, Bidis of an inferior quality with the name or mark 'Kooh-i-Soor Biti No. 506" in wrappers identical to colour, design and get up as that of the respondent's said registered trade mark. It is further alleged in the plaint that the resemblance of the appellant's "Kouh-i-Soor Biris No. 506" is such that it is either intended or calculated to deceive ordinary persons so as to induce them to purchase the appellants' Biris under the impression or influence that they were purchasing the respondent's Biris "Koh-i-Noor Beedi No. 505", and that the object of the appellant was to deceive the public and to lead, them to believe that in purchasing the inferior quality offered for sale by the appellants, they were buying the genuine Biris manufactured by the respondent.
4. In defence the appellants contended that the respondents bad no case, much less a prima facie case; that their mark was quite distinct and distinguishable by pronunciation as well as by number and that the suit had been filed for ulterior reasons, to avoid competition between two rivals in the same business; that the balance of convenience was in favour of the appellants and injunction if granted, will cause the appellants immeasurable harm.
5. By the impugned order the learned District Judge, granted the interim injunction in terms aforesaid. His findings are that the two marks were in material respects very similar and that the respondent had made out a prima facie case of infringe--ment of his registered trade mark, which is bound to cause loss: to the established business and goodwill of the respondent which may not be adequately measured in terms of money. He further held that the balance of convenience lay in favour of the respondent on account of his established business while the appellants had introduced their goods under the impugned: mark only recently.
6. Mr. S. Y. Khawaia, the learned counsel on behalf of the appellants, has challenged the impugned order on the grounds that the respondent had not made out a prima facie case; that the appellants being prior user were entitled to use their mark under section 25 of the Trade Marks Act that the balance of convenience was in favour of the appellants and finally that his clients' application for registration of their mark was pending before the Registrar, Trade Marks which is the authority entitled to adjudge the matter.
7. On the question of prima facie case, the learned counsel contended that there were material differences between the two marks inasmuch as their written material printed on the two sides of the wrapper used by the appellants was different and so also the name of the product, and the numerical 506. He further contended that the lower Court erred in relying on the test of unwary purchaser laid down in the case of Insaf Soap Factory v. Lever Brothers Port Sunlight Limited (PLD 1959 Lah. 381). This test appears at page 389 and is reproduced hereunder:- "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 case 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 oar attention has been drawn by the 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 as that of the plaintiff."
8. It was argued that the aforesaid test has not been followed or approved by the Supreme Court of Pakistan is the case of Pakistan Soap Factory v. Chittagong Soap Factory (PLD 1970 SC 460). The following passage in the Supreme Court case was relied upon by the learned counsel; "This apparent similarity in the two numerals both visual and phonetical appears to have dominated the mind of he Deputy Registrar as well as the learned Judges of the High Court in their conclusion about the close similarity between the two marks containing the inherent probability of creating a confusion in the public mind with regard to their correct identity. We regret we are unable to share this view because, in the first place, although the numerals on the marks might be considered to constitute a dominant feature of the marks, they do not represent the total markings, some of which, as already stated above, are dissimilar. But if the numerals are accepted as the sole dominant feature to distinguish their respective identity as held both by the Deputy Registrar and the learned Judges of the High Court, it must correspondingly be accepted that the numerals also dominate the mind of the consumers while making their purchases to make sure that they got the correct stuff. A purchaser therefore, whether literate or illiterate, who wants to have a soap cake of the appellant's trade mark "1947" would obviously see to it and be assured that he is getting his "1947" soap and not "1917" of the other concern. The situation would just re opposite in the case of a consumer wanting to have a soap cake of the respondent's "1937" trade mark and there would be no confusion in his mind to mistake it for "1947" unless the confusion is created by the persons who passes the one for the other deliberately by a cheating process. We found considerable force in the argument of Mr. Hamidul Haq Chowdhry, the learned counsel for the appellant, that where commodities are identified by pointed reference to the numerals no confusion can arise in this respect."
9. In the present case a cursory look at the two wrappers will show that except for the difference in name and number, namely, Koh-i-Soor Biri instead of Koh-i-Noor Bidee and 506 instead of 505, the two wrappers are identical so much 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 the mind of unwary purchasers.
10. The contention of the learned counsel that the test laid down in the case of Insaf Soap Factory has not been followed or approved by the Supreme Court is incorrect. In the Supreme Court case this test has not been discussed and would appear that there was no occasion to do so. Therefore, applying the test laid down in the Lahore case, my conclusion is that in this case the respondent established a strong prima facie case of infringement.
11. It was next contended by Mr. Khawaja that the dominant feature of his client's mark was the numerical 506 which was distinguishable and quite distinct from the numerical 505 appearing on the wrapper of the respondent and therefore on reasoning adopted by the Supreme Court of Pakistan, reproduced above, there was no infringement of the respondent's registered trade mark and no occasion for any confusion arising by the use of the two respective marks.
12 In my humble view the Supreme Court case is clearly distinguishable inasmuch as the .Two contending marks in that case were numericals "1947" and "1937" and these numericals were the dominant feature of the marks, while the other markings were dissimilar. Furthermore in the present case the two numercials 505 and 506 appear as one of the several features of the mark and not its sole dominant feature. Even the name Koh-i-Noor adopted by the appellants, apart from the get up and colour scheme of the representation, is very similar compared to the respondent's name Koh-i-Noor. It may further be noted that the words Koh-i-Noor have no meaning and is an invented word. That the appellants should have invented a name very akin or similar to the respondent's name itself shows doubt on the bona fides of the appellants.
Furthermore it is not the case of the appellants that their Birls are identified and known by the purchasers by numericals only.
13. Coming to the second contention of prior user it may at once be noted that no such plea has been taken either in the objections to the application under Order XXXIX, rules 1 and 2, C. P. C. Or in the written statement. At the hearing of the application before the learned District Judge, it appears from the order, that according to the appellants' counsel their contention was that they were using the mark fore la s three or four months.
14. The third contention of Mr. Khawaja was that the balance of convenience was in favour of the appellants inas--much as according to him by granting an injunction his clients' entire business will be brought to a halt and they will be put to serious embarrassment and loss. These apprehensions appear to mw to be, if not unfounded, at least highly exaggerated, in as Much as, the appellants have started manufacturing Bidis under t'-a impugned mark only in May 1972, while they are in this very business since 1961, presumably manufacturing Bidis in one or the other mark different from the mark in question. I have found that the resemblance between the two marks is so striking and the intention to infringe so obvious that the argument of balance of convenience is of no avail to the appellants. In my opinion a very strong prima facie case has been made out by the respondent and it is not open to the appellants to say that they ought to be allowed to continue to take advantage of their own wrong. I am supported in these conclusions by the following observations appearing in the case of Rexona Proprietary Ltd. v. Majid Soap Works (PLD 1956 Sind 1); "The next point is that in such a case the balance of con--venience lies in favour of refusing a temporary injunction on the ground that the plaintiff would not be ruined by refusal of injunction whereas the defendant would be ruined by granting the injunction, and that at this stage one should not anticipate the final result of the case. It is perfectly true in this case that the plaintiff is a subsidiary company of Lever Brothers, and is a wealthy firm, whereas it appears the defendants are comparatively a petty concern. But in this case the evidence of the wrappers themselves is so clear that fraud is intended that the argument of convenience cannot be sustained"
Similar observations appear in another case of Vicks Chemical Co. v. Hopes Cosmetics & Chemical Works (PLD 1957 Lah. 761). These observa--tions are produced hereunder:- "Where, however, the plaintiff has such a strong prima facie case, it appears to me that the balance of convenience recedes into the background. It is hardly open to the defendants to say that they ought to be allowed to continue to take advantage to the question of their own fraud.".
15. 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 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.
I, therefore, find no merits in this appeal and I dismiss it with costs.