1. SHAFIUR RAHMAN, J. -- Three connected civil appeals, involving the questions of Registration of Trade Mark and the grant of an interim injunction have, by leave of the Court, come up for disposal.
2. Two of these (C.A. 293/86 and C.A. 294/86) are directed against the judgment of the Sind High Court dated 24-12-1985 in two separate appeals under section 76 of the Trade Marks Act, 1940 (hereinafter referred to as the Act) whereby it held that these appeals "should have been filed before the High Court of Lahore which will have jurisdiction in the matter". The memo. Of appeals were returned for presentation before the proper Court. The third appeal (C.A. 63/87) is directed against the order of the Lahore High Court, Rawalpindi Bench dated 28-1-1987 whereby it finally modified the interim injunction order passed by the District Judge, Rawalpindi, on 2-12-1986.
3. The parties involved in the litigation are Messrs TABAQ Restaurant, Lahore (hereinafter referred to as TABAQ Lahore) and Messrs TABAQ Restaurant, Rawalpindi (hereinafter referred to as TABAQ, Rawalpindi).
4. On 26-6-1982 TABAQ, Lahore filed an application before Registrar of Trade Marks, Karachi, for the registration of its Trade Mark in class 30 (Fourth Schedule of Revised 1963 Rules) in respect of "Food Products, Churgha, Steam Roast, Mutton Legs, Quail, Partridge, Seikh Kabab, Full Bukra (Goat) Roast, Tikka, Ice Cream, all cooked Pakistani dishes, Saltish and sweet, Karahi Tikkas and Roasted Chicken". The Trade Mark applied for registration consisted of as its most essential and dominating feature the word TABAQ and the device of a COCK. The claim to the use of this trade mark as from July 1976 was made. On 9-8-1982 an application was moved before the Registrar of Trade Marks seeking change of class from No. 30 to No. 29 which was allowed on deleting the items of Ice Cream and Sweet. The applicant next applied for on 12-8-1982 and obtained on 30-11-1982 certified copy of the pending application for filing a suit against the person who was copying the mark. The applicant claimed a sale of Rs.1.84 million (Approx.) in 1981-82 and to have paid excise duty of Rs.0.27 million (Approx.) on it and to have spent Rs.25,000 over the publicity in respect of the trade mark.
5. This application for registration of the Trade Mark by TABAQ Lahore was advertised under section 15
(1) of the Act. TABAQ, Rawalpindi, filed an objection to it on 25-9-1983 on the ground that it has been carrying on its business in the name of TABAQ since 1982 and had also applied in January 1983 for the registration of its trade mark for the territories of Rawalpindi and Islamabad Divisions.
6. The request made in the objection petition was expressed somewhat confusingly as follows:- "In the circumstances mentioned above and others and in the exercise of the discretionary powers vested with the Registrar of Trade Marks, is requested to refuse to register the trade mark of Application No.77309 of Class-29 for territory extending Lahore Division and its neighbourhood, wherein TABAQ of Lahore carry on their business. In no case, this mark should be allowed registration covering territorial limits of Rawalpindi and Islamabad divisions where opponents carry on their well-established business."
7. The application of TABAQ, Rawalpindi, for registration of the Trade Mark was opposed by TABAQ, Lahore. In this manner, the two applications for registration of the Trade Mark and an objection to each came up and were disposed of by the Deputy Registrar of Trade Marks Karachi on 3-6-1985.
8. The application filed by TABAQ, Lahore for registration of the Trade Mark (No.77309 in Class 29) and its objection (No.143/83) to registration of Trade Mark filed by TABAQ, Rawalpindi were allowed. The application of TABAQ Rawalpindi for registration of its Trade Make (No. 78615 in Class 29) and its objection (No. 22/84) to the registration of the Trade Mark of TABAQ Lahore were dismissed.
9. TABAQ, Rawalpindi, filed two appeals, one against the rejection of its application for registration of Trade Mark, and the other against the dismissal of its objection to registration of Trade Mark of TABAQ Lahore.
10. While these proceedings for registration of the trade marks were pending before the Registrar, Trade Marks, TABAQ Lahore, filed a civil suit on 16-12-1982 before District Judge, Lahore, claiming a permanent injunction and rendition of accounts, against TABAQ Rawalpindi. TABAQ Lahore made the following averments/claims in the plaint- "(i) The plaintiffs' products are supplied by them under their own trade mark 'Tabaq' which enjoys distinctive identity, recognition and reputation all over the country."
11. "(ii) The plaintiffs submitted requisite application to the Trade Mark registry, Government of Pakistan in the month of June 1982 for the registration of their trade mark referred to above in respect of which a certificate for legal purposes dated 30-11-1982 has been issued to the plaintiffs."
12. "(iii) The plaintiffs have started planning for setting up branches in the principal towns of the country, first choice being of Rawalpindi where the plaintiffs have already selected the area for the purpose and the arrangements are in progress for starting a branch of 'Tabaq in the very near future."
13. "(iv)'Tabaq' is an invented word of the plaintiffs which is quite distinctive - and relatable exclusively to the products of the plaintiffs and its use by the defendants for similar business and products is highly mala fide, deceitful, dishonest and illegal and is the worst example of passing off."
14. "(v) That the infringement of the trade mark and damage to the business and goodwill of the plaintiffs has been caused by the defendants at Lahore where the limited products have been brought and consumed under the deception that the same were the products of the plaintiffs and the same were found to be of low quality and where the publicity of the limited trade mark and products made by the defendants through the Press and other media, was read and witnessed by the people."
15. Before the District Judge, Lahore the contest remained confined to the territorial Jurisdiction of that Court raised as a preliminary objection. The issue framed was "whether that Court has the jurisdiction to adjudicate the matter in dispute". The District Judge, Lahore, on 20-1-1983 recorded the finding that it had no jurisdiction in the matter and returned the plaint under Order VII, Rule 10, C.P.C. For presentation before the appropriate Court in Rawalpindi. TABAQ, Lahore preferred an appeal against this order in the High Court but later withdrew the same with a view to re-institute the matter at Rawalpindi. It was in fact instituted before the District Judge, Rawalpindi, on 17-6- 1984. There was also an application made for a temporary injunction restraining TABAQ, Rawalpindi from carrying on its business in that name and description. This application was, however not pressed and was withdrawn on 13-12-1984 and thereafter the proceedings were got adjourned on the request of both the parties that the applications for registration of their Trade Mark were pending before the concerned authority and the matter was expected to be decided in a few weeks' time. A fresh application for grant of temporary injunction was made on 1-12-1985 which was granted by the District Judge, Rawalpindi, on 2-12-1986. The operative part of the order was as follows- "Keeping in view the above discussion, the application is accepted and temporary stay order issued to restrain the respondents from passing off their products and to use the name of Tabaq till the final disposal of the suit."
16. An appeal was filed and on 10-1-1987 the High Court suspended that order and finally on 28-1-1987 modified it as hereunder--- "Accordingly, stay order issued on 10-1-1987 whereby the operation of the impugned order was suspended, is hereby confirmed. Defendant-appellant shall furnish security in the sum of Rs. One lac to the satisfaction of the trial Judge undertaking that in case of plaintiff's success they shall compensate them for the loss they may have suffered meanwhile. Security shall be filed within one month. In default, stay order shall be deemed to have been vacated."
17. While the proceedings were pending before the District Judge, Rawalpindi, a fresh application was filed under- Order VII, Rule 10, C.P. C. On 3-11-1985 by the TABAQ Rawalpindi requesting the Court to return the plaint for presentation in the proper Court as according to it, under section 20 (2) of the Act the case of alleged passing off was to be filed before the Court subordinate to that of the District Judge.
18. It must be pointed out in order to make the history complete that TABAQ Lahore filed a similar civil suit before the District Judge, Islamabad, on 19-8-1984. In that suit also, TABAQ Lahore sought a temporary injunction restraining TABAQ Rawalpindi from opening its business in that name in Islamabad but it was refused on 27-8-1984 and no further remedy was sought against it by TABAQ Lahore.
19. When the two appeals filed by TABAQ Rawalpindi in the High Court of Sind against the registration of the trade mark and the dismissal of its objection came up for hearing, an objection was taken with regard to the forum of appeal in view of section 76 of the Act on the ground that District Court at Rawalpindi was already seized of the suit concerning the trade mark in question before the High Court. This objection was upheld by the High Court as will appear from the following operative order passed in the two appeals on 26-12-1985- "In these circumstances, it is clear that the suit filed at Rawalpindi concerns the trade mark claimed by the respondent No.1 and in respect of which the dispute before the Registrar Trade Mark for registration was pending. Now during the pendency of this suit the appellant has filed these appeals in this Court. In view of section 76 the appeal should have been filed before the High Court of Lahore which will have jurisdiction in the matter. The appeals are, therefore, returned for presentation before the proper Court."
20. Leave to appeal was granted to examine the correctness of the view taken by the High Court of Sind as it was contended that the suit pending in the District Court at Rawalpindi was in fact a suit relating to right protected under section 20 (2) of the Act and a suit on that subject had to be instituted in the civil Court of the lowest grade and not the District Court.
21. On that view, it was contended that the proviso to subsection (1) of section 76 was not attracted to the appeals filed in the High Court of Sind.
22. Leave to appeal was also granted by converting the petition into an appeal to examine as to whether the interim order of the District Judge passed in suit was modified by the High Court on 28-1-1987 on correct principles.
23. Mr. Abid Hasan Minto, Advocate, the learned counsel for TABAQ, Rawalpindi, in the two appeals relating to trade marks, contended that no right existed in trade mark and none was recognised by the law earlier to the Act enacted in 1940. The statutory protection given to the trade mark and matters incidental or ancillary thereto were codified and the act takes care of every situation.
24. Under section 20 subsection (1) of the Act proceedings could be instituted in respect of trade mark only if it was a registered trade mark or, being unregistered trade mark had been in use continuously since before the 25th day of February, 1937 and application for its registration had been refused and a certificate to that effect was possessed. According to the learned counsel, Chapter 4 of the Act deals with the effect of registration and the very opening words of section 20, namely, 'No action for infringement of unregistered trade mark' are indicative of the extent and the nature of the right claimable in trade mark particularly the unregistered trade mark. Further, according to the learned counsel, subsection (2) saves right of action against any person for passing off goods and the remedies in respect thereof. The learned counsel heavily relics on the decision in Ram Krishna Bhagat v. Firm Haji Jonabally AIR (35) 1948 Cal. 321 to contend that civil Courts of the lowest grade will be competent to try such suit and there is no provision or requirement that such a suit for passing off under section 20(2) should be filed in the District Court.
25. According to the learned counsel for the appellant, section 73 of the Act is of no avail because the cases of infringement of a trade mark are confined to cases of registered trade mark and the expression 'otherwise relating to any right in a trade mark' may refer to unregistered trade mark but in view of the preceding provision in subsection (1) of section 20 it must be held confined to a particular category of unregistered trade mark continuously in use since 1937 and refused registration for which a certificate is held. As the claim made by the respondent did not fall in either of the categories, he could not resort to the exclusive jurisdiction possessed by the District Court under section 73 for redressing his grievance. Section 76 of the Act, according to the learned counsel for the appellant and proviso to subsection (1) could be available to a party only if proceedings were competently filed before the District Court or the High Court and concerned the 'trade mark in question'. As the respondent's case was not concerning a trade mark which was the subject-matter of registration but relating to passing off referred to in subsection (2) of section 20, such a suit even if pending, could not alter the forum of the appeal on the strength of proviso to subsection (1) of section 76.
26. Mr. S. M. Zafar, Advocate, the learned counsel for the respondent, in these two appeals has seriously disputed the very first ground taken up by the learned counsel for the appellant, namely, that in Common Law and prior to the Act there existed no right of trade mark. He has referred to section 54 of the Specific Relief Act which clearly mentions that for the purposes of section 54 a trade mark is property. Illustration (w) to section 54 of the Specific Relief Act gives the following example:- "(w) A improperly uses the trade mark of B. B may obtain an injunction to restrain the user, provided that B's use of the trade mark is honest."
27. Besides, according to the learned counsel sections 478 to 480 of the Pakistan Penal Code further recognise and give effect to this right. Section 478 defines the trade mark and includes within its ambit a trade mark registered under the Act. Section 480, P.P.C. Makes it an offence to use false trade mark and section 482 makes that offence punishable with a term of imprisonment which may extend to one year or with fine or with both. According to the learned counsel for the respondent, historically and even after the Act, the proceedings concerning trade mark could be of four types. The first and second categories comprise trade marks registered under the Act and infringement thereof and the second of unregistered trade marks continuously in use, registration refused and certificate given and infringement thereof. The third category relate to cases of infringement of a trade mark coupled with passing off the goods and fourthly the mere passing off the goods referred to in subsection (2) of section 20. The learned counsel supported his contention by reference to the property rights recognized in trade mark before the Act, the provisions of the Act and to the categorisation made under section 105 of the Trade and Merchandise Marks Act, 1958 of India. He also referred to two editions of Venkateswaran---s Book on Trade Marks one printed before the Act and a later edition after the Act, to support the view that Act of 1940 created no new rights and obligations but recognised those already existing giving them statutory form and formalising the remedies and proofs thereof. He also referred copiously to the plaint, recitals whereof have already been reproduced in this judgment to demonstrate that the claim inextricably related to trade mark while allegation of passing off was made against the appellant.
28. As a suit had been instituted after application for registration had been filed and as the trade mark of the respondent had been subsequently registered, a right had come to vest by the making of the application and subsequent registration of the trade mark in terms of the law of trade marks as contained in Kerly's Law of Trade Marks and Trade Name. Finally, it was contended by the learned counsel for the respondent that throughout the Act, the Legislature has deliberately used are words 'registered trade mark' wherever it wanted to distinguish it from an unregistered trade mark, as is in section 73 of the Act the words used the 'infringement of a trade mark or otherwise relating to any right in a trade mark'. The Legislative intent cannot be defeated by restricting the meaning of a trade mark herein to a registered trade mark alone and it is impermissible on any principle known to interpretation of statutes to so limit the meaning. Similarly, the expression 'any suit or other proceeding concerning the trade mark in question' cannot be restricted to only the registered trade mark. It can as well relate to an unregistered trade mark.
29. "(1) 'trade mark' means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person."
30. The expression 'registered trade mark' has been separately defined in clause (j) (ibid) as follows:-- "(j) 'registered trade mark' means a trade mark which is actually on the register."
31. Section 20 dealing with the effects of registration of a trade mark makes provisions as hereunder: - -- "20-(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark unless such trade mark has been continuously in use since before the 25th day of February, 1937, by such person or by a predecessor-in-title of his and unless an application for its registration, made within five years from the commencement of this Act, has been refused; and the Registrar shall, on application in the prescribed manner, grant a certificate that such application has been refused.
(2) Nothing in this Act shall be deemed to effect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof."
32. Section 25 also requires examination as it protects vested rights of which care has been taken in subsection (2) of section 20. It reads as follows:- "25. Nothing in this Act, shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor-in-title of his has continuously used that trade mark from a date prior-
(a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor-in-title of his, or
(b) to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor-in---title of his, whichever is the earlier, or to object (on such use being proved) to registration of that identical or nearly resembling trade mark in respect of those goods under subsection (2) of section 10."
33. Section 73 the language of which has been the subject-matter of long debate is enacted in the following words:- "73. No suit for the infringement of a trade mark or otherwise relating to any right in a trade mark shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit."
34. Finally, proviso to section 76 subsection (1) and the material portion read as hereunder:- "76.-(1) Save as otherwise expressly provided in this Act, an appeal shall lie, within the period prescribed by the Central Government, from any decision of the Registrar under this Act Dr the rules made thereunder to the High Court having jurisdiction; Provided that if any suit or other proceeding concerning the trade mark in question is pending before a High Court or a District Court, the appeal shall be made to that High Court or, as the case may be, to the High Court within whose jurisdiction that District Court is situated."
35. The right in the trade mark existed even prior to the Act and that it was property and the rights in it remained protected admits of no serious doubt. Salmond in his Jurisprudence treats the trade mark has been treated as property and right in it as ownership, the property being incorporeal. This will appear from the following statement respecting such a right:-- "He who by his skill and labour establishes a business acquires thereby an interest in the goodwill of it, that is to say, in the established disposition of customers to resort to him. To this goodwill he has an exclusive right which is violated by any one who seeks to make use of it for his own advantages, as by falsely representing to the public that he is himself carrying on the business in question.
36. Special forms of this right of commercial goodwill are rights to trade names and trade marks. Every man has an exclusive right to the name under which he carries on business or sells his goods--to this extent at least that no one is at liberty to use that name for the purpose of deceiving the public and so injuring the owner of it. He has a similar right to the exclusive use of the marks which he impresses upon his goods, and by which they are known and identified in the market as his."
37. Similarly, section 54 of the Specific Relief Act enacted in the year 1877 contains an express provision that a trade mark is a property and invasion of the right therein may call for a perpetual injunction.
38. The Penal Code as pointed out by the learned counsel for the respondent makes provisions in sections 478 to 486 with regard to protection of such a property right and punishing deliberate violations of it.
39. "1243. Unregistered marks can only be directly protected by an action for infringement when they were used before the 13th August, 1875, and have been refused registration. The owner of such mark may still bring an action for passing off."
40. "1326. The only right the English law recognises in any name or mark other than a registered trade mark is the right of a person who uses such name or mark to prevent others using the same so as to deceive the public into thinking that the business carried on by such persons and the goods sold by them are his. In certain cases, however, this may amount to a practical prohibition of others using the name or mark. 1327. The cases of this class may be divided into those involving (1) the misuse of the trading name of a person or firm; (2) the misuse of the trade name of goods; and (3) the passing off of goods by means of get-up. In all these cases there is really but one question, namely whether the defendant has knowingly done that which would pass off other goods or another business as and for the goods or business of the plaintiff. In many cases the evidence can be conveniently divided into two separate heads namely, the plaintiff's title to a name or get-up and the defendant's infringement of that title; but these are not really separate issues, but classes of facts bearing on the one issue given above. The absence of any hard and fast line between the two branches of the plaintiff's case renders most of the so-called rules referred to hereafter-either as to what is adistinctive name or mark, or as to what constitutes infringement--merely secondary criteria for the guidance of the Courts, of use doubtless in the majority of cases, but liable to modification in view of special circumstances, the plaintiff's cause of action depending on the combined effect of the distinctiveness of the indicia on which he, relies and the nature of the defendant's acts. There is, therefore, an important distinction between these cases and those relating to trade marks, although of course both sprang from the same source, since in the case of trademarksthe question of the plaintiff's title to the mark has been stereotyped by legislation, and has, therefore, to be treated separately. Further, in the case of trade marks, the question of the defendant's knowledge does not arise except on the question, of what relief should be granted.
41. Withregard to passing off, the following observation contained at monograph 1348 at page 765 in the same volume is important:-- "The right to bring an action for passing off is founded on the same principles as those relating to actions for the misuse of trade names, and, in fact, actions for misuse of the trade names of goods are only particular instances of such actions. The most usual form of action is for the use of a distinctive mark or get-up of goods. As the various grounds on which the right of action is based are only different instances of the same cause of action, the plaintiff may rely on some or all of them, and there are many cases where the use of a trade name not in itself distinctive, together with imitation of get-up, or carelessness or fraud in supplying articles, or in the manner of trading, or the use of a label not in fact infringing the plaintiff's registered trade mark, have established a case of passing off."
42. There is a clearer exposition of the manner in which trade mark is protected, in Harvard's Law Review, Volume 68 (1954-1955) on the subject of Development In the Law - Trade Marks And Unfair Competition, in the following words:--- "Basically a trade mark owner receives protection against use of his mark by another in such a way as is likely to lead consumers to associate the others' goods with the trade mark owner. This protection against trade mark infringement, that is, against sale of another's goods as those of the trade mark owner by use of the owner's mark, may be described as protection against 'passing off'.
43. Passing however, also includes another method by which one person's goods are made to appear as ' they originated from another, whether or not a trade mark is involved. Thus, one could pass of his goods as those of a competitor by imitating just the appearance or shape of the competitor's product, because the consumer might be deceived as to the source of the product. Protection against passing off in this broader sense is afforded by the tort action of unfair competition."
44. Trade names, is important--- "It has frequently been declared that the registration of a trade mark does not create or confer any additional substantive rights therein; the effect of registration statutes, ordinarily is merely to recognize rights which have already been acquired by appropriation, and to provide additional remedies for the protection thereof."
45. The following recital in para. 961 of Halbury's Laws of England (Second Edition Vol.32) is relevant in the context:---- "In the case of an action for infringement of a registered mark, the plaintiff need only assert his registered title and allege infringement. When, however, he is bringing a claim for passing off, whether alone or in conjunction with a claim for infringement, he must allege the facts on which the claim to distinctiveness of the name or the mark is based, and this applies also where he is complaining of confusion likely to be caused by the trading name of some other person. If he alleges fraud in the choice of such name, he must plead it specifically. An action for passing off lies against the manufacturer who sends out goods liable to deceive, or to his knowledge to be used to deceive, and/or against the retailer. A defendant is further liable for the misuse of a trade name or other act of passing off by his servants acting within the scope of their employment."
46. On the basis of various decisions, Venkateswaran in his book Trade Marks Act, 1940 (1945 edition) has summarised the position of U.K. In the following words:--- "Therefore, the owner of an unregistered trade mark could not, after the passing of the Act of 1875, sue for an injunction to restrain the infringement of his mark. His right to relief was, however, not completely barred. An injunction could still be obtained at common law if he succeeded, in establishing that the defendant's act has actually resulted or was likely to result in passing off. The above provision has been re-enacted in all the subsequent U.K. Acts."
47. The same author while commenting on section 20 subsection (2) and in the light of similar provision contained in section 45 of the U.K. Act 1905, remarks as follows:- "As a matter of precaution it is usual for the plaintiff in an action or infringement to combine a claim for relief against passing off also, so that even if he fails in the statutory action for any reason, for instance, on the ground that his registration is not valid, or that it does not extend to the goods in question, or that the mark is ordered to be expunged from the Register, he may still rely on the fact that the defendant's wrongful act has resulted or is likely to result in passing off the defendant's goods as and for the plaintiff's. It follows from the above discussion that what is described as) passing off action may be a passing off action simpliciter or a case of infringement of trade mark coupled with passing off, the trade mark) being unregistered or registered.
48. What subsection (2) of section 20 protects is the rights of "action against any person for passing off goods as the goods of another person or the remedies in respect thereof". Section 73 which provides a forum as that of the District Court does not impinge on any right so vested because the right in a forum is merely a procedural right and can get affected retrospectively as held in the case of Adnan Afzal v. Capt. Sher Afzal PLD 1969 SC 187.
49. Section 73 of the Act talks also of a suit "otherwise relating to, any right in a trade mark". The word "otherwise" is of comprehensive significance and it is cut down in its scope and meaning only when it, is followed by an enumeration when it receives ejus dem generis construction. There being no enumeration, no restriction can be imported. Similarly, the word "relating to" brings in comprehensiveness and wider import. The-meaning given by the learned counsel for the appellant has the effect of making this expression (otherwise relating to) redundant because according to him the opening words govern both the registered trade mark as well as unregistered trade mark described in section 20(1) of the Act. In a passing off action which is based on the infringement of an unregistered trade mark section 73 would clearly) be applicable and it is to such passing off cases that Venkateswaran in his treatise refers when he says "the words "otherwise relating to any right in a trade mark" suggest that the section applies also to actions for passing off".
50. Such a position of the law has now been expressly recognized in section 105 of the Indian Trade and Merchandise Marks Act, 1958 in the following words:- "105. Suit for infringement, etc., to be instituted before District Court.--No Suit--
(a) .........................
(b) .........................
(c) for passing off arising out of the use by the defendants of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered; shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit."
51. The distinguishing feature of the decision in Ram Krishna Bhagat and others is that in that case, there was no allegation in the plaint of the infringement of the trade mark and no right in the trade mark was the subject-matter of investigation. It was a case of passing off simpliciter. It was a case of counterfeit and deceit in the matter of name and label. In the case before us the various portions of the plaint already reproduced clearly indicate that a right in the trade mark was claimed and infringement was alleged alongwith passing off. This position was further considered in Tak Chand Fillumal v. Western India Match Co. AIR 1955 All. 404 and the following observations are relevant:- "We are, therefore, of opinion that the passing off actions which are not affected by the provisions of the Trade Marks Act of 1940 are those actions which are unrelated to the use of the aggrieved person's trade mark. If they are related to it those suits will necessarily require the determination of the question whether there had been an infringement of the trade mark and therefore, would be affected by the provisions of section 73, Trade Marks Act."
52. We have not referred to those decisions which concern provision of the Indian Trade and Merchandise Marks Act, 1958, nor to those which related to infringement of registered trade mark coupled with passing off. However, one case requires mention and it is of Sunshine Soap and Candle Works AIR 1951 Punj. 332. The claim by an unregistered trade mark/name owner was of passing off by name/get-up etc. And instituted in the Court of subordinate Judge First Class.
53. Notwithstanding that it was held to be a case of passing off while concluding the judgment the following observations were made:- "Giving the case my very careful consideration, I find that the finding of the trial Court on issue No.3 is not open to challenge and that the name and style of the defendant's soap and its wrappers contravene, the trade mark or trade name of the plaintiff's soap."
54. While deciding about the forum the Court observed as follows:- "There is no allegation in the plaint of the trade mark being registered, or an application for its registration having been refused. The plaintiff's action is a common law action of 'passing off' which existed and does exist independently of the provisions of the Trade Marks Act, 1940, and the right of action in regard to it has been expressly saved by section 20(2) of the Act.. The case, therefore, falls to be decided without reference to the provisions of the Trade Marks Act V of 1940."
55. No reference was made to the wide words used in section 73 of the Act or the nature of the rights in the forum. It was possibly to correct such a view that clause (c) of section 105 of the Indian Act was enacted in such express words.
56. It is, therefore, clear that the District Judge's Court was the) appropriate Court for instituting the claim filed by TABAQ, Lahore and the High Court of Sind correctly decided the question of forum of` appeal. The two appeals directed against it (C.A. 293 of 1986 and C.A. 294 of 1986) are dismissed with costs.
57. When the question of grant of interim injunction came up before the District Judge, the trade mark of TABAQ, Lahore stood registered. For that reason, if for none else, there was a prima facie case, balance of inconvenience and likelihood of irreparable injury, all in favour of TABAQ, Lahore. The interim order passed by the District Judge was eminently a legal, just and proper order. Hence the appeal (C . A . 63 of 1987) is allowed with costs, the order passed by the High Court on '28-1-1987 is set aside and the interim order passed by the District Judge on 2-12-1986 is restored.
58. Civil Appeals Nos. 63 of 1987 and 293 and 294 of 1986 NASIM HASAN SHAH, J.--I agree with the conclusions reached by my learned brother and may perhaps usefully add that in this case the background was that while the suit filed by Tabaq, Lahore against Tabaq, Rawalpindi for a permanent injunction to restrain the latter from "passing off" their products under the trade name of Tabaq, Lahore and further seeking a decree for rendition of accounts was pending before the District Judge, Rawalpindi; at the same time the applications, which both the parties had submitted to the Registrar, Trade Marks, Karachi, for getting their respective Trade marks registered, were also under consideration. On 3-6-1985, the Deputy Registrar of Trade Marks, Karachi, accepted the application filed by Tabaq, Lahore for registration of its trade mark but rejected that of Tabaq, Rawalpindi. The last-mentioned order by the Deputy Registrar was challenged in appeal before the Sind High Court which dismissed it on the ground that since the suit of the respondent (Tabaq, Lahore) for an injunction against the appellant (Tabaq, Rawalpindi) was pending in the District Court, Rawalpindi, the appeals brought against the grant of registration of Tabaq, Lahore and rejection of its application for registration were incompetent because on account of the snit pending before the District Judge, Rawalpindi; the said appeals were competent only before the Lahore High Court (within whose jurisdiction the Court of the District Judge, Rawalpindi, was situated). In this connection the Sind High Court referred to the terms of the proviso to section 76 of the Trade Marks Act, 1940 which provided:--- "76.--(1) Save as otherwise expressly provided in this Act, an appeal shall lie from any decision of the Registrar under this Act to the High Court having jurisdiction: Provided that if any suit or other proceeding concerning the trade mark in question is pending before a High Court or a District Court, the appeal shall be made to that High Court or, as the case may be, to the High Court within whose jurisdiction that District Court is situated."
59. It was held that on account of the provision to section 76 the appeals would lie to the Lahore High Court. The question agitated before this Court has been whether the Sind High Court was right in holding that the appeals were not competent before it.
60. Under section 73 of the Trade Marks Act:- "No suit for the infringement of a trade mark on otherwise relating to any right in a trade mark shall be instituted in any Court inferior to a District Judge having jurisdiction ''to try the suit."
61. But the case of the appellant was that the suit filed before the District Judge, Rawalpindi was not for the infringement of the trade mark or otherwise regarding to any right for a trade mark but was only a suit for the grant of a permanent injunction to retrain the respondent from "passing off" their products as those of the respondent. Such a suit was not covered by the provisions of section 73 of the Act and that such a suit could be instituted, a position statutorily recognised by subsection (2) of section 20 which provides:- "20-(1) .........................................
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof."
62. As regards the proviso to section 76 is concerned it was submitted that it dealt with the actions concerning infringement of registered trade marks under the provisions of the Trade Marks Act and not "passing off" actions which were outside the scope of the Trade Marks Act. Since the suit filed by the respondents was not a suit visualised under section 73 of the Act, the provisions of the proviso to section 76 were not attracted. Accordingly, the suit of the respondents could not, in fact, have been filed before the District Court and it ought to have been filed before the Court of first instance, namely, in the Court of a Civil Judge. Merely because the respondent's suit was pending before the District Judge, Rawalpindi was of no consequence as the District Judge was not competent to entertain it.
63. It is well-settled that "passing off" actions are designed to protect the property in the goods on account of its reputation and not in the trade mark and that "passing off" actions are essentially actions in tort and are filed in contradiction to suits filed for infringements of trade marks, where invasion tales place in one's rights in the property, for instance when some one imitates the goods of another. Hence if the suit filed by the respondent was a suit simpliciter for "passing off" and no infringement of the trade mark was involved therein, the suit undoubtedly lay before the Court of first instance, namely, the Court of a Civil Judge. But where a suit involves the infringement of a trade mark, it is also clear that such a suit must be filed before the District Judge-: The question is what is the position if in a suit both the infringement of an unregistered trade mark is alleged coupled with allegations of "passing off"?
64. Now it cannot be doubted that an unregistered trade mark also confers a right in property. This is evident from a perusal of section 54 of the Specific Relief Act, 1877 as is evident from the illustration
(w) to section 54 of the Specific Relief Act:- "(w) A improperly uses the trade mark of B. B may obtain an injunction to restrain the user, provided that B's use of the trade mark is honest."
65. Hence a suit is competent for any invasion of such a property right. Furthermore, where the infringement of a trade mark is alleged it must be instituted before the District Judge on account of the provisions of section 73 notwithstanding that these allegation are coupled with the allegations of "passing off".
66. 1, therefore, agree that Civil Appeals Nos. 293 and 294 of 1986 are liable to be dismissed, with costs.
67. I also agree with my learned brother that Civil Appeal No.63 of 1987 instituted by Tabaq, Lahore against the order of the Lahore High Court dated 28-1-1987 refusing the temporary injunction must also be allowed because after the trade mark of Tabaq, Lahore stood registered viz on 3-6-1985 it was entitled to the issuance of the temporary injunction to restrain Tabaq, Rawalpindi from continuing his business under the same name viz. "Tabaq" and the order of the High Court, Lahore dated 28-1-1987 refusing to grant the temporary injunction cannot be sustained.