SYED ABDUL REHMAN, J- This is an application under Order 39 Rules 1 and 2 C.P.C, praying to restrain the Defendant from using the word/mark/name "The Cricketer" for their Monthly English Sports Magazine.
2. The case of the plaintiff is that he is the owner of the monthly English sports magazine published under the name "The Cricketer" for the last 18 years, the first issue having appeared in April, 1972. Lt has become very popular and has acquired a wide circulation in Pakistan. According to A.B.C.
Reports its circulation is 10342 for the period January to June, 1983. In March, 1990 the Defendants brought out an English monthly sports magazine under the mark/name The Cricketer" in substantially the same style and manner as that of the Plaintiff and thereby caused deception to the readers and heavy loss to the Plaintiff, which amounts to passing OF. Hence this suit. Alongwith the suit an application for interim injunction has been filed, which is supported by an affidavit of the Plaintiff.
3. In reply the Defendants have filed Counter Affidavits. It is the case of the Defendants that "The Cricketer International" is being published continuously since 1921 by Sporting Magazines and Publishers Ltd., with registered officer at Buch Hanger, Ashurst, Kint TN 3, who are the defs Principals.
It is the largest Cricket Magazine in the world. The said magazine has wide circulation throughout Pakistan for the last 30 years and much before the Plaintiffs magazine "The Cricketer" came to be published. It is on the contrary the Plaintiff, who had copied the name anc! Style of the magazine published by the Defendants' principal. The publishers of the English .Magazine "The Cricketer International" have permitted the Defendants to reproduce their magazine in Pakistan. Accordingly they have started to publish the same after filing declaration as required by law.
4. I have heard Mr. Muneer A. Malik learned Advocate for the Plaintiff and Mr. Habibullah Samo, learned counsel for the Defendants. It was contended by Mr. Muneer A. Malik that Section-20 (2) of the Trade Marks Act 1940 preserve the right of action of the holder of an unregistered trade mark for passing OF the goods bearing his trade mark as goods of such person. Reliance was placed by him on 1987 S.C.M.R. 1090 / 1102, Tabaq Restaurant vs. Tabaq Restaurant. In this ruling Shafi-ur- Rehman J. Of the Supreme Court after referring to Halsbury's Laws of England high-lighted the difference, that in the case for an action of infringement of a registered trade mark that the plaintiff need only to assert his registration and allege infringement. In bringing a claim for passing of whether alone or together with a claim for infringement of trade mark, he must prove that his mark was distinctive and had been continuously in user and the Defendant had copied the same in order to deceive the customers. There can be no cavil with the proposition of law propounded in this ruling. Mr. Muneer A. Malik next cited P.L.D. 1962 W.P. Kar. 355, S.M. Taufiq Vs. National Biscuit Co., and 1988 C.L.C. 880, Culett Peabody & Co. Inc. Vs. Assistant Registrar. In these two rulings the ratio decidendi was that for deciding the question of registration, by the user in Pakistan was relevant and not the user of the trade-mark out-side Pakistan. In P.L.D. 1975 Kar. 486, Ferozuddin vs. Mohammad Shafi was also cited wherein interim injunction was granted to restrain the passing OF even when the application for registration of trade-mark was still pending. Finally the English case of Globe Legance B.V. Vs. Sarkissian reported in No. 19 (1974) R.P.C. P-603 was cited in which it was held that goodwill in U.K. Was sufficient to support an action for passing OF and injunction was granted and the goodwill outside U.K. Was not considered.
5. As against this Mr. Habibullah Samo learned Advocate for the Defendants has submitted that it is on the contrary the plaintiff who has copied and imitated the mark of world wide sports magazine "The Cricketer" which was being published since 1921. He has produced numerous issues of the magazine since before the publication of the plaintiff's magazine and has contended that the Plaintiff having himself imitated a magazine of international repute, has no right to complain against the Defendants.
6. I have given thoughtful consideration to the contentions raised by the learned Advocates for the parties. Admittedly this is a case for passing OF and not that of infringement of a trade-mark. It is also admitted that "The Cricketer International' is an old magazine of world-wide repute and circulation and is being published since 1921. The disputed factor in this case is only as to whether this international magazine was not in wide circulation in Pakistan and the Plaintiffs' magazine "The Cricketer" Pakistan was in such a wide circulation in Pakistan that it had obtained a goodwill in the sports community of Pakistan. On this point the plaintiff has filed his affidavit which is rebutted by the Counter Affidavit of Defendant No. 1, which is supported by affidavit of Salahuddin Ishaq Defendant No.3, and Mohammad Qassim Usmani, the Secretary, Karachi Cricket Association to the effect that "The Cricketer International" published from London is in wide circulation in Karachi and is available on the local book-stals There is no denying to the fact that the plaintiff has copied the name and style of the reputed sports magazine The Cricketer International". Since I am unable to persuade myself to agree with the contention of the plaintiff that he has a wide circulation and goodwill in Pakistan or that vis-a-vis international magazine "The Cricketer, or the latter does not have goodwill or wide circulation in Pakistan. I am, therefore, of the clear view that the plaintiff does not have a prima facie case. The Defendants having obtained the permission to publish "The Cricketer International" in Pakistan must have done so at enormous cost and the balance of inconvenience is, therefore, in their favour. They would also suffer irreparable loss and not the Plaintiff. The Plaintiff, who has already earned sufficient money during the last 18 years when no objection was taken to their illegal act of passing c^f by the principal of the Defendants. I, therefore, dismiss the application for interim injunction. The observations made in this order are of tentative nature and should not be taken to prejudice the plaintiffs" case.