1. ' In their suit for permanent injunction, mandatory injunction, accounts and damages, plaintiffs Messrs Chas A. Mendoza have filed this application (C.MA. No,93/93) for issue of temporary injunction restraining the defendants from manufacturing, selling, offering for sale and advertising dental cream, under their infringing trade mark "Medicare". Defendants were also sought to be restrained from using the same get up, or label, wrapper which was being used by the plaintiffs in respect of their similar product under Trade Mark "Medicam".
2. ' Case of the plaintiffs was that they were carrying on with manufacture and sale of Dental Cream, for which they are using since 1989 "Medicam" an invented word as their trade mark. Plaintiffs have been marketing dental cream "Medicam" in an attractive packet having sky blue as dominant colour with blue and red colour scheme, design and get up. On the publicity of said goods under said mark, the plaintiffs have spent crores of rupees, as claimed. For protecting their valuable proprietary rights in the said mark, which has acquired great popularity, goodwill and reputation, the plaintiffs got it registered with Trade Marks Registry on 7-12-1992. It was added that the said mark due to its peculiar colour scheme, design and get up; had become distincale of said product (dental cream) whose sales rose from over thirteen million in 1989 to over thirty-six million in 1991 and then fell to twenty-eight million in 1992. Plaintiffs alleged that the defendants Nos.1 and 2 jointly and severally and collusively started manufacturing and selling in the market their low and cheap quality dental cream (tooth paste) in confusingly similar type of packets bearing trade mark "Medicare". Such packets were said to be having same colour scheme, design and get up, as those used by the plaintiffs for their goods viz. Tooth paste being marketed under mark "Medicam".
3. Defendants Nos.1 and 2 were supplying their inferior quality tooth paste in confusingly similar packets to the defendant No3 for onward sale in the market. It is alleged that due to close similarity of infringing mark and packet, with mark and packet of the plaintiffs, there was great confusion and deception and this was causing irreparable damage to the plaintiffs' well-established goodwill and reputation. Over and above this, the defendant No,1 moved the Trade Mark Registry for registration of Mark "Medicare" which would infringe mark of the plaintiffs. It was in these circumstances that the plaintiffs seek issue of interim injunction in the aforesaid terms, to be effective till decision of this suit. The application was contested by the defendants who Med counter-affidavit of Syed Tausif Ahmed defendant No,1. Case of the defendants was that they had adopted the Trade Mark "Medicare" for their product since 1979 and were continuously marketing their product under said trade mark. It was stated in the counter-affidavit that Mark "Medicare" was different from Mark "Medicam" phonetically and visually. Defendants took plea that colour scheme, design and get up of their trade mark was quite different and distinguishable, from the trade mark of the plaintiffs and as such there was no question of deception or confusion being caused to the purchasers. Opposing the grant of interim injuncton defendants averred that they were marketing their tooth paste and had established in market since 1979 whereas the plaintiff had adopted Trade Mark "Medicare" in 1989. It was also stated in the counter-affidavit that the real dispute was between the plaintiffs and Messrs English Laboratories (Pak.) who were manufacturing tooth paste under the name and style of "Medipac".
4. ' Mr. Khalil Kizilbash, learned counsel for the plaintiffs went on to argue that the plaintiffs were suffering a loss of one lac per day, due to use of the Trade Mark "Medicare" by the defendants.
5. Referring to section 21 of the Trade Marks Act, learned counsel for the plaintiffs argued that the plaintiff had exclusive right to use of the Trade Mark "Medicam" in relation to their goods. It was added that right of the plaintiffs to use their registered trade mark, shall be deemed to have been infringed by the defendants who were manufacturing and marketing their products under Trade Mark "Medicare" which was confusingly similar to the trade mark being used by the plaintiffs.
6. Learned counsel for the plaintiffs showed to the Court the wrapper being used by the plaintiffs and the wrapper being used by the defendants and argued that their colour scheme, get up and design are same with only difference of using four letters "Care" instead of three letters "Cam" after the word "Medi". This according to learned counsel was infringement of the registered trade mark, in name of the plaintiffs.
7. ' Learned counsel for the plaintiff cited following cases, some of which were decided by English Courts:--
(i) Capsuloid Company Ld. (23 RPC 782), Hinks Wells & Co. (33 RPC 281),
(iii) Bale and Church IA. v. Suttan Persons and Suiton and Astrah Products (51 RPC 129),
(iv) JC & J Field Ld. v. Wagel Syndicate Ld. (17 RPC 266),
(v) Pinto v. Trott (8 RPC 173),
(vi) Application by Massachusetts Saw Works (35 RPC 137),
(vii) De Cordova and others v. Vick Chemical Coy (68 RPC 103), (viii)William Bailey (Birmingham) Ltd. v. A.C. Gilbert Co. (52 RPC 136),
(ix) Aristoc Ltd. v. Rysta IA. (62 RPC 65),
(x) New Way Packaged Products Ld. v. Lucking (S) IA. (1960 RPC 147);
(xi) Monoj Plastic India v. Messrs Bhola Plastic Industries (AIR. 1984 Delhi 441),
(xii) Jamia Industries Ltd. v. Caltex Oil (Pak.) Ltd. And another PLD 1984 SC 8, (xiii)Muhammad Fazil v. Messrs Ashfaq Brothers, Karachi 1981 CLC 1519),
(xiv) Abdul Jabar and another v. Ahmed Jan PLD 1973 Kar. 289,
(xv) Muhammad Yacioob Lasani Engineering Conipany v. Punjab Engineering Company and others 1992 CLC 2036,
(xvi) Johnson & Johnson v. Tariq Multipurpose Industries Ltd. (Miscellaneous Application No,1596 of 1974 in Suit No,196 of 1974, decided on 741-1974).
8. ' Mr. Abrar Hassan, .,earned counsel for the defendants Nos.1 and 2 opposed the application and argued that the defendants Nos.1 and 2 were using Trade Mark "Medica" prior to use of Trade Mark "Medicam" by the plaintiffs. In this respect he referred to an agreement dated 1-10-1979 copy Annexure "A" filed with the counter-affidavit showing that "Medicare" (tooth paste) was used in 1979 when Syed Tausif Ahmad Zaidi (defendant No,1) entered into an agreement with Syed Israr Hussain Naqvi, for marketing of the products inter alia "Medicare" dental cream (tooth paste). Case of the defendants Nos.1 and 2 was that they were owners of Trade Mark "Medicare" having applied in name of Benca Industries (Pakistan) National for its registration. Registrar was said to have observed that Benca could not be registered. Hence the Trade Mark "Medicare" was sought to be reps' tered. Proprietor of "Medicare" was mentioned to be Sibaca International (Pvt.) Ltd. Learned counsel for the defendants put emphasis on the point that the trade mark of the defendants Nos.1 and 2 namely Medicare, was materially different from plaintiffs' trade mark viz. "Medicam" phonetically and visually. It was next argued that the tooth pastes are used by 5% of the people who are educated, while 95% of the people do not use tooth pastes and that the educated purchasers can differentiate between Medicare and Medicam. In support learned counsel for the defendants cited the cases of:
(i) Abdul Wahid v. Haji Abdul Rahim and another PLD 1973 SC 104,
(ii) Lakson Tobacco Company Ltd. v. Assistant Registrar of Trade Marks-II 1988 M LD 594,
(iii) Premier Tobacco Industries Ltd. v. The Registrar of Trade Marks and others 1987 M LD 2752,
(iv) Premier Tobacco Industries Ltd. v. Assistant Registrar of Trade Marks-I 1992 M LD 1001,
(v) Messrs Glaxo Laboratories Ltd. v. Registrar of Trade Marks PLD 1985 Kar.
9. 630.
10. ' Authorities cited on behalf of the plaintiffs require to be discussed first. In the matter of Capsuloid Company IA. (23 RPC 782) reps' tration of "Tablone" was refused in presence of Mark 'Tabloid'. In case of Bale and Church IA. v. Sutton Parsons and Suiton and Astrah Products (51 RPC 129), the proprietors of Trade Mark `Kleenoff' sued proprietor of `Kleenup' and the view taken was that resemblance between the two marks was calculated to deceive and injunction was granted against infringement but not against passing off. In the case of J.C. And J. Field Ld. v. Wagel Syndicate Ld. (17 RPC 266) Proprietor of Mark `Savonor sued proprietor of Mark `Savoline' for infringement of trade Mark and passing of and plea of the defendant that `Savona was not an invented word was rejected and injunction was granted in favour of the plaintiffs. In the case of links Wells & Co. (33 RPC 281) registration of Mark `Mallagole' for pens was refused on the ground that the name `Mallat' was well known in connection with the pens for which Mark Mallagole' was sought to be registered and that proposed mark was calculated to deceive.
11. ' In the case of Jamia Industries Ltd. PLD 1984 SC 8 it was held that while comparing the two marks, emphasis is to be laid on the leading features and totality of the two marks should be seen to ascertain whether they are similar to each and whether dominant feature of registered trade mark had been incorporated in competing trade mark, there is not only possibility but probability of deception and confusion. In the case of Muhammad Fazil 1981 CLC 1519 the proprietor of Mark EVERREADY 999' sued proprietor of Trade Mark TVERLIFE 990' for being restrained from using the Trade Mark EVERLIFE 990' Registration of EVERLIFE 990 was also opposed on the ground that the trade mark proposed to be registered is identical and confusingly and deceptively similar to the Trade Mark EVERREADY 999'. The matter came by way of appeal before the learned Single Judge of this Court who found the two trade marks very closely similar in size, in colour `scheme', design and print and in every thing except that one was written EVERREADY 999' and the other was written EVERLIFE 990' and that both marks were closely similar and can cause confusion and deception in the mind of unwary purchasers. In the case of Abdul Jabar and another PLD 1973 Kar. 289 the proprietor of Koh-i-Noor Beedi 505 sued proprietor of Mark `Koh-i-Soor Bidi 506' and sought interim injunction restraining the latter from infringing or passing off or attempting to infringe or pass off or from enabling others to infringe or pass off `Kohinoor Beedi No,505' by use of packages of similar marks, appearance and get up as those used by the plaintiff for his `Kohinoor Beedi No,505'. The trial Court's order granting the injunction was challenged in this Court in an appeal. Deciding the appeal a learned Single Judge of this Court observed as below:- "In the present case a cursory look at the two wrappers will show that except for the difference in name and number namely `Kohisoor Biri' instead of `Kohinoor Bidee' and 506 instead of 505, the two wrappers are identical so much so 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 prospects, which is likely to deceive or cause confusion in the mind of unwary purchasers."
12. ' In the case of Muhammad Yaqoob Lasani Engineering Company 1992 CLC 2036 proprietor of trade mark King Kong in Urdu for chaff cutter, blades of chaff cutters, sugarcane crushers, wheat thrashers etc. Falling in Class 7 applied for registration of the same. The registration of King Kong as a trade mark, was opposed by proprietor of three registered trade marks and one unregistered but pending registration trade mark, with word 'King' being common, in all the trade marks about agricultural implements in Class 7. The appeal against refusal by the Registrar to register 'King Kong' as a trade mark, was heard and dismissed by a learned Single Judge of this Court, who observed that proprietor of 'King Kong' has yet to manufacture the goods which the objector was already producing for a long time and had attained a reputation of their own particularly with the word 'King' which was attached to their products. Learned Judge further observed that since word 'King' is an essential feature in the trade marks of the opponent and the same word is also used in the applicant's marks sought to be registered, there is likelihood of causing deception and confusion in the mind of the public if the trade mark sought to be registered is registered. It was observed that one can easily be deceived to believe that the goods with mark proposed to be registered, belonged to the same family to which the marks of defendant No,1/opponent belong. In the case of Johnson & Johnson (Miscellaneous Application No,1596 of 1974 in Suit No,196/74, decided on 22-11-1974) proprietor of Mark `Modess' in respect of sanitary towels sued proprietor of Mark `Montress' for same goods, on the ground that packets of the latter trade mark resembled those of the former trade mark, in general get up, design and colour scheme which must inevitably lead to confusion, deception or passing off. A learned Single Judge of this Court granted application for interim injunction filed by proprietor of Modess against proprietor of Montress. In the case of Messrs Manoj Plastic India AIR 1984 Delhi 441 both the parties were dealing in identical mirrors under the same Trade Mark 'TONY' and the Court granted temporary injunction in favour of that party which was prior user. In the case of Jamia Industries Ltd. PLD 1984 SC 8 Honourable Supreme Court of Pakistan agreed with a learned Judge of the then Sindh and Balochistan High Court that in making comparison of the two marks, emphasis should be laid on their leading features and in doing so, it should be determined as to what are the leading characteristics of each of the competing trade marks. Agreement was also expressed with an observation that though ordinarily totality of the two marks should be seen to ascertain whether they are similar to each other or distinctive from each other, but where a dominant feature of the registered trade mark is incorporated in the competing trade mark, then there is not only possibility but also probability of deception and confusion being caused. In the cited case the Supreme Court of Pakistan agreed with the Deputy Registrar, Trade Marks and with the appellate order passed by a learned High Court Judge, that the applied mark containing the word `Jamia' with the device of a five-pointed star inside a crescent came within the mischief and the prohibition contained in section 8(a) and section 10(1) of the Trade Marks Act in view of the two already registered marks of opponent Caltex Oil (Pakistan) Ltd. Containing the device of star prominently and the word 'Caltex' in one and 'Texaco' in the other. On examining the mark applied for and the marks already registered the Supreme Court of Pakistan observed that the similarities were so striking that an unwary purchaser would be exposed to reasonable probabilities of confusion and deception that the goods of the applied mark had their origin from the goods of the registered marks. Cases cited at the Bar show that mark 'Tablone' was refused registration in presence of mark 'Tabloid', that Mark `Kleenup' was not allowed to function in presence of Mark `Kleenoff, that Mark 'Savoline' was not allowed to function in presence of Mark `Savonof, that Mark 'Mallagole' was refused registration in presence of Mark 'MaRat', that Mark 'Everlife 990' was refused registration in presence of Mark `Everready 999' that Mark `Kohisoor Bidi 506' was not allowed to function in presence of `Kohinoor Beedi 505' and that Mark 'King Kong' was refused registration in presence of three registered trade marks using common word 'King' with other words, that mark `Montress' was not allowed to function in presence of Mark `Models'. The basic principle to be observed in determining whether a case falls under sections 8(a) and 10(1) of Trade Marks Act or not is given in the case of Abdul Wahid PLD 1973 SC 104 in the following words:-- "Words having a common suffix but if earlier portion of these words is different, and if they do not conflict, they are held to be distinctive."
13. ' In said case reference was made to the case of Facsimile Letter Printing Co. Ltd. v. Facsimile Typewriting Company ((1912) 29 RPC 557) where it was held that when two words have the same suffix, the earlier portion of the words is the natural and necessary mark of distinction. In case of Abdul Wahid reference was also made to the case of London Lubricants Ltd.'s Application (1925) 42 RPC 264 where it was observed as below:-- "The tendency of persons using the English language to slur the terminations of words also has the effect necessarily that the beginning of words is accentuated in comparison, and in my judgment, the first syllable of a word is, as a rule, far most important for the purpose of distinction."
14. ' The cases cited on behalf of the defendant do not support him. Case of Abdul Wahid PLD 1973 SC 104 already discussed, supports case of the plaintiff rather than that of the defendants when it says that it is the first syllable of a mark mostly which decides the question of conflict and likelihood of deception and confusion. In the instant case six letters of the plaintiffs mark and of the defendant's mark are common. In the case of Lakson Tobacco Company Ltd 1988 M LD 594, the view taken was that there was no plausible reason with the Registrar to reject application for registration of Mark "Red Band" without advertising the same and without receiving opposition from other owners of the registered trade marks as there was a number of registered trade marks most of which had prefix "Red". In the case of M/s. Glaxo Laboratories Limited PLD 1985 Kar. 630 it was held that registration of a trade mark as "Vita Milk" should not have been refused just because the word "Vita" has been used in the mark or that the mark contains suffix "Milk". Word "Vita" does not always indicate that a product whose trade name includes word "Vita" contains vitamins, as further held. In the case of Premier Tobacco Industries Ltd 1987 M LD 2752 order of the Registrar refusing registration of Mark "Hingston" in presence of Mark "Princeton" was set aside by a learned Single Judge of this Court who observed that the words may have common suffixes but if they are distinguishable by their earlier parts, they cannot be held to be similar. This view was based on the observations made in the case of Abdul Wahid PLD 1973 SC 104. In the present case the two marks are not distinguishable by their earlier parts and hence they cannot be held to be dissimilar in light of the views expressed in the case of Abdul Wahid and Premier Tobacco Industries Ltd. In another case of Premier Tobacco Industries Ltd. 1992 M LD 1001 order of the Registrar refusing registration of mark 'CONCORD' in presence of registered mark "CONCORIE" was set aside on the ground that "CONCORD" and "CONCORIE" taken as a whole are dissimilar visually and phonetically and hence the Assistant Registrar was not justified in summarily refusing registration of "CONCORD". None of the cited cases helps the defendants.
15. The wrapper used by the plaintiffs has been compared with the wrapper being used by the defendants. There are many similarities in the two wrappers. Both are having light blue colour in the background with dark blue colour at three places where letters of the trade mark are written.
16. The get up of the two wrappers is confusingly similar. Of course an educated purchaser may not be confused in taking goods of the defendants to be of the plaintiffs but an uneducated person can take the goods of the defendants to be of the plaintiffs. Moreover use of English language and Urdu language in the two wrappers is identical. The trade mark has been written in capital letters in English twice in both the wrappers while the trade mark has been written in Urdu once in both the wrappers.
17. In the circumstances the plaintiffs have made out a prima facie case and the balance of convenience also falls on them because if the sale under trade mark of the defendants is not checked, they would suffer irreparable loss. Consequently this application stands accepted and the interim injunction as prayed is ordered to be issued against the defendants. It may however be noted that none of the observations made in this order would prejudice the case of any party, as these observations are of tentative nature.