1. ' This appeal has been filed challenging orders passed by the Vlth Additional District Judge, Karachi
(East) in Civil Suit No,4/1989 on 31-5-1990.
2. ' The facts giving rise to this appeal are that the present appellants had filed the said suit under section 73 of the Trade Marks Act wherein it has been said that the present appellant is the sole Proprietor of the firm registered with the Chambers of Commerce and Industry since 1985 and also with the Chief Controller of Import and Export, Government of Pakistan. The case of the appellant further is that he had applied for registration of brand name "DOUMOND BRAND RICE" with the respondent No,2, the Registrar of Trade Marks on 11-6-1989 which application duly registered is pending for decision. It is alleged in the plaint that the present respondent No,1 who was working with the present appellant as their agent before termination of services has also applied for the same brand name for its registration with the respondent No,2 on 10-7-1989 and is also using the same brand name and monogram for his business which is identical i,e, export of Basmati Rice. It is pointed out by the plaintiff that such user of the brand name and monogram is done with mala fide intention and would amount to passing off. The plaintiff apprehending such misuse of his brand name filed the suit. In the suit he has also moved an application under Order 39, Rules 1 and 2, C.P.C. Praying that the Court may be pleased to restrain the respondent No,1 or any other person acting under him from using the said brand name and monogram. The present respondent No,1 filed his written statement and also contested the application for grant of injunction. He has contended that he has also applied for registration of the said brand name with the Registrar of Trade Marks and that his application is also duly registered. He has further stated that he has obtained the order for export of rice from one Heera Singh at Singapore and, therefore, he too, has got such authorisation to export the rice under the applied for brand name. He has taken certain legal pleas also. The learned Additional District Judge after hearing the Advocates for the parties has passed the impugned order. Being aggrieved the present appellant has preferred this appeal.
3. ' I have heard the learned counsel for the parties. The learned counsel for the appellant has contended that the order of the learned Additional District Judge is not based on facts as brought on record inasmuch as he has not considered the documents filed by the appellant alongwith his affidavit-inrejoinder which clearly establish the user of the brand name by the appellant showing that he not only had been exporting the rice under this brand name but he has been exporting the same to Heera Singh of Singapore party from which the present respondent No,1 has also obtained the order for supply of such rice. This, according to the learned counsel is a case of passing off.. He has further submitted that the present appellant being a previous established firm and having applied for registration of trade mark earlier is entitled to protection from the Court of his legal right to the user of said brand name As against this Mr. Pertab Rai, Advocate for the respondent No,1 has submitted that it is not the case of the present appellant that he has been using the said brand name or exporting such rice under the said name as nothing has been stated by him in his plaint in this regard or the affidavit filed in support of his application under Order 39, Rules 1 and 2, C.P.C..
4. The learned counsel has further submitted that it is the respondent No,1 who has obtained the order for supply of rice from the said Heera Singh of Singapore.
5. ' It may be observed that while considering an application under Order 39, Rules 1 and 2, C.P.C. The Court is not to conclusively adjudicate upon the points at dispute but has to arrive at a tentative conclusion to see if a prima fade case does exist and that the other two ingriedents i,e, likelihood of irreparable loss being suffered by the plaintiff and balance of convenience are present. In order to reach such conclusions the Court has to take into consideration the pleadings of the parties, affidavits filed by them and the documents, if any, placed on record. It is obvious from the plain reading of the order of the trial Court that the learned Additional District Judge has not taken into consideration the affidavit-in-rejoinder filed by the present appellant and the documents attached therewith. The documents attached to this affidavit-in-rejoinder are the invoices and Bills of Lading showing the export of such rice to said Heera Singh of Singapore. In these circumstances, it cannot be said that the present appellant had not been using the said brand name. This fact would upset the observations of the lower Court to the effect that the present appellant has not produced any material on record to show if he was using such brand name. In the case of Formica Corporation v.
6. Pakistan Formica Ltd. (1989 SCM R 361), their Lordships have laid down the factors which a person seeking to enforce his right to a trade mark has to prove. The said factors are:-- "(i) trading in his own goods with the trade mark;
(ii) a certain amount of popularity which would persuade some one to take advantage of its good reputation or popularity;
(iii) that another person uses a mark;
(iv) identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to goods in respect of which it is registered;
(v) in such manner as to render the use of that mark likely to be taken to import a reference to the proprietor of the mark or import a reference to goods with which a proprietor is connected in the course of a trade."
7. ' The above factors laid down by the Honourable Supreme Court provide that the party seeking to enforce such rights has to prove the same. In the present case prima fade the present appellant is trading in his own goods with the trade mark applied for and has been acing such mark. It is obvious that both the parties have applied for registration of trade mark which is identical in its form, letter and nature and is likely to cause confusion. In these circumstances, I am of the view that the present appellant has established prima fade case. As regards the other two ingredients, the present appellant is certainly likely to suffer irreprarable loss in case such passing off is allowed to continue till the suit is finally decided. I would, therefore, accept this appeal, and set aside the order of the Additional District Judge and grant the application moved by the present appellant in the suit under Order 39, Rules 1 and 2, C.P.C.. However, keeping in view the nature of the suit I would direct that the trial Court shall make efforts to conclude the suit within four (4) months from the date of this order and at no time any adjournment for a period longer than ten (10) days will be granted. However, there will be no order as to costs.