' In this suit for declaration, damages and accounts, plaintiff National Detergents Limited have moved this application (C.MA.
3997.89) for interim injunction restraining defendant Mod International (Pvt.) Limited from manufacturing, selling, offering for sale, or publicizing their product by infringing plaintiff's Trade Mark "Flair" and from passing off or attempting to pass off their gob& as those of the plaintiff by manufacturing, selling or offering for sale, advertising or otherwise dealing with their products under the trade mark "Flare" or any other mark resembling to it.
2. Case of the plaintiff, as set out in the plaint was, that it was proprietor of registered trade mark "Flair" in respect of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations soaps perfumery, cosmetics, hair lotion, shampoo, dentifvices, tooth powder and tooth paste vide certificate of registration dated 5-8-1986. Plaintiff is also proprietor of same trade mark "Flair" in respect of Phenyle, insecticides, disinfectants pesticides and fungicides, vide certificate of registration dated 14-10-1986. It was alleged by the plaintiff that the defendant was manufacturing, selling, offering for sale its goods under the trade mark "Flare" which was identical and similar to plaintiffs registered trade mark "Flair". It was alleged that the similarity of the trade mark of the products of the parties, was not accidental or inadvertent but it was result of deliberate and fraudulent attempt on the part of the defendant to deceive the public and to make wrongful profits out of the reputation and goodwill acquired by products of the plaintiff, being marked under the trade name "Flair". It was further stated that the two trade marks were phonetically similar and they were identical and they were similarly written in Urdu. It was alleged that sale of products by the defendant under the trade name "Flare" was gross and flagrant infringement of plaintiffs trade mark and it was attempt to pass off goods of the defendant as those of the plaintiffs and that unwary purchaser was likely to be deceived and confused inasmuch as, he would consider products of the defendant to be those of the plaintiff. It was alleged that use of the trade name "Flare" by the defendant, was a deliberate and fradulent attempt to deceive the public and to make wrongful profits out of the reputation and goodwill enjoyed by the..plaintiff and its products. It was added that the plaintiff has suffered damage to its reputation and goodwill due to acts of the defendant in marketing its products under the name "Flare". It was added that actual damage suffered by the plaintiff cannot be assessed accurately, but his claim for damages was to the tune of Rs.1,00,500.
3. The application for interim injunction was vehemently opposed by the defendant who admitted that its products were being sold under the trade name "Flare". Defendant claimed to have applied for the manufacturing licence under the trade name "Flare" for his products viz. "Flare" Hair Cream lotion, Flare Oil of Ulay, Flare Hand and Body Facial Cream and Flare Pomad. Production of the said products by the defendant was said to have commenced from 16-3-1989 with permission of Central Excise and Land Custom Department. First clearance of the goods produced by the defendant took place on 25-3-1989 and marketing of the products commenced from 27-3-1989, as further stated, Defendant took plea that it never knew if the plaintiff was marketing its products, under the trade name "Flair". That the defendant did not come across any of the products produced by the plaintiff under the trade name "Flair" and did not see any publicity of "Flair" by the plaintiff, through press or otherwise. It was denied if trade mark of the defendant was confusingly similar and identical to trade mark of the plaintiff, who had not publicised, their trade mark. The advertisement by the defendant in respect of its products under the trade name "Flare" appeared in the press and it was denied if the defendant had infringed trade mark of the plaintiff. Defendant admitted having received legal notice dated 20-4-1989 from the plaintiff objecting to use of the Trade Mark "Flare" and added that on receiving such notice the defendant's trade mark was changed from "Flare" to "French Flare". Defendant claimed to have applied for registration of the trade name "French Flare" for their products. Defendant claimed to have specified style of word "Flare", while no specific design was specified by the plaintiff for the word "Flair". The dictionary meaning of the two words was said to be materially different from each other. It was added that the plaintiff was not manufacturing or marketing cosmetics or any other item under its trade name "Flair" and as such the defendant had no source to know that "Flair" was a registered trade mark of the plaintiff. It was denied if the defendant had made any wrongful profit out of the reputation and goodwill of the plaintiff. Remaining allegations were denied.
' I have heard Mr. Saleem Ghulam Hussain, Advocate for the plaintiff and Mr. Jamil, Advocate for the defendant.
' Mr. Saleem Ghulam Hussain, learned counsel for the plaintiff referred to section 21 of the Trade Marks Act and argued that registered owner of a trade mark has exclusive right to use of the trade mark in respect of his goods covered by the trade mark, and such right shall be deemed to have been infringed by any person, who uses a mark identicaLwith it or resembling it. Reference was also made to section 23 of the Trade Marks Act and to para. 14-04 of Kerly's Law of Trade Marks (12th Edition). Learned counsel for the plaintiff further argued that a legal notice dated 20-4-1989 copy Annexure "E" was sent to the defendant to refrain from infringing registered trade mark of the plaintiff. That the defendant in his reply Copy Annexure D-35 dated 29-4-1989 denied having committed any act of piracy on business of the plaintiff and alleged that the plaintiff had played fraud by adopting Trade Mark "Flair" of which he was not registered owner. It was next argued that the defendant had applied for registration of the Trade Mark "French Flare" on 5 6-1989 vide application copy Annexure D-28 after receiving legal notice dated 20-4-1989. It was further argued that purpose of the registration would be frustrated if same trade mark was used by the defendant with spelling difference. It was also argued that addition of the word "French" to the word "Flare" was of no consequence. The learned counsel cited the cases of (i) M/s. Tabaq Restaurant v. M/s. Tabaq Restaurant 1987 SCMR 1090, (ii) Cecil De Cordova and others v. Vick Chemical Company PLD 1951 PC 108, (iii) Baume and Co. Ltd. v. Moore (A.H.) Ltd. 1958 RPC 226, (iv) Jamia Industries Ltd. v. Caltex Oil (Pak.) Ltd. and another PLD 1984 SC 8, (v) Burney's Industrial & Commercial Co. Ltd. v.
Muhammad Ismail 1982 CLC 2468, (vi) M/s. KS. Sulemanji Esmailji & Sons v. M/s. M. Sulemanji & Company Ltd. 1986 CLC 775, (vii) Crescent Pencils Limited v. Indus Pencil Industries Limited 1989 CLC 2005, (viii) Mian Taj Din and another v. Tahir Shabir 1988 MLD 460, (ix) Aluminium Products Ltd., Chittagong v. Registrar of Trade Marks, Chittagong PLD 1958 Dacca 481 and (x) Ruston and Hornby Ltd. v. Zamindara Engineering Company AIR 1970 SC 1649.
' Mr. Muhammad Jamil, learned counsel for the defendant referred to para. 2 of the plaint and argued that the trade mark registered in name of the plaintiff was the word "Flail' without any monogram device. That the certificates of the registration dated 27-5-1984 did not show that any monogram or device was also registered. It was emphatically argued that the wrapper filed in Court as Annexure "C" by the plaintiff and used by defendant, did not resemble the wrapper Annexure P.5 used by the plaintiff. It was next argued that the plaintiff had no prima facie case and that the plaintiff had not produced any document to show that the defendant was marketing the products under the name "Flair". It was further argued that the defendant had publicized its products under the trade name 'French Flare" as per the photo copies of the publications Annexures D-17 to D-26. It was added that defendant had moved the applications (copies Annexures D-28 and D-30) for registration of the trade name "French Flare". It was further argued that there was no question of unwary purchaser being deceived on taking products of the defendant to be those of the plaintiff and that there was no passing off. In support learned counsel for the defendant cited the cases of (i) Coca-Cola Company of Canada Ltd. v. Pepsi Cola Company of Canada Limited AIR 1942 PC 40, (ii) Abdul Wahid v. Haji Abdul Rahim and another PLD 1973 SC 104, (iii) M/s. N.V. Phillips! Gloeilam-penfabrieken of Eindhoven and another v. Electric Lamp Manufacturers of Pakistan Limited PLD 1962 Kar. 690, (iv) Haji Abdul Gani Haji Ibrahim and others v.
Registrar of Trade Marks and another PLD 1961 Kar. 158,.(v) Rexona Proprietary Limited v. Majid Soap Works PLD 1956 Sindh 1, (vi) M/s. Lipton Limited v. Mst. Frontier Camellia PLD 1954 Sindh 124, (vii)
Master Thread Ball Works v. HA. Karim PLD 1969 Dacca 734, (viii) M/s. Burney's Industrial and Commercial Co. Ltd. v. M/s. Rahman Match Works PLD 1983 Kar. 357, (ix) Midland Electric Manufacturing Company Ltd. v. Registrar of Trade Marks and another 1987 CLC 1539, (x) Hamdard National Foundation (Pakistan) v. E.I.Du. Pont De Nemours & Company U.S.A. and another 1987 CLC 1935, (xi) M/s. Dada Soap Factory Ltd. v. M/s. Crescent Pak Industries Ltd. and another 1987 MLD 1256 and (xii) Premier Tobacco Industries Limited v. Registrar of Trade Marks and others 1987 MLD 2752.
7. At the outset it is to be noted that for seeking interim injunction, the plaintiff has only to make out that he has a good prima facie case meaning thereby that a serious question is to be tried in the suit, as observed in the case of Mian Muhammad Latif v. Province of West Pakistan PLD 1970 SC 180 cited on behalf of the defendant. It was also observed that a plaintiff seeking interim injunction has further to make out that in the event of success if the injunction is not issued he would suffer irreparable injury. Reliance was also placed by defendant's counsel on the case of Shahzada Muhammad Umar Baig v. Sultan Muhammad Khan and another PLD 1970 SC 139 where it was held that the Court has to seriously consider whether it would be right to issue an injunction to a public department and thereby disturb its working. This authority would not apply, because no injunction is sought against any public department. On the same point reliance was also placed 'on the case of Muhammad Yaqoob v. Health Officer, Municipal Committee, Hyderabad and another 1973 SCMR 134 where interim injunction was refused because ,the licence sought to be made operative had expired by efflux of time during pendency of the suit. No such point is involved in the present case.
8. Plaintiff has placed on record photo copies of two certificates dated 27-5-1984 showing that he was owner of the Trade Mark "Flair" which he was using for bleaching preparations and other substances for laundry use etc. and for phynile, insecticides, pesticides etc. Plaintiff placed on record a wrapper (Annexure P.5) which was being used in respect of his product of talcum powder being sold under the trade name "Flair". Plaintiff also produced two wrappers (Annexure C) under which the defendant was producing and selling his products vanishing cream and cold cream under the trade name "Flare". Plaintiff's action against the defendant is not only for alleged infringement of trade mark, but also for alleged passing off. In order to determine whether there is infringement of a registered trade mark, it is to be seen whether the defendant is using a mark which is a colourable imitation of the plaintiff's registered trade mark. If it is established that the defendant is using the trade mark which is colourable limitation of plaintiff's registered trade mark, that the statutory protection to the plaintiff is absolute in the sense that once a trade mark is shown to offend the user of it, the same cannot escape by showing that by something outside the actual mark itself the defendant has distinguished his goods from those of the registered proprietor. In this respect it was held in the case of Ruston and Hornby Limited v. Zamindara Engineering Company AIR 1970 SC 1649 cited on behalf of the plaintiff, that in an action for infringement where the defendant's trade mark is identical with the plaintiff's trade mark, the Court will not inquire whether the infringement is such as is likely to deceive or cause the confusion. In the case of Cecill De Cordova and others PLD 1951 PC 108 it was held that a mark is infringed by another trader if even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features and that identification of an essential feature depends partly on the Court's judgment and partly on the evidence that is placed before the Court. It was further observed that a trade mark is undoubtedly a visual device, but ascertainment of an essential feature is not to be by ocular test alone. In the cited case one party was producing its product under its registered trade name "Vapo Rub" while the other party was selling their ointment under the designation of "Karsote Vapour Rub" and it was held that mere addition of word "Karsote" was insufficient in itself to dissolve the confusion that is bound to arise. In the case of Jamia Industries Ltd. PLD 1984 SC 8 the Deputy Registrar, Trade Marks refused to register a trade mark containing the word "Jamia" with the device of a five pointed star inside a crescent in class 4 for lubricating oils, on the ground that Caltex Oil (Pakistan) Limited was proprietor of two trade marks one with word Caltex and a star device and the other mark containing the device of star and letter "T" and the words "Texaco". Such order was maintained, not only by the then High Court of Sindh and Balochistan, but also by the Supreme Court of Pakistan. It was observed by the Supreme Court of Pakistan that the Deputy Registrar and the High Court while rejecting the registration proceeded on well recognised principles governing the question whether the proposed mark resembled the respondent's marks already on the register, so as to be likely to deceive or cause confusion. In the case of Burney's Industrial and Commercial Company Limited 1982 CLC 2468 the appellant was manufacturing and selling wax matches under the registered trade mark "Shama" with particular colour scheme also registered, while the respondent was manufacturing and selling wax matches under the mark "Minar" with colour scheme similar to the one used by the appellant, and in the circumstances interim injunction was granted restraining use of the mark of Minar with the device and colour scheme as shown in the labels of holder of registered trade mark.
9. Now I proceed to discuss the authorities cited on behalf of the defendant on the point of infringement of trade mark. In the case of Coca Cola Company of Canada Limited AIR 1942 PC 40 it was held that where there was allegation of infringement of trade mark the only question to be decided was, whether the mark which the defendant used, infringes the plaintiffs registered mark, without considering the fact if the defendant had acquired the goodwill of any business. In the cited case it was held that the trade mark used by the defendant viz. Pepsi Cola would not lead a person with an average recollection to confuse it with plaintiffs registered trade mark "Coca Cola".
In the case of Abdul Wahid's PLD 1973 SC 104 it was held that where words have a common suffix with earlier portion different and if they do not conflict, they are distinctive. In cited case the Trade Mark Registry at Karachi had registered the Trade Mark "Daigon" in respect of the sewing machines when the word "Saigon" was already on the register of trade marks and it was held that the Trade Mark Registry had rightly registered the mark "Daigon". In the case of M/s.N. V. Phillips' Gloeilam- penfabrieken of Endhoven and another PLD 1962 Kar. 690 the defendant stamped on the goods, manufactured trade mark of the plaintiff and the goods were sold by the plaintiff and it was held that defendant was no user of the trade mark. Cited case does not apply to the present case. In the case of Haji Abdul Gani Haji Ibrahim and others PLD 1961 Kar. 158 the view taken was that a Registrar of Trade Marks cannot put conditions curtailing rights acquired by owner of a trade mark by long use of its trading style. The question of infringement of trade mark did not arise in the cited case. In the case of Rexona Proprietary Limited PLD 1956 Sindh a Division Bench of the then Sindh Chief Court held that in a case of infringement of trade mark, obviously there would be resemblances and differences and the question must be decided by contrasting the striking resemblances with the striking differences, and where the conclusion is that one is intended to pass off for the other, there is a case for an interim injunction. In the case of M/s. Lipton Ltd. PLD 1954 Sindh 124 it was held that when there was allegation of infringement of trade mark, the resemblance between respective labels and monograms must be such as might deceive an average cautious purchaser. In the case of M/s. Burney's Industrial and Commercial Company Ltd.
PLD 1983 Kar. 357 it was held that the Court dealing with an infringement action considers the similarities and dissimilarities between the registered trade mark and the offending mark but the decision of the Court does not depend upon the number of similarities and dissimilarities. It was also held that there might be a case where dissimilarities may outnumber the similarities but on account of the general get-up, colour scheme, design and other features of the two marks, the Court may rightly reach the conclusion that the offending mark is. likely to deceive the unwary purchaser. It was further held that it was not defence for action for infringement of the trade mark, if the defendant moves an application for registration of the mark being used by him and if his mark comes within the mischief of section 21 of the Trade Marks Act, because a person who was to imitate the registered mark of another person, would have a very convenient way of escape, by filing an application for registration of the trade mark. In the case of Midland Electric Manufacturing Company Limited 1987 CLC 1539 the trade marks "Rem" "Mem" were held to be not having confusing similarity. In the case of Hamdard National Foundation (Pakistan) 1987 CLC 1935 it was held that Trade Mark "Neoba" was not similar to the Trade Mark "Nubain" because phonetically they were dissimilar in spite of having letter "N" as their common prefix and that products bearing mark "Neoba" were not likely to be deceived by or confused with products bearing mark "Nubain". In the case of M/s. Dada Soap Factory Limited 1987 MLD 1256 an application moved for registration of Trade Mark "Al-Burq" in respect of soaps, claiming user since 1949, was opposed by registered proprietor of mark "Burg" in respect of soaps, whose mark was registered in 1968. It was held that proprietor of mark "Al--Burg" had established prior and honest use of his trade mark and he was entitled to protection of section 10(2) of the Trade Marks Act read with section 25 of said Act and that the Registrar was empowered to allow registration of identical trade marks if he found honest concurrent user of the same, and he had power to impose condition while ordering registration. In the case of Premier Tobacco Industries Limited 1987 MLD 2752 a learned Single Judge of this Court took view that there was no visual or phonetic similarity between the Trade Mark "Princeton" and the Trade Mark "Hingston" although the goods covered by both the trade marks were cigarettes, but the buyers who give preference to a particular brand, were not likely to be deceived by another brand, merely because the same has somewhat similar name. In case of Master Thread Ball Works PLD 1969 Dacca 734 the view taken was that the Trade Mark "Master" was dissimilar both visually and phonetically with Trade Mark "Master Tailor" and that there was no likelihood of confusion or deception and consequently orders of the Deputy Registrar, Trade Marks registering trade marks namely "Master Tailor" and "Master Tailor Thread Brand" were maintained.
10. Section 21(1) of the Trade Marks Act reads as below:-- "Subject to the provisions of sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing provision, that shall be deemed to be infringed by any person who, not being the proprietor of the trade mark of a registered user thereof using by way of the permitted use, uses a mark 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 any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either--
(a) as being used as a trade mark; or
(b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade."
' Section 23 of the said Act says that in all legal proceedings relating to a trade mark registered under the said Act, the fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trade mark. In his treatise on Law of Trade Marks (12th Edition) Kerly has mentioned importance of a registered trade mark in the following words:-- "The right which is thus given by a valid registration is the right to exclude others from the use of the mark.,In general, registration gives no right to use a mark which would not already exist without registration."
' At another place the same author has remarked as below:-- "In the case of the specific acts which are deemed to be infringements, the right extends to prevent the use of a mark so nearly resembling the registered mark as to be likely to deceive or cause confusion.
' In actions for infringement the comparison is to be made between the mark as registered, taking into account any disclaimer, and the defendant's mark as it appears in actual use. Considerations which may arise in consequence of the particular way in which the plaintiffs mark may have been used, e.g. additions or variations, though relevant in a claim for passing off, will not generally be relevant when the only question is infringement: it is the marks themselves that must be compared: ' At about the same place it is further observed as below: "Similarly, additions by the defendant, though they might serve to prevent actual deception, will not save the defendant if the registered mark or a mark too nearly resembling it is used."
11. In his treatise on Trade Marks (3rd Edition) Narayanan has made the following observations:-- "In infringement proceedings probability of confusion has to be considered only when the defendant's mark is used in relation to the actual goods in respect of which the plaintiff's mark is registered. No question of actual user of the mark by the plaintiff arises."
12. This is not a case of refusal of registration of a trade mark or of cancellation of registration of a trade mark. This is a case between two private. parties, one of which is armed with a registered trade mark namely "Flair" while the other is using an unregistered trade mark namely "Flare", which was subsequently named "French Flare". Although there is marked difference between the words "Flair" and "Flare" in so far as their dictionary meaning is concerned but pronunciation of both the words is same. In the wrappers used by the defendant the word "Flare" is written in the same style as the word "Flair" printed on the wrappers used by the plaintiff. More particularly first two letters viz. "F' and "L" are written in a similar way. Like the plaintiff, the defendant has put three stars near the letter "F". There is phonetic and visual similarity between the words "Flair" and "Flare". Since the trade mark used by the defendant is identical with the trade mark used by the plaintiff it is not necessary to examine the point, as to whether the infringement of plaintiffs registered trade mark is such as is likely to deceive or confuse the unwary purchaser or purchaser with average intelligence, in view of the observations made in the case of Ruston and Hornby Ltd. AIR 1970 SC 1649. Facts on the record prima Tice show that the plaintiff's registered trade mark has been infringed and as such the questions whether the defendant had acquired the goodwill of his business under the trade name "Flare" or "French Flare" or whether the infringement is such as is likely to deceive or cause confusion, are irrelevant as per the view taken in the case of Coca Cola Company of Canada Ltd. v.
Pepsi Cola Company of Canada Ltd., AIR 1942 PC 40. Addition of word "French" to the word "Flare" would not materially affect the piracy. This would be just like addition of word "India" to the Trade Mark "Rustam" in the case of Ruston & Hornby Ltd. AIR 1970 SC 1649 where such addition was held to be of no consequence. In view of this discussion, I am of the view that the plaintiff has made out a prima facie case.
13. The balance of convenience lies on the plaintiff, who would suffer irreparable loss if the defendant is allowed to manufacture and sell his products under the trade name "Flare" or "French Flare". I, therefore, accept this application and order issue of interim injunction as prayed till decision of this suit. Copy of this para. be communicated in writing to the parties.