' In this suit for infringement of trade mark, passing off accounts of profits and damages. The plaintiffs have filed an application under Order 39, Rules 1 and 2 (CMA No, 346 of 1994) seeking to restrain the defendants from manufacturing, selling, offering, for sale, distributing, advertising, using of their product or infringing Trade Mark SHAHZADI PATTI (LABEL) or any other resembling and or confusingly similar to the plaintiff, trade mark label and from passing off or attempting to pass off their goods as those of the plaintiffs by manufacturing, selling, etc. Defendants Nos. 1 and 2 on the other hand have filed two applications firstly under Rule 6 of Chapter 7, Volume V of the High Court Rules and Orders seeking to stay the proceedings of the suit on the ground that they have filed Judicial Miscellaneous Application under section 46 of the Trade Marks Act, 1940 on 10th April, 1994 in this Court (CMA No,1876/94). By the second application CMA No,1877 of 1994 under Order 39, rule 4, C.P.C., both the defendants seek to vacate the interim ex parte order dated 27-1-1994 passed on CMA No, 346 of 1994.
' The plaintiff and defendant No,2 are brothers inter se while defendant No,1 is the wife of defendant No,2. Claiming to be the registered Proprietor of Trade Mark SHAHZADI PATTI under Trade Mark No, 58131 in Class 34 in respect of Chewing Tobacco and asserting to be dealing in the business of Tobacco and other allied goods since 1962 with his father Abu Muhammad Khan (since dead), the plaintiff has brought the instant suit. It is the case that in 1975 he himself, his father Abu Muhammad Khan and his brother Jawed Aslam Khan, the defendant No,2 entered into business partnership under the name and style of Banaras Tabacco Company and the partnership firm was registered with the Registrar of Firms. The said firm acquired the above trade mark in respect of chewing tobacco by registration from the Trade Marks Registry, Karachi, Government of Pakistan.
The said firm was dissolved with effect from 30-6-1987 vide Deed of Dissolution of Partnership dated 30-6-1987. In terms of para. 5 of the Dissolution Deed, it was agreed that the plaintiff's father Abu Muhammad Khan will run the business of Challia and Pan Masala, plaintiff will run the business of Agarbatti while defendant No, 2 will run the business of Tobacco manufacturing of Zarda. It was mutually decided that the plaintiff and defendant No, 2 will use the registered trade marks of their respective trade with the special permission of their father Mr. Abu Muhammad Khan. Although it was decided that all the business will be run separately by persons named above actually it was run by the joint family i,e, plaintiff, defendant No, 2 and their younger brother Naseem Aslam Khan and the profits and loss were shared equally. It has been pleaded that for all practical purposes the plaintiff was running the business of Zarda (chewing tobacco). After division of above business a private limited company was incorporated under the name and style of Banaras Tobacco (Pvt.)
Limited with main business to act as distributor of above business with the plaintiff, defendant No, 2 and their younger brother Naseem Aslam Khan as Director. On 4th November, 1989 Abu Muhammad Khan assigned the Trade Mark SHAHZADI PATTI in favour of the plaintiff by executing an Assignment Deed in his favour. After the assignment in favour of the plaintiff by his father, defendant No,2 on 2nd December, 1989 secretly filed an application for registration of said Trade Mark SHAHZADI in the name of his wife i,e, defendant.No,
1. The plaintiff, however, allowed her to use the said trade mark as it was actually a joint business of the family which was running smoothly during the lifetime of Abu Muhammad Khan but after his death on 1-11-1992 disputes arose between the parties and virtually in July, 1993 business of Zarda was totally closed. The factory situated on Plot No,234 in Sector 11 1/2, Faiz-eAam Colony, Orangi Town, Karachi was closed and the plaintiff as well as other family members were not allowed to enter the factory, since it was locked by defendants Nos.1 and 2. After the closure of the business as stated above, the plaintiff started his business of chewing tobacco by using his 'registered Trade Mark SHAHZADI under his firm name Shahadi Tobacco Company. His goods with the above trade mark after manufacture were given to Banaras Tobacco Company (Pvt.) Ltd. For marketing. In the said company the plaintiff himself, his wife Mrs. Rukhshan Jamshed, defendant No, 2 and their younger brother Naseem Aslam Khan are the Directors. Defendants Nos. 1 and 2 had the knowledge that the plaintiff has been using the registered Trade Mark SHAHZADI, under his firm name because defendant No, 2 is also one of the Directors in the said company. Due to its good quality plaintiffs Zarda manufacturing has acquired popularity, reputation and goodwill among the general public and the trade community by whom the said product is identified by its Trade Mark SHAHZADI (label) of Shahzadi Tobocco Company.
The plaintiff has been selling the said product under the registered Trade Mark SHAHZADI with its design, colour, scheme and get up. On account of high quality and reasonable price, plaintiffs goods under the Trade Mark SHAHZADI PATTI are very popular and in great demand. The trade and public denote and connote the goods under the trade as the goods of the plaintiff and none else.
By reason of its extensive use substantial reputation and goodwill has accrued to the plaintiff but recently it came to his knowledge that the defendant No,2 alongwith his wife in order to earn the goodwill and reputation of the plaintiff has started manufacturing, selling and offering for sale his spurious Zarda/chewing tobacco with the identical brand name SHAHZAD PATTI with the same colour scheme, design, layout, get up and style, etc. Which are identical and confusingly similar to that of his Trade Mark SHAHZADI PATTI, hence this suit.
3. Defendants Nos.1 and 2 filed a written statement as well as counter-affidavit to the injunction application denying various allegations and claiming that the plaintiff is not lawful owner of Trade Mark SHAHZADI PATTI as it was initially registered in the name of Abu Muhammad Khan, Shamshed Aslam Khan, and Jawed Aslam Khan trading as Banaras Tobacco Company previously known as S. ABDUL SHAKOOR & COMPANY. Their main contention is that the plaintiff has got the mark assigned in his favour on the basis of Assignment Deed, dated 4th November, 1989 long after the death of his father Abu Muhammad Khan. They pleaded that the signatures of Abu Muhammad Khan on the Assignment Deed are forged and that defendant No,2 has filed a J. Misc. Application for rectification of the enterance of recordal and consequent proprietorship by the Registrar of Trade Marks under section 46 of the Trade Marks Act on 10th April, 1994.
4. I have heard learned counsel appearing for the parties and gone through the material place on record.
5. In support of the application for interim injunction, the plaintiff has placed the certificate from the Trade Marks Registry, Karachi registration of Trade Mark No, 58131 in respect of SHAHZADI PATTI and the registration thereof in his name w,e,f, 18-7-1993 on the basis of orders passed on the Assignment Deed executed in his favour. There is no doubt that initially the trade mark was registered in the joint names of the plaintiff, defendant No,2 and their father but lastly it has been registered in favour of the plaintiff by the Registrar Trade Marks, Government of Pakistan. In his affidavit, the plaintiff has claimed that he has sold the chewing tobacco under the above trade mark from late 1993 to the tune of Rs, 40,00,000 approximately and he has spent a sum of Rs,1,00,000 on sales promotion activities, publicity and advertisement of the product. He has produced copies of cash memos Annexures M to M/11 and copies of advertising bills Annexures R to R/4.
6. Learned counsel appearing for the contesting defendants has pointed out that the copies of the cash memos. Annexures M to M/11 are in the name of Banaras Tobacco Company and for the period between July, 1992 to June, 1993 but as stated earlier the plaintiff has claimed that after the dissolution of the partnership he had been dealing in the business of chewing tobacco with the registered Trade Mark SHAHZADI PATTI. A copy of the Income tax Payment Receipt Annexure 'N' in respect of the assessm ent year 1993-94 would show that the payment of the income tax amount was made in the name of the plaintiff on account of Banarars Tobacco Company Ltd. And he had paid a sum of Rs,15,000 in the Bank on 28-8-1993. Annexure N/5 would prima facie show that in respect of the same assessm ent year he had paid an advance income-tax Rs,3,600 on 28-6-1993.
Annexures 'R' to 'R/4' prima facie support the plea of plaintiff that he had spent substantial amount on the marketing and advertisement of his product. Notwithstanding the challenge his title and ownership in respect of the trade mark, it would prima facie appear that the plaintiff has been using the trade marks registered in his name in his own rights for quite some time. He has thus a good prima facie case for the purpose of temporary injunction. So long the registration in his name is not cancelled he has the right to protect his goodwill and the business reputation without any hindrance. As stated earlier, defendant No, 2 has challenged the title of the plaintiff by filing a Judicial Miscellaneous Application before this Court only on 10th April, 1994 which would be decided on its on merits. The balance of convenience would also lie in favour of the plaintiff because in case the contesting defendants are allowed to infringe his registered trade mark. It is the plaintiff who would suffer adversely as compared to the contesting defendants. The loss of reputation, goodwill and popularity of the product on the part of the plaintiff would be irreparable and cannot be measured in terms of coins. On the other hand, defendants Nos. 1 and 2 have not been able to persuade me to discard the case made out by the plaintiff. Indeed they have not been able to show by any convincing evidence that they are the prior users of the Trade Mark SHAHZADI as contended at the bar. For these reasons, I would grant this application and confirm the interim order of injunction passed on 27-1-1994. Needless to point out the grant of this prayer CMA No, 1877 of 1994 is rendered infructuous and is dismissed.
7. As regards the prayer of the defendants contained in CMA No,1876 of 1994, it would not serve any useful purpose if the proceedings of the suit are stayed. It would neither be just nor proper to stay the proceedings in the suit which was instituted earlier in point of time with reference to judicial miscellaneous application filed by defendant No,2. I would, therefore, decline the prayer and dismiss this application.