The plaintiff has filed this application under Order 39, Rules 1 and 2 C.P.C. Read with section 151, C.P.C. With a prayer that this Court may be pleased to restrain the defendant and its agents, servants, employees, officers and any person acting through or under it from using, advertising (whether on T.V., newspapers, magazines and/or on other media), marketing, offering or promoting for sale, selling or otherwise disposing of any of its products, bearing/using the mark/name/word "Danedar" in any manner whatsoever, and from supplying any such products or other material whatsoever, bearing or using the said word/name/mark "Danedar" in any manner whatsoever, to any person for the purpose of any use, sale, promotion, marketing or advertising, pending disposal of the suit.
2. This application is supported by an affidavit of Managing Director of the plaintiff. The relevant portions of the affidavit are reproduced as under:--- "4. That the plaintiff has over the years built up substantial goodwill in respect of its product, sold under the trade mark/brand name Danedar', through its skill, labour and considerable investment.
The said trade mark/brand name was coined by the plaintiff and the same has been continuously and extensively used by it since 1987. The said mark/name has become distinctive of the plaintiff as the purchasing public has come to identify it as the mark/name of the plaintiff and the product in respect of which it is used as the product of the plaintiff.
5. That the plaintiff has the exclusive right to the goodwill established by it in respect of its said product sold under the trade mark/brand name Danedar' and such goodwill includes the exclusive right to use the said mark/name. However, in complete violation of this exclusive right of the plaintiff the defendant has, since late January 1995, started using the plaintiff's trade mark/brand name 'Danedar' in relation to its newly launched product called 'Lipton Yellow Label Danedar Tea'.
The said mark/name is being used by the defendant on the packets of its said product and in advertising, marketing, promoting and selling the same. Such use of the plaintiff's mark/name by the defendant is completely illegal and it is submitted that no one, including the defendant, has the right to use the said mark/name in relation to its own product and thereby injure the plaintiff's goodwill.
6. That in the circumstances, if the accompanying application is not allowed, the plaintiff shall be seriously prejudiced and shall also suffer irreparable damage to its goodwill. In addition, the plaintiff shall also suffer immeasurable financial loss if the accompanying application is not granted as it would, inter alia, be impossible to account for all the sales that may be made by the defendant if it is not restrained from its illegal actions.
7. That the balance of convenience also lies in favour of the plaintiff for the grant of the accompanying application as the plaintiff has been using the said trade mark/brand name 'Danedar' since 1987, and the defendant has only recently (late January, 1995) started using the same illegally in relation to its own product. The loss/injury to the plaintiff in case the accompanying application is not granted, would therefore be much more than the inconvenience, if any, that may be caused to the defendant in the event the accompanying application is granted.
In fact, it would be in the interest of the defendant as well, if it is restrained from its illegal actions at this early stage. "
3. The Company Secretary of the defendant has also filed counter-affidavit in opposition to the plaintiff's application. The relevant portions of the counter affidavit are reproduced as under:-- "5. With reference to paragraph 1 of the plaint it is admitted that the defendant and the plaintiff are engaged in the same line of business, being importers and purchasers of teas of various varieties and qualities from the principal world markets, which teas are blended by them in their factories according to their own respective perceptions of a consumer preferences and market demands and are offered by them to the general public in a competitive environment. Besides the defendant and the plaintiff there are other, large traders who offer their teas in this market. These include traders who like the defendant and the plaintiff offer teas blended in their factories in packets devised by them. They also include a very large number of traders who sell loose teas to purchasers of discerning tastes demanding teas of qualities and varieties preferred by them. The defendant is thus a competitor in the tea market not only of the plaintiff but of a large number of other traders, including owners of tea blending factories selling packed teas and of other importers selling loose teas.
6. The defendant is a subsidiary of Unilever plc which is one of the world's largest traders in tea. The teas sold by the defendant in Pakistan are marketed under the brands or trade marks of its parent company.' These trade marks include in particular the trade mark Lipton and the trade mark Yellow Label and the defendant's teas under the LiptonYellow Label brands have been sold, advertised and promoted in the Pakistan market extensively since many years. The defendant's Lipton Yellow Label teas of various varieties and qualities compete in the market place with similar products supplied by other traders under their respective brands, such as Ispahani, Kohinoor, Zafran, Shahbaz, Shipton, Brooke Bond and Tapal. The plaintiff's teas are known and recognised as Tapal teas, Tapal being the brand name under which they are promoted and sold. The suggestion or inference in paragraph 2 of the plaint that the plaintiff offers its packed tea otherwise than under the Tapal name or trade mark is not correct and is denied. The Lipton teas of the defendant compete in the market place with the Tapal teas of the plaintiff and teas of other traders as stated above including those sold under the brands of Ispahani, Kohinoor, Zafran, Shahbaz, Shipton and Brooke Bond.
7. With reference to paragraph 3 of the plaint it is submitted that 'Danedar' is a common word of the Urdu language and is the equivalent in Urdu of the 'English word 'granular'. As such the word '
Danedar' is open to all traders for the bona fide description of their teas having a granular texture.
The word 'Danedar' is commonly used as such description in the tea trade by a number of traders besides the defendant and the plaintiff, including in particular the well-known and popular brands of Ispahani, Zafran, Shahbaz, Kohinoor and Brooke Bond, all of which display the word ' Danedar' on the product packet to describe the particular granular quality of the tea offered to consumers having a preference for such teas. The statement that 'Danedar' has been coined by the plaintiff is false and is mischievous and is denied. It is also denied that ' Danedar' is a trade mark or brand name. It is further denied that ' Danedar' has been used by the plaintiff as a trade mark or brand name whether since 1987 or from any other time or that the plaintiff has any goodwill or reputation as such in this common and descriptive expression ' Danedar' which is in common use in the trade for describing the granular quality of the particular variety of tea offered. The word 'Danedar' describes the granular quality of the particular leaf blend of the tea irrespective of the trader offering such granular tea for sale. The word ' Danedar', being entirely descriptive of the particular variety of tea and its quality, does not by itself identify the granular tea of any single trader such as the plaintiff. The statements made in paragraph 3 of the plaint are not correct and are denied.
9. With reference to paragraph 5 of the plaint it is submitted that the plaintiff has no such right, property or interest in the common Urdu word ' Danedar' as is claimed by the plaintiff and it is denied that ' Danedar' is a trade mark or brand name whether of the plaintiff or any other person.
The word ' Danedar' is a common Urdu word defined in the ordinary Urdu Dictionaries and its meaning makes the word most appropriate for describing the granular quality of certain blended varieties of tea. As such the word ' Danedar' is open to and is used by the trade to describe teas having a granular texture and has always remained open to all traders desiring to describe or emphasise for the benefit of the purchasers in the market place the granular texture of the particular leaf blend offered by them. The plaintiff's late attempts, many years after the plaintiff's alleged first use (which is not admitted), to appropriate for itself to the exclusion of all other traders (through invalid and unsustainable applications or registrations for trade marks or copyright) the common descriptive Urdu word ' Danedar' in common use in the tea trade for describing the granular quality of certain leaf blends of tea is mala fide and misconceived. The plaintiff's trade mark applications have just been advertised in the Trade Marks Journal No-523 published on 31st January, 1995 and the defendant has already filed oppositions against these attempted registrations of ' Danedar'. The said applications of the plaintiff were advertised in the Trade Marks Journal at the same time as an application by another trader for the registration of Zafran Tea label which also displays the description ' Danedar leaf blend' in a manner similar to that description as used by the plaintiff. The defendant will also file opposition against this application.
The defendant's oppositions to the plaintiff's applications have been lodged under section 15(2) of the Trade Marks Act, 1940 and Rule 30 of the Trade Marks Rules, 1963, the plaintiff's applications having been advertised without prior acceptance under the proviso to section 15(1) for inviting objections from traders and others before considering the registrability of the word desired to be registered. As such the registrability of ' Danedar' in the name of the plaintiff is sub judice before the Registrar of Trade Marks who has exclusive jurisdiction in the matter subject to appeal to this Hon'ble Court under section 76. The defendant's parent company, Unilever plc has already applied for the registration of the Lipton Yellow Label ' Danedar tea' packet as a trade mark in respect of tea. As regards the alleged copyright registrations, these purport to have been issued for some literary or artistic work registered by the title ' Tapal Tea Danedar Leaf Blend in Romman and Urdu characters. The nature of this alleged word has not been disclosed by the plaintiff. In due course the defendant will apply for the cancellation or rectification of these registrations wrongfully procured by the plaintiff under the Copyright Ordinance, 1962 for bolstering the plaintiff's illegal, untenable and false claim to the exclusive use of the descriptive word ' Danedar' per se. In any event the said alleged registrations are entirely irrelevant. The defendant has never used any such artistic or literary work nor any such title under which it is purported to have been registered as copyright. The defendant uses the word ' Danedar' as a bona fide description of the granular variety of its blended teas as is commonly done by other traders also.
17. Each and every averment made and contention raised in paragraphs 16, 17 and 18 of the plaint are denied. The plaintiff being unwilling to compete with the defendant in the market place in the sale of ' Danedar Tea' has wrongfully sought the assistance of this Hon'ble Court to exclude the defendant from selling its granular tea blends in this segment of the market which is growing in importance. It is denied that the defendant is passing-off its product as that of the plaintiff. The description ' Danedar Tea' has no such effect. That expression merely describes the granular quality of the tea whether blended by the defendant or the plaintiff or by any other trader."
4. I have heard Mr. Khalid M. Ishaq learned counsel for the plaintiff who has contended (1) that trade mark/brand ' Danedar' was coined by the plaintiff and the same has been continuously and extensively used by it since 1987; (2) that the plaintiff by virtue of sale promotion and extensive publicity through different media and by virtue of large sale has acquired a large amount of goodwill and reputation in respect of its products which is one of its most popular and fast selling product through the successive of such products can be gagged from the facts that plaintiff has made sale in excess of Rs.257 million; (3) that plaintiff also spends a considerable amount by virtue of advertising of said product and it has thus spent an amount in excess of Rs.42 million in sale promotion and advertising of the same, (4) that brand/name "Danedar" is published in the trade mark Journal of August 1994 at page No.185 with a condition of registration that the mark shall be used as applied and further that as required under section 15 of the Trade Marks Act, 1940; (5) that word/mark "Danedar" has been introduced in the advertisement media viz. Newspapers, magazines and electronic media such as radio and T.V. Since the year 1987 and that this word/trade mark "Danedar" is the initial adventure taken by the plaintiff for getting its circulation in the advertisement and electronic media publicity; (6) that the defendant is subsidiary of Unilever plc which is one of the word largest trade in the tea and that tea sold by the defendant in Pakistan are marketed under the brand and trade mark its promotion applying and that though the defendant's tea in particular the trade mark Lipton and trade mark Yellow Label and Lipton Yellow Label have been sold and promoted in the Pakistan Market extensively since so many years; (7) that though defendant's trade mark Lipton is used internationally and is earlier in market but it is very interesting and amazing to note that word "Danedar" is used by the defendant very recently since January, 1995 when word "Danedar" has actually received good response in the market and its image in particular in Pakistan after the entire efforts of the plaintiff in getting popularity and appreciation by the consumers and the traders alike in the market of Pakistan after getting vide publicity in press, and electronic media; and (8) learned counsel for the plaintiff has also submitted receipts in respect of the claim of the sale and the product of the plaintiff as Tapal Tea leaf brand "Danedar" and the amount spent in excess of Rs.42 milion in sale promotion and advertising the word "Danedar".
5. Mr. Khalid M. Ishaque has referred the following case-law:---
(1) AIR 1965 SC 980 (V 52 C 157) Kaviraj Pandit Durga Dutt Sharma v. Navaralna Pharmaceutical Laboratories.
The law laid down in this authority is as follows: "The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. "
(2) AIR 1971 SC 898---National Bell Co. v. Metal Goods Ltd.
The Hon'ble Supreme Court has held in this authority as under:--- "Rights in a mark can, of course be abandoned by its owner but so long as he remains the registered proprietor of the mark and carries on the business to which the mark is attached. "
(3) AIR 1978 Delhi 250---Century Traders v. Roshan Lal Duggar & Co, and others.
The dictum of this authority is as follows:--- "A mere casual, intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trade mark for specific article or goods. "
(4) AIR 1984 Delhi 441---M/s. Manoj Plastic India v. M/s Blola Plastic Industries.
The Hon'ble Judge, in this authority, has observed as under:--- "It appears that the defendants considering the sales, design and reputation of the plaintiffs' mirrors have recently adopted their trade mark. It is better that they stop passing off their goods under the trade mark Tony at the earliest. "
(5) 1950 RPC 67, 113---Broadhead's Application for the Registration of Trade Mark.
"In my judgment that circumstance is relevant from two points of view The first is that there could not possibly be any evidence of actual confusion or actual deception."
(6) PLD 1956 Sindh 1---Rexona Proprietary Ltd. v. Majid Soap Works.
This dictum of this authority is as under:--- "It is enough if the plaintiff satisfied the Court that the defendant sells his goods marked in a manner so as to lead purchasers to believe or to create a probability of so believing that they are buying the goods of the plaintiff."
(7) Unreported case of Hon'ble Supreme Court of Pakistan in case of Malik Imamuddin v Maaz Dawakhana and another Civil Petitions for Leave to Appeals Nos. 153/K, 154/K and 155/K of 1988.
"So far as the first contention is concerned the learned Judge in the High Court repelled it on the reasoning as appears from the following passage:--- "It is also contended by the learned counsel for the respondent that the word ' Thadal' is an obscure word which is not understood in its dictionary meaning even by a large majority of people in Sindh while in other Provinces of Pakistan, namely, Punjab, Baluchistan and N.-W.F.P., it is not at all understood in its grammatical sense but is only understood as a product of respondent.
Additionally, it is contended by the learned counsel for the respondent that the dictionary meaning of ' Thadal' has no reference to the quality of the goods namely the syrup produced by respondent but it at best refers to the affect which may be produced on a person using the same. On these premises it is contended that neither the registration of the word Thadal' as a trade mark is prohibited nor it offends against the provisions of section 6(1) (e) of the Act."
We find these reasons sound and the learned counsel was unable to show how this reasoning was untenable."
(8)1986 CLC 775 (Karachi)---M/s. K.S. Sulemenji & Company Ltd. v. M/s. Sulemanji & Company Ltd.
The law laid down in this authority is as follows:--- "In trade marks cases, protection to ownership would be readily given and injunction should as a rule be issued to prevent infringement of registered trade mark if other requirements are fulfilled and Courts are reluctant to grant injunction in disputes relating to infringement of copy rights, patents and design."
(9) 1980 CLC 1268---Bashir Ahmed v. Registered Firm Hafiz Habibur Rehman.
The Hon'ble Judge in this authority has observed as under:--- "In determining the question of infringement of a trade mark, it has to be seen whether the public at large and not that an intelligent section of the public would be confused and misled. Whether the wrapper is calculated to induce a buyer to purchase the products packed therein, as one the connected by the respondent, a common purchaser not conversant with the distinction in the two products, should serve as a criterion. Obviously the person who is already aware of the distinction would not be deceived."
9(a) PLD 1975 Karachi 486---Ferozuddin v. Muhammad Shafi and another.
The dictum of this authority is as follows:--- "The allegations in the plaint are that the defendants have not only counterfeited the name of the product but even the name of the manufacturer. The Court generally protect a person in such circumstances even though the trade mark is not registered, specially if it is prima facie established that the plaintiff has been using the name of the product as a manufacturer since a long period."
(10) 1987 SCMR 1090---Messrs Tabaq Restaurant v Messrs Tabay Restaurant.
"Every man has an exclusive right to the name under which he carries on business or sells his goods to this extent at least that no one is at liberty to use that name for the purpose of deceiving the public and so injuring the owner of it."
10(a) 1990 MLD 1786---Riaz Ahmed Mansuri v. Abid A.I Qazi and others.
"There is no denying the fact that the plaintiff has copied the name and style of the reputed sports magazine "The Cricketer International". Hence I am unable to persuade myself to agree with the contention of the plaintiff that he has a wider circulation and goodwill in Pakistan or that vis-a-vis international magazine "The Cricketer", or the latter does not have goodwill for wide circulation in Pakistan. "
(11) PLD 1951 PC 108---Cecil De Cordova and others v. Vick Chemical Company.
"The identification of an essential feature depends partly on the Court's own judgment and partly on the burden of the evidence that is placed before it. A Trade Mark is undoubtedly a visual device; but it is well established law that the ascertainment of an essential future is not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of a mark has come in trade to be used t o identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader."
(12) PLD 1971 Karachi 189---M/s. Surya Brothers v. M/s. Dada Soap Factory Ltd.
"The trade mark sought to be registered comprised a label containing the device of the Ace of Spade with the word "Kalapan". At the time when the application was made, it was found that there was a registered trade mark having the device of a heart with the words "Lai Pan" in respect of the same class of goods."
(13) 1994 CLC 2135---Telephone Soap v. M/s. Lever Brothers.
"Mere fact that trade mark of defendant had also been registered would not entitle him to use the same if it amounted to infringement of trade mark of plaintiff--Wraps of both the products manufactured by plaintiffs and defendant on examination showed that prima facie there was close similarity as regards colour scheme, and other features of both the trade marks."
(14) PLD 1993 Kar. 766---Zaka-ud-Din v. Muhammad Zahid and 2 others.
The Hon'ble Judge in this authority has held as under:--- "The appellant in September, 1985, as pointed earlier, had applied for the registration of trade mark Bio-Amla (word) and said mark was advertised by the trade mark registry. Said mark is being continuously, openly and extensively used by the appellant since the date mentioned, earlier. It being so, the appellant is legally entitled to claim the proprietorship of said mark and the objection of the respondents that said mark has not yet been registered in favour of appellant is of no legal consequence so far these proceedings are concerned. "
(15) AIR 1982 Delhi 482---M/s. Virendrs Dressee v. M/s. Varinder Garments, Delhi.
"Held that the two trade names of the plaintiffs and defendant were not distinctively different but were similar and this similarity was sufficient to give rise to great risk of confusion."
(16) AIR 1985 Delhi 210---B.K. Engineering Company, Delhi v. U.B.H.I. Enterprises (Regd.), Ludhina.
The Hon'ble Judge, in this authority, has held as under:--- "Plaintiffs' cycle bells under the trade mark "B.K."---Defendants using trade mark "B.K.81" for their cycle hells--Defendants, mars, deceptively similar and likely to cause confusion in the mind of general public."
(17) AIR 1986 Delhi 245---Globe Super Parts v. Blue Super Flame Industries.
"The dictionaries of English language being silent on the meaning of Super-flame, the conclusion is inescapable that it is a 'coined', or 'fancy' word, and in the circumstances, a 'meaningless' word, it is a word which is not in use. In any case, it is not a word which is so common place, as to be found in the authoritative language dictionaries. The word is made meaningful only when applied to the products for which it was created. "
(18) AIR 1991 Delhi 22---M/s. Avis International Ltd. v. M/s. A.I Footwear Industries.
The Hon'ble Judge, in this authority has held as under:--- "Trade mark ' Avis' used by plaintiff in respect of garments----Defendant using Aevis as trade mark for its footwear---Suit filed against defendant-Interim application also filed---Defendant taking plea of non--user of trade mark by plaintiff---Held, that plaintiff was entitled to injunction."
(19) 1972 RPC 847---Carlsberg Bryggerierne v. Tenant Caledonia]' Breweries Ltd.
"Use of the words ' Special Brew' to describe a very strong lager manufactured by the first named petitioners and distributed in Scotland by the second named petitioners---Claim that the name 'Special Brew' had become distinctive of the petitioners' product---Interim interdict granted."
(20) 1973 RPC 560---LRC International Ltd. v. Lilla Edets Sales Co. Ltd.
"The defendants objected that what the plaintiffs were really seeking do was to secure a monopoly in the word 'Marigold'.
Held, that the defendants were entitled to raise the question as to hose far beyond their own specific field of activities the plaintiffs were entitled to extend the area within which they ought to be given protection. However, on the admitted reputation of the plaintiffs in their own particular field and on a consideration of the nature of the goods in which the defendants were dealing, and the nature of the goods in which the plaintiffs were dealing and proposed to deal, it would be right for an injunction to be granted."
(21) 1979 RPC 19---Golden Jet Trade Mark.
"There was some evidence of the use of such marks on T-shirts. Further, there was evidence that whenever a T-shirt bore the device of a well-known company, then the trade assumed that there was a connection between the T-shirt supplier and that company. The applicants did not file any evidence.
6. Mr. Fateh A.I W. Vellani for the defendant has contended (1) that a comparison of the packet of the defendant with the packet of the plaintiff show that they were vastly different; there is no likelihood of defendant's packet of tea being purchased in the belief that it is the plaintiffs' packet of tea; (2) that the brand of the defendant's product is essentially Lipton Yellow Label comprising registered trade marks of Unilever plc which are used worldwide and have been used in Pakistan since long; whereas the brand of the plaintiff's produce is essentially Tapal Tea; the products of the defendant and the plaintiff will be called for and recognized by their respective brands; for this reason also there is no likelihood defendant's packet of tea being purchased in the belief that it is the plaintiff's packet of tea; (3) that "Danedar" is being used in the same market place by many traders of tea, including 10 selling factory packet tea, including plaintiff and defendant; this shows that in the market place the goods are distinguished by other features, like Lipton Yellow Label, Tapal, etc., rather than by "Danedar"; (4) that Danedar has been shown to be a common word having a well known meaning and means granular; it is used to describe the granular texture of products such as sugar and tea; (5) that in the case of the trade samples of tea describing the product as Danedar tea, including the products of plaintiff and defendant and many others, it has been shown physically that the tea has a distinct granular texture; as such Danedar tea is an appropriate description of the granular texture of the tea; as such it is open to all traders to use for bona fide description of the quality or characteristic of their product; (6) that the word ' Danedar' being apt to describe the granular texture of the tea is not apt to be distinctive of any one's tea; (7) that the only common feature is the word "Danedar" which is descriptive of the granular texture of the tea; (8) that "Tepal Tea" and "Lipton Yellow Label" are the trade marks or brand names of the plaintiff and defendant respectively, and have been used by them since long in the market place, and continue to distinguish the products of the parties in the same way as always in the past; (9) that both parties use "Danedar" in a descriptive sense referring to the granular texture of the product, described as "Danedar Leaf Blend" in the case of "Tapal Teu" and as "Danedar Tea" in the case of "Lipton Yellow Label", (10) that the products of the plaintiff and the defendant as packed when compared as whole are entirely different and easily distinguishable; (11) that "Danedar" means "granular" to the common man and is entirely descriptive of the texture of the tea described as such not only by plaintiff and defendant but by many other suppliers of tea, whether sold packed or loose; (12) that the plaintiff also uses the word ' Danedar' in a descriptive sense, having regard to the collection of words "Tapal Tea Danedar Leaf Blend". This is also evident from the plaintiff's advertisements produced by the plaintiff; (13) that the brands "Tapal Tea" and "Lipton Yellow Label", in any case, serve as always to distinguish the tea brought on the market by the two parties; (14) that the defendant in the meanwhile has expended large sums in preparing the packet of "Lipton Yellow Label Danedar Tea", and has huge stocks of them, and also in advertising this product in all the usual media, including television, at enormous costs. All such costs have been incurred in exercise of the right vesting in the defendant to describe the granular texture of the tea by the apt description "Danedar Tea". The defendant, however, has always distinguished its tea "Danedar Tea" by using the brand "Lipton Yellow Label".
The learned counsel for defendant has cited the following authorities:---
(1) 32 R.P.C. 479 "Universal Machine"
The dictum of this case is as under:--- "The whole question in these cases of passing off is whether the article, taken in its entirety and looking at the whole article, is such that in the ordinary course of things a person with reasonable apprehension and proper eyesight will be deceived or not."
(2) 22 R.P.C. 601 "Soda Water"
"In the common law action of passing off no one can claim monopoly rights in the use of an ordinary word. A limited monopoly in the use of an ordinary word may some times be possible through registration as a trade mark, but that is according to the statutory provisions of the Trade Marks Act, 1940. This should not be confused with the common law of passing off where the competing articles have to be compared as wholes to see if defendant is making the requisite misrepresentation as to trade source. "
(3) 26 R.P.C. 693 "Slip-On Coat"
(i) There is a vital distinction in passing off cases between those involving an invented or fancy word and those involving a word which is descriptive of the article manufactured.
(ii) Everyone dealing in an article of commerce is entitled to use any words which are or have become current in the common language as denoting or describing that article provided he can do so without deceiving the public to another's injury.
(4) 16 R.P.C. 397 "Cellular Cloth" " the principles applicable where the word in question is descriptive of the character or quality of the article are entirely different from the principles applicable where the word in question is a fancy word. "
(5) 26 R.P.C. 69 "McCain Oven Chips" v. Country Fair Oven Chips" and "Birds Eye Oven Chips".
"The test of passing off is whether there is deception. The fact that the plaintiffs chose the common descriptive word in question and spent a lot of money on advertising does not entitle the plaintiff to cause other people to be restrained from using that common descriptive word. "
(6) 1989 SCMR 361 "That there could be no possibility of deception if the word in question (although registered as a trade mark) is being used by others to describe their goods. Such descriptive words are to be regarded as 'common to the trade' or 'open to the trade' or 'public juris'. The word 'Formica' being in this category, the defendant's product also described as 'Formica', was easily distinguishable since the defendant used his trade mark ' Decorite' . "
(7) PLD 1975 Karachi 582 "Up" case "The Court must regard the word from the point of view of the common man in Pakistan. What is relevant is the way in which the common man understands the word. It is not relevant to regard the word from an etymological point of view. "
Dictionaries: The following dictionaries were referred to show that ' Danedar' is an ordinary word of the current language and will be understood by the common man as meaning "granular":---
(i) A Dictionary of Urdu Classical Hindi and English by John T. Platts.
(ii) Urdu Sindhi Lughat by Dr. Nabi Bakhsh Baloch.
(iii) Nai Urdu Lughat Jameh.
(iv) A New English Sindhi Dictionary by Parmanand Mewaram,
(v) The Pak National Dictionary English to Sindhi.
8. After hearing learned counsel for the parties and perusing the material placed with the record and the authorities cited by both the learned counsel I have come to the conclusion that plaintiff's tea is being sold as "Tapal Tea Danedar Leaf Blend" and defendant's as "Lipton Yellow Label Danedar Tea" and actually are the trade marks of the plaintiffs and the defendants respectively and have been used by them since long in market place and continue to distinguish the products of the parties in the same way as always in the past. The only common feature is the word "Danedar" and both the parties are using the word as "Danedar" in a descriptive sense referring to the granular texture of the product, described as "Danedar Leaf Blend" in the case of "Tapal Tea" and as "Danedar Tea" in the case of "Lipton Yellow Label". The product of the plaintiffs and the defendants as packed when compared as a whole are different and easily distinguishable. A comparison of the packet of the defendants with the packet of the plaintiffs shows that they are vastly different; there is no likelihood of defendants' packet of tea being purchased in the belief that it is the plaintiffs' packet of tea and there is no possibility that such confusion or deception is to take place. The brand of the defendants' product is essentially "Lipton Yellow Label" comprising registered trade marks of Unilever plc which are used worldwide and have been used in Pakistan since long; whereas the brand of the plaintiffs' product is essentially "Tapal Tea"; the products of the defendants and the plaintiffs will be called and recognised by their respective brands. Danedar is a common word having a well-known meaning and means granular. It is used to describe the granular texture of products such as sugar and tea. The contention of the plaintiffs that the word "Danedar" is being used by the plaintiffs since 1987 and the word "Danedar" has been advertised before acceptance as required under section 15(1) of the Trade Marks Act, 1940 in the trade mark journal of August, 1994 at page No. 185. A perusal of this journal at pages Nos. 186 and 187 shows that "Zafran Tea Leaf Blend" is also advertised before acceptance at pages Nos. 186 and 187 of trade mark journal of August, 1994 as "Danedar". Not Only "Zafran Tea" is packed and produced as Danedar but the word "Danedar" has been used by other companies, such as Khohinoor, Shahbaz and others with their respective trade marks. The word "Danedar" is a common word arid the contention of the plaintiffs, that they have coined the word "Danedar", is hardly to be believed.
Perusal of various dictionaries, as mentioned earlier, clearly shows that it is a common word which is in use as (DaneDar) in Urdu and (DaneDar) in Sindhi. As against the plaintiffs' trade evidence in the shape of various affidavits there is defendants' trade evidence establishing the descriptive use of "Danedar" in the tea trade for describing the granular texture of tea. The contention of the plaintiffs, that they have spent a I considerable amount by advertising the word "Danedar" and thus spent Rs.42 ' million on sale, promotion and advertising of the same, has not actually accrued any legal right in favour of the plaintiffs so that the defendants may be restrained from using the word "Danedar". It has also been brought before me that before the learned Registrar, Trade Marks the defendants have filed objections against the registration of word "Danedar" as trade mark, which is pending decision before the concerned authority. The plaintiffs have filed this application seeking injunction restraining the defendants from using the word "Danedar" whereas they have not joined other companies, as referred earlier, as defendants in this suit though they are also using the word "Danedar" and are actually in the field of tea trade.
9. The cases cited by the learned counsel for the plaintiffs are distinguishable and have got no applicability to the facts of the case in hand. Whereas the cases cited by the learned counsel for the defendants are applicable and helpful to the case of the defendants.
10. From the material produced with the case and the case-law I am of the considered view that the plaintiffs have not been able to make out a prima facie case in their favour nor they have been able to show any irreparable loss to be suffered by them; balance of convenience is also not in their favour.
11. For the reasons stated above, this C.M.A. Is dismissed with no order as to costs.
12. Before parting with the matter I would like to appreciate the able assistance rendered by the learned counsel for the parties in the matter for coming to the above conclusion.