' By this order C.M.A. No,6370 of 1997 shall be disposed of. This is an application under. Order XXXIX, Rules 1 and 2, C,P.C., wherein the plaintiff has prayed that the defendants, their servants, agents, distributors, stockists, retailers and dealers from using, selling and in any way dealing with imitated mark 'CANDI' and the biscuit shape as they are infringing the plaintiff's trade of CANDI and the genuine biscuit shape, till the disposal of this suit. The plaintiff in support of his application has filed an affidavit of one Benoit Bane who has sworn the affidavit on behalf of plaintiff No,1 . In the affidavit he has claimed that the plaintiffs are carrying on business of manufacturing of high quality biscuit in France and almost all the countries of the world including Pakistan. The plaintiff in order to retain its distinctive quality uses a trade mark comprising , of red band with or without a golden border with the word LU. The trade mark LU is registered in Pakistan under T.M. No,84139 in class 30, in respect of biscuit. He has further gone on to state that they also use two other marks indicating different qualities of biscuits and one of them is CANDI. This biscuit is marketed with distinctive package design which is exclusive in its shape and design. According to him the trade mark CANDI has also been registered in Pakistan but under the combination CANDI LU under No,85906 in class 30, there are other applications which are pending registration ' The plaintiff No,2 is subsidiary company which has been authorised to use me trade mark CANDI and the CANDI biscuit shape get-up. According to the plaintiff.-the biscuit has a distinctive shape and it was introduced in Pakistan in the year 1986 and since then the mark as well as shape of the biscuit has gained prominence in Pakistan. The plaintiff has gone on further to state that with a very strong marketing strategy and an aggressive promotion through media, the word CANDI and the distinctive biscuit shape have gone on to become yen nougat and have also become recognised as quality product. They have gone on to give details of the amounts that they have spent and the various promotional material that they have used during the period commencing from 1986. They have also gone on to show the taxes that has been paid which to my mind for the purpose of this application is immaterial. The basis for this suit is that taking advantage of extra ordinary popularity of their product the defendant has brought into market a biscuit which is identical to and can be part of a biscuit of the plaintiff. According to the plaintiff, they became 'aware that this biscuit under the name TINKLE was advertised in the Pakistan Trade Mark Journal in the year 1997. Learned counsel further stated ~that word TINKLE also has the word CANDI written in Urdu and the distinctive shape and get-up of the biscuit is also there on the package. They have, therefore, filed this suit for permanent injunction and for rendition of ,accounts. With this suit they have moved this application under Order XXXIX, Rules, 1 and 2, C.P.C.
' The plaintiff has gone on also to place on record affidavit in support of interim injunction of the plaintiff No,2 as well as of Mehdi Raza, the General Manager of NTM Muhammad Jamal Raza Mir.
Chief Executive Officer Prestige Communication (Pvt.) Ltd. Wasim Iqbal, Sales Manager of Packages Limited and Mushtaq Ahmed of Sigma Trade and Commerce (Pvt.) Ltd.
' On behalf of the defendant Abdul Hussain has filed a counter-affidavit wherein he has denied the contents of application, the affidavits as well as plaint. He has gone on to state that suit is barred by limitation laches and acquiescence. He has gone on to state that Annexure A/4 is not registered and the plaintiffs are falsely representing that it is registered in Pakistan. According to him the letter 'R' shown therein is false and misleading and is an offence punishable under section 69(A) and (ii) of the Trade Mark Act, 1940. The Act is also punishable under the Pakistan Penal Code. He has also annexed a page from the Trade Mark Journal in respect of T.M. 84139 to support his stand. He has further gone on to state that the shape of biscuit is not and cannot be exclusive jurisdiction of the plaintiff and it is wrong to suggest or employ that the plaintiff has invented the shape and design. If it was so, then the designs should have been registered under the Patent and Design Act. He has also gone on to state that the plaintiffs have failed to comply with the orders of this Hon'ble Supreme Court and have not filed proper translation of the documents filed by them, neither they have ,filed the extract from the Registry of Trade Marks to show that the trade mark is registered and under that terms and conditions. 'He has gone on to state that the plaintiff No,1 is not the registered proprietor of trade mark CANDI LU under No,185908. He has also insisted that T.M.
Applications Nos.116317 and 117316 both in class 30 are in the preliminary stage and, therefore, they need not be looked into at the present stage for the purpose of grant of injunction in fact, they have not even been advertised in the Trade Mark Journal. On the other hand, it is pointed out that the product is marketed since the year, 1990 and the defendants are in the business of biscuit manufacturing since 1985. The package is distinctive and different from that of the plaintiffs and word CANDI is used' in the proper prospective i,e, CANDY which goes to mean and show something sweet. It is also stated that even the word CANDI in French means sweet and, therefore, any word, which is descriptive cannot be used exclusively under the Trade Mark Act. He has denied the charges levied by the plaintiffs and has also pointed out that the suit as well as the application is to be dismissed.
' The detailed rejoinder has been filed by the plaintiff No,1 who his merely repeated all that was said earlier and has gone on to once again plead that they enjoy the exclusive use of the word CANDI and even use of the word CANDI by the defendants was misleading and an intention was there to take advantage of popularity of the plaintiffs' product. A rejoinder of plaintiff No,2 has also been filed which more or less repeats the. Same grounds that has been taken by the plaintiff No,1 in support of the application.
' I have heard both the parties at length. I have gone through the facts the extra-ordinary number of Annexures as well as the affidavits, that have been placed by both the sides for the purposes of grant of interim injunction. I have to take into consideration whether prima facie an arguable case exists and if it is then by granting stay who shall suffer irreparable loss and injury and with whom shall lie the balance of convenience.
' For the purpose of grant of a stay, it is an established principle that a party praying for a stay has not merely show that they have an arguable case which would entitle them to an interim order of stay but even where prima facie a case is made out, it is to be seen that whom does the balance of convenience lie and whether irreparable loss and/or injury shall be caused and if so, to whom. Both sides have insisted that the respective marks and packing and/or the packing is registered. The main thrust of the arguments at the present moment and for the purposes of stay is restricted to :- -
(i) Whether the word CANDI is registered mark of the plaintiff and if so, can the defendants be restrained from using the word CANDI not as the name of the biscuit but as a description of the biscuit?
(ii) Whether the shape and design of the biscuit appearing on the packet of the plaintiff is the exclusive right and thereby, can anybody else be stopped and/or restricted from using or manufacturing or marketing or selling similar types of biscuit?
' In support of the first point the learned counsel for the plaintiff has urged that even if CANDI was not registered, the application for registration had been made to the Trade Mark Registrar in Pakistan. I have seen the application and I have noted that word CANDI has not been used in isolation and in fact, the description of the mark has been shown as CANDI LU. The learned counsel has also produced certain other documents which are not in the English language and are, therefore, not legible. Reliance cannot be placed upon them, for the present moment. It is an admitted position that the word CANDI has gained enough prominence due to the exclusive marketing and selling of this biscuit. My attention has also been drawn to Exh.D.D./1 where a disclaimer has been given in respect of the exclusive right to the use of the word CANDI. I would have dealt at length on this issue if I was not satisfied that the product of the defendants is admittedly distinguishable and totally and completely different from of the plaintiff as regards the use of word CANDI is concerned. Even in the highly competitive market of biscuits nobody can say that the defendants are trying to pass of their TINKLE biscuits with those of the plaintiff i,e, CANDI LU biscuits. To merely have a three words sentence at the bottom of the word TINKLE stating "Candy Sugar Biscuits" would by no stretch of imagination fool the common men into believing that the biscuits are trying to be sold in the market as if they are manufactured by and sold by the plaintiffs, the makers of LU biscuits.
' As regards the second point is concerned, admittedly on the face of it the picture of the biscuit depicted on the packet of CANDI LU and that shown on the packet. Of TINKLE biscuit is similar but then so are the hundreds of different biscuits available in the market. If the biscuit was of a shape and size which was peculiar distinctive and also being sold in the market based upon its shape and design rather than its trade mark then admittedly one would have to keep in mind whether any passing off is occurring or not and whether the common men while eating biscuits could be fooled into believing that the biscuits of the defendants are those identical to the biscuits of the plaintiff. To prove a point the counsel for the plaintiff has given an example that if the CANDI LU biscuits and the TINKLE biscuits were kept in a plate than it would be difficult for a common men to distinguish between the two. When a case is made out for passing off or for infringement or for any violation of the Trade Mark Act and Rules, both sides pleading their cases can put forward their respective viewpoints. When in support of their arguments, examples are given, should it be restricted to the misunderstanding of the common purchaser at the time of purchase between the two different brands or not or should it go beyond the packing and into the actual product created into the shape of a biscuit. In this case the basic dispute relates to the packing and the word CANDI and the shape of the biscuit on the packet. If a casual glance is given to the packets of the plaintiffs and the defendants, it would be clear that it is not the biscuit that is highlighted but the word on the packet.
' The learned counsel for the defendants in support of his stand has also urged that if the plaintiff was really keen to preserve his shape, size and design of the biscuit than he should have got the same registered under the Patent and Design Act. By not doing so, it is obvious that in their marketing strategy the emphasis is on the trade marks rather than the shape and design of the biscuits.
' The learned counsel for the plaintiff has propounded a new theory in the concept of passing off by insisting that the design, shape and size of the biscuit would also become the exclusive right of its manufacturer and nobody else can use the same. If this was to be believed, then in my humble view this would affect scores of other similar type of biscuits, not to mention to the have it would create in the Pharmaceutical Industry.
' The learned counsel for the plaintiff has relied upon certain case-laws specially the case of P.I.A. v.
Registrar of Trade Marks reported in 1987 C.P.C. Page 966. In this case it was observed that: "Foundation of a trade mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods, to give an indication to his eye of trade source for which the goods Tome or the trade hands through which they pass on their way to the market."
2. The case of P.I.A. Industrial Co. Ltd., and KIA Motor-Cycle Co., Ltd. v. The Deputy Registrar of Trade Marks reported in 1987 CLC page 1286. Here the Honourable High Court has observed that distinctive mark must mean some mark, which distinguishes the goods, to which it is attached as those made or sold by person who uses the mark. The purpose of the distinctiveness is, that the produce of the particular person may be distinguishable from the other similar goods, that may be manufactured by any other manufacturer, so that there be no confusion or deception caused to the general public. As a matter of fact, this condition of distinctiveness is for the purpose of benefit of the general public, so that they may not be deceived or confused and purchased goods manufactured by 'A' thinking them to have been manufactured by 'B'.
3. The case of Cecil Dr. Cordovan v. Vick Chemical Company reported in PLD 1951 Privy Council at page 109.
4. The case of Reckitt & Coleman Products Limited v. Borden Inc. And others. This case was decided by the House of Lords and reported in 1990 RCP at page 241. In this case the whole dispute was on the concept of "Passing off". Briefly the facts in this need to be mentioned as the plaintiff has placed :great reliance on the same. Both the plaintiff and defendants in that case sold lemon juice in bottle. The defendant's product was being sold with the mark Real Lemon. The defendants decided that the plaintiff was using its profits of plastic lemons to undercut the defendants' prices for their bottled lemon juice and, thus, proposed to introduce a lemon-shaped lemon juice container of their own, three prototype containers were produced. The .Plaintiff, having discovered the existence of the first prototype, began an action for passing off based on get-up. The proposed introduction of the two further prototypes led to further action. At the trial Walton, J. Held" that passing off had been established in both actions and further that two of the defendants had acted with fraudulent intent. Ultimately the Court of Appeals held "The law of passing off could be summarised in one short, general proposition: no man may pass off his goods as those of another. More specifically, it could be expressed in terms of the three elements, each a question of fact, which a plaintiff had to prove in order to succeed. These were:
(a) that there was a goodwill or reputation attached to the goods or services which he supplied in the Mind of purchasing public by association with their identifying getup.
(b) that there was a misrepresentation to the public likely. To lead the public to believe the goods or services offered by him were the goods or services of the plaintiff.
(c) that he was suffering or was likely to suffer damage by reason of erroneous, belief engendered by the defendant's misrepresentation. It was irrelevant whether or not the public was aware of the plaintiff's identity as the manufacturer or supplier of the goods in question, as long as they were identified with a particular source.
5. The learned counsel also had relied on case of Weber-Stephen Products Co. v. Engineering (Pvt.)
Ltd., and others reported in 1992 RPC at page 549 here also the case pertains to pissing of as there was a clash between an Owen Bar B.Q, The shape and design and the particular get-up had acquired certain prominence and obviously, after it had gained prominence, the owner of the same did not wish anybody else to manufacture something similar.
6. The learned counsel has also relied on the case of John Haig & Company Limited v. Forth Blending Company Limited and W.R. Paterson Limited reported in R.C.P. Of November, 1953, at page
259. In this case whisky was sold by both the parties but the plaintiff claimed to have sold the whisky in a shape of bottle which had become popular an over the world. The defendant tried to sell whisky in similar shape of bottle and it was held that they have no right to do so.
' They have also relied on the following case-laws:
(7) Messrs Tabaq Restaurant v. MessrS Tabaq (1987 SCMR 1090),
(8) Tektronix Incorporated v. M. Abdul Marian (PLD 1973 Kar. 14),
(9) Mrs. Rashida and 3 others v. Mrs. Shahzad Kli,anum Malick and 3 others (PLD 1993 Kar, 771),
(10) M/s. Manoj Plastic India v. M/s. Bhola Plastic Industries (AIR 1984 Delhi 441),
(11) Mehtabur Rehman v. Saeed Ahmed and 2 others (1986 CLC 348).
(12) Mrs. Seinab Mahmood and others v. Hamida Khatoon and another (1986 CLC 354),
(13) Syed Muhammad Maqsoon v. Naeem Ali Muhammad (1985 CLC 3015).
(14) Chaudhry Muhammad Amin v. Mst. Zahida Begum (1985 CLC 3018),
(15) Ferozuddin v. Muhammad Shafi and another (PLD 1975 Kar. 486),
(16) Messrs British India Engineering Works Karachi v. The Second Labour Court, Karachi and 2 others (PLD 1975 Kar. 488),
(17) Rexona Proprietary Ltd. v. Majid Soap Works (PLD 1956 Sindh 1),
(18) Sir E-Haroon Jaftar & Sons Ltd., v. Haji E. Dossa & Sons and another (PLD 1956 Sindh 4),
(19) Messrs Chase Mendoza v. Syed Tausif Ahmed Zaidi and 2 others (PLD 1993 Kar. 790),
(20) Telephone Soap v. M/s. Lever Brothers (1994 CLC 2135),
(21) Messrs Aipha Sewing Machine Company v. Registrar of Trade Marks and another (PLD 1990 SC 1074),
(22) Aran Ali v. Dad and 19 others (PLD 1990 SC 1078),
(23) Messrs Montgomery Flour and General Mills Ltd. v. Regsitrar, Trade Marks, Karachi and another (PLD 1973 Kar. 567),
(24) Seven-up Company- v. Kohinoor Thread Ball Factory and 3 others (PLD 1990 SC 313),
(25) Abdul Aziz Noor Muhammad Trading as Aziz Products v. The Seven-up Company (Civil Appeal Nos.40-K and 41-K of 1985),
(26) Federation of Pakistan through Director-General T&T Department, Islamabad and 2 others v.
Muhammad Mubarak (PLD 1990 SC 346),
(27) Glaxo Group Limited and 2 others v. Evron (PVT) Limited and another (1992 CLC 2382),
(28) Zahid Hussain v. Government of Sindh through Secretary Local Government and Rural Department and 5 others (1992 CLC 2396),
(29) Smith Kline and French Laboratories Ltd. And another v. Feroz Sons Laboratories Ltd. And another (1992 MLD 2226),
(30) A.R. Tahir v. Muhammad Ali & Sons (1992 MLD 2234),
(31) M/s. Hindustan Pencils (Pvt.) Ltd. v. M/s. India Stationery Products Co. And another (AIR 1990 Delhi 19),
(32) Surinder Sindh Bindra and others v. M/s. Hindustan Fasteners (P.) Ltd., and others (AIR 1990 Delhi 32),
(33) Messrs G.M. Pfaff A.G. v. Deputy Registrar of Trade Marks and another (1984 CLC 2478),
(34) Allah Bux v. Government of Sindh and 2 others (1984 CLC 2481),
(35) Parks bevis & Company v. The Deputy Registrar of Trade Marks, Karachi (1984 CLC 2623),
(36) Major (Rtd.) Mehfooz Hasan Khan and others v. M.A. Waheed and 2 others (1984 CLC 2625),
(37) Messrs Bubble Up Company Inc. v. Messrs 7-Up U.S.A. (PLD 1975 Kar. 582),
(38) Nazir Ahmed Khan and 2 others v. Muhammad Ashraf Khan and 3 others (PLD 1975 Kar. 598),
(39) Malik Imamuddin v. Maaz Dawakhana Unani and another (1988 CLC 919),
(40) U.P. Church Civil Lines Sargodha v. William Hopper and another (1988 CLC 923),
(41) F.W. Woolworth Company v. The Assistant Registrar of Trade Marks (1992 CLC 1902),
(42) Karachi Building Control Authority v. Muhammad Arif Qureshi, Advocate (1992 CLC 1904).
(43) W. Woodward Ltd. And another v. Hakimullah Siddiqui (NLR 1981 UC 317),
(44) Jamia Industries v. Caltex Oil (Pak.) Ltd. And another (PLD 1984 SC 8),
(45) Ghulam Qadir and others v. Abdul Sattar and another (PLD 1984 SC 12),
(46) Wagner Electric Corporation United States of America v. Paramount Oil and Chemical Co.
Karachi (PLD 1973 Note 68),
(47) Muhammad Sultan Khan v. Ch. Ghulam Rabbani (PLD 1973 Note 69),
(48) The Monarch Company, Inc. v. The Seven-up Company and another (1993 SCMR 758),
(49) Mst. Noor Fatima and another v. Muhammad Shafi and 18 others (1993 SCMR 777).
' In view of what has been stated above and after considering all aspects of the case the injunction application is dismissed.