1. ' This is an Application under Order 39, Rules 1 and 2 whereby the plaintiffs seek to restrain the defendants from infringing/ passing of plaintiffs' trade mark registered in Class 21 under No,86913 or using the trade name "TRISA".
2. ' The brief facts of the case are that the ,plaintiff applied for registration of trademark "TRISA" on 14- 9-1985 in respect of toothbrushes and hair brushes etc. The plaintiffs contend that they had already acquired certain reputation in this field due to marketing of similar goods under the trademark "TRISA" in the same class being registration No,76019. When the Registrar of trademark advertised the said application before acceptance in the trademark journal, the defendant No,1 filed opposition to this application. The opposition was duly heard by the Assistant Registrar of trademark and was dismissed vide order, dated 30-6-1990. Thereafter, the trademark application for mark "TRISA" was allowed to proceed for registration and finally the mark was registered as Trademark No, 86913, dated 14-7-1985. It is stated by the plaintiffs that the defendant No,1 did not choose to file an appeal against the order of the Assistant Registrar Trade Mark, dated 30-6-1990.
3. ' After the expiry of said trademark on 14-7-1992, it was renewed for a further period of 15 years w,e,f, 14-7-1992. The plaintiffs contend that by virtue of trademark "TRISA" having been registered in their name, they have exclusive rights to use the same in relation to the goods in class 21. However, they subsequently found that the defendants with a view to misappropriate the reputation and business goodwill of the plaintiff acquired over many years, have started marketing same goods under the same mark described in the same fashion. The defendant No,1 have also applied for registration of similar Mark under Application No,92656, dated 11-12-1986 in Class 21 and this application is still pending before the Registrar of trademarks. The plaintiffs, therefore, contend that the defendants are, thus, infringing/passing of their trade mark as their own with intention to deceive the public at large into believing that the goods marketed by them are goods in fact emanating from the plaintiffs.
4. ' On the other hand the defendant No,1 contend that they had filed an application for registration of mark "TRISA" in 1986 in Pakistan and in fact the word "TRISA" is an invented word and that they had been using this mark since 1982 in many other countries of the world, at least in 55 of which it is registered as a trademark. According to defendants they did file an opposition to the application of the plaintiffs but upon their application being rejected they chose not to file an appeal but later moved to rectify the Registrar which they have done by filing, Judicial Miscellaneous No,21 of 1997.
5. The defendants contend that they have been in the Pakistan market since 1986 and that their goods are brought from abroad by Pakistanis travelling abroad and, thus, the mark is well-known in Pakistan. As evidence of their user of the mark they state that a number of Pakistani Companies had approached them for rights to manufacture their toothbrushes in Pakistan and initially they had also exported these to Pakistan but due to import restriction imposed by the- Government of Pakistan the export was discontinued. Nevertheless, their ,toothbrushes are available in market and is highly regarded by the customers.
6. ' There is then a definite admission on part of the defendants that defendant No,1 's toothbrushes under name of "TRISA" are indeed being sold in Pakistani Market, thus, to this extent the claim of the plaintiffs is correct. However, the defendant No,l's claim that the right to exclusive use of Trademark is given under section 21 of Trademark Act, 1969 but this is subject to section 25 whereby such right is derogated from by permitting its concurrent use by a prior user. Before dewelling on this argument of defendants, which is their main argument, it may be advantageous to reproduce section 21 and section 25 of Trademark Act, 1969 which reads as under: ' Section 21:---(1) Subject to the provisions of sections 22, 25 and 26, the registration of a person in the register as proprietor of a trademark in respect of any goods shall give to that person the exclusive right to the use of the trademark in relation to those goods and, without prejudice to the generality of the foregoing provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the trademark or 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 use as a trademark;
(b) to import a reference to some person having the right either as a proprietor or as registered user to use the trademark or to goods with which such a person as aforesaid is connected in the course of trade.
(2) A person registered in any (Acceding State or a non-Acceding State) to which section 82-A for the time being applies, as proprietor of a trademark shall have the same rights in respect thereof as are conferred by this section on a person registered under this Act, as proprietor of a trademark."
7. ' Section 25: Nothing in this Act shall entitle the proprietor or a registered e user of a registered trademark to interfere with or restrain the use by any person of a trademark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor-in-title of his has continuously used that trade mark from a date prior---
(a) to the use of the first-mentioned trademark in relation to those goods by the proprietor or a predecessor-in title of his; or
(b) to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor-in-title of his; ' whichever is the earlier, or to object (on such use being proved) to registration of that identical or nearly resembling trademark in respect of those goods under subsection (2) of section 10."
8. In effect what the law of Trademark Act says is that once a mark is registered, the proprietor of the Mark has a right to use the said Mark to the exclusion of every one and in case another seeks to use it then it would be regarded as infringement of the Mark and an injunction can issue to restrain the offending party from using the Mark. However, under section 25 such right to exclude others from using the registered mark may not be available to the proprietor of the Registered Mark if the offending party can show that they are prior users of the Mark i,e, even before the registration of the Mark. Trademark Law being essentially territorial, with certain exceptions, (in which I need not to go into at this stage) presumption would arise that such prior user ought to be in Pakistan and not abroad. This territorial attribute of a Trademark arises from the very nature of Trademark law, the genesis of which lies in the need of a country to protect the local manufacturers from the incursions of foreign entrepreneurs. This law has, therefore, hitherto worldwide supported a certain parochial complexion and it is only recently that globalisation of the economy has imparted to it a different meaning on occasions but such occasions are specific and cannot be lightly presumed.
9. The question then before me is whether prima facie the Defendants have established that they were prior user, of the said mark in Pakistan. The only evidence that the defendants have produced in support of this contention of their is that many Pakistani companies had expressed their desire to the defendant No,1 as far back as 1980 for rights to manufacture their toothbrushes in Pakistan under the mark of "TRISA". They have also produced certain invoices for small amounts to show that their toothbrushes were sent to the agents. The question then arises whether this evidence is sufficient to displace a proprietor of a registered mark. It is obvious that for the right of proprietor of a registered mark to be displaced the prior user must go far beyond the date of registration to be convincing and the user must be so extensive that the rights of the proprietor become suspect on the very face of it. This could be shown by bringing evidence of an extensive advertising campaigns having been launched and of sale of large quantities of the item in question in reputable stores etc., the burden for showing which would squarely rest on the offending party.
10. Such is obviously not the case in this instance. At best the evidence brought on record by the defendants can be regarded to be a half-hearted attempt to introduce their goods in Pakistan Market which too, did not seem to have succeeded. It is for this reason that their opposition to plaintiffs mark was dismissed by Assistant Registrar. Defendant subsequent 'failure to appeal against the decision of Assistant Registrar and then moving for rectification of register after 8 years is in itself a proof of lackadaisical approach of the defendant No,1, which prima facie could be presumed to be occasioned by their lack of conviction about .Their claim.
11. ' The defendants have sought to rely on their alleged trans border reputation of their mark but have brought nothing on record to show existence of such reputation in respect of their toothbrushes under the mark of "TRISA". Whether trans border reputation, which is now greatly talked about in the developed world, is a proposition that can be given effect to under our law of trademarks is a moot point and there is no occasion to decide it here because it is doubtful whether the defendant can lay a claim to it with the evidence that they have brought on record, though they may be able to establish it subsequently at the time of trial. Mere registration of the Mark in a number of foreign countries is no evidence of Trans Border reputation. Need it be said that Trans Border reputation cannot be lightly presumed particularly when it is pitted against a long-standing reputation of registered trademark. Nevertheless it is clear that the mark "TRISA" is certainly not in the same bracket as "wisdom" or "oral B" etc., the better known mark for toothbrushes. The other main arguments advanced by the learned counsel for the defendants relates to absence of user of the mark by the plaintiffs themselves but this is an argument that will be more relevant in Judicial Miscellaneous No,21 of 1998 filed by them for rectification of the mark. At this interlocutory stage I do believe plaintiffs have brought sufficient material on record to show that they have not ceased to use the mark and, thus, do not fall within the parameters of mischief contemplated in section 37 of the Trademarks Act, 1969.
12. ' Defendants' third argument of any importance relates to "fraud vitiates equality". Fraud is a word which is lightly used in our country. Often when people allege fraud against a person all they mean is that the other person has acted against their interests. As it is, fraud requires stringent proof but more so when it is alleged in our surroundings. According to defendants the alter ego of the plaintiffs namely Abdullah Ismail is in the habit of getting popular marks registered in his name such as Boots, McLean's, Forhans etc. And then assigning these to other companies. This may be so but in case of this particular mark i,e, "TRISA" this argument does not hold because the mark is registered in the name of the plaintiffs which is a duly incorporated company. The fact that this mark was advertised as an associated mark of "TRISA" which is registered in the name of the same Abdullah Ismail may cause an eye brow to be raised but it is not such an act which at this interlocutory stage can be regarded to be fatal to the rights of the plaintiff as a proprietor of a registered mark, particularly when Abdullah Ismail admittedly is not the proprietor of the mark "TRISA".
13. ' The defendants have raised many other technical objections such as limitation and acquiescence in use of the mark by defendant No,1, with regard to maintainability of this application and indeed the Suit itself but these again cannot be used to displace plaintiffs' rights without further evidence being led as limitation is invariably a mixed question of fact and law in infringement or passing of actions and acquiescence by its very nature would be a question of fact.
14. ' The parties have cited a number of cases to which I have given due consideration but I have not mentioned them during the course of discussion above so that general flow of argument may not be inhibited. However, for the purposes of record following cases have been cited by the parties.
(i) PLD 1973 Kar.
15. 289.
(ii) 1985 CLC 3015.
(iii) 1996 M LD 120.
(iv) 1995 CLC 436.
(v) PLD 1985 Sindh 354.
(vi) 1985 CLC 3015.
(vii) 1990 M LD 1786.
(viii) PLD 1998 SC 1 (para.46).
(ix) PLD 1997 Kar.357.
16. Having examined the facts of the case and law I am of the view that the continued admitted use of the mark "TRISA" by defendants in Pakistan is bound to cause confusion and deception and is likely to deceive unwary buyers of toothbrushes into believing that these emanate from the Plaintiffs who are admittedly the proprietors of the Registered Mark "TRISA''. Since in law the plaintiffs are entitled to the exclusive use of Mark and other defendant No,1 are admittedly using the same Mark as well, it is obvious that plaintiffs have made out a prima facie case. They are, therefore, bound to suffer great loss if injunction as prayed is not granted and their loss would obviously be greater than that of the defendants inasmuch as the defendants have no right over the mark in Pakistan. The balance of in convenience, thus, is in favour of the plaintiffs and, therefore, I allow plaintiffs' application as prayed. Interim injunction granted.