1. This is an order on application filed by the plaintiffs under Order 39, Rules 1 and 2 read with section 151, C.P.C. The facts relevant for decision of this application are as follows:-- The plaintiff No,1 is the registered proprietor in Pakistan of the Trade Mark 'Vimto', registered under No,1617 in Class 32 in respect of bear, ale, and aerated waters etc. The plaintiff No,2 is the registered user of said Trade Mark in Pakistan, which was registered on 29th October, 1942 and since then is in full force. It is alleged that for the last 39 years the plaintiff No,1 has used said Trade Mark in Pakistan in respect of nonalcoholic beverages and it has acquired great reputation and popularity. The plaintiff No,1 has acquired exclusive right to use it for itself or for any other person. The plaintiffs have claimed that on 2nd April, 1991 it was brought to their notice that the defendants namely Mehran Bottlers (Private) Limited have started manufacturing, selling, and offering for sale syrups under the Trade Mark "PAKOLA VIMTO". According to plaintiffs, the defendants' product bears a Mark which is identical to their registered Trade Mark as such, it is an open infringement of their Mark and use of Mark Vimto by the defendants will inevitably lead to deception and confusion amongst unwary purchasers, who are likely to believe that the defendant's product is manufactured by the plaintiffs or has some connection with the plaintiffs in the course of Trade. It is also their case that use of their Trade Mark by defendants is not accidental or inadvertent, but, in fact, it is a deliberate and fraudulent attempt on latter's part to deceive the public and to earn profit at the cost of goodwill and reputation of the former. The case of defendants is that Registration No,1617 in Class 32 dated 29th October, 1942 is not valid in law and is liable to be expunged under the Trade Mark Act, 1940. According to the defendants, Vimto has never been used in Pakistan as a Trade Mark in relation to any of the goods covered by the alleged registration by either of the plaintiffs in Pakistan. They have maintained that the word 'Vimto' is purely descriptive/laudatory and was lying abandoned since long. It is their case that word 'Vimto' openly and continuously is being used in Pakistan as flavour by a number of manufacturers and traders, including the defendants. According to them, said word has become 'publici juris' and the entries on the register to this effect are liable to be expunged or suitably varied. They have also taken a plea that alleged registration for said word is already under challenge initiated by a Third Party and the same is pending for decision before this Court. They have mentioned that their principal (M/s. Pakistan Beverages Ltd.) are registered proprietors of the trade mark Pakola, under Nos. 12360, 73738, 73739, 33712, all in Class 32, and the defendants are duly appointed and registered users of said trade mark. It is alleged that the principal of the defendants has used throughout Pakistan extensively and continuously said word since last many years in relation to aerated drink within the knowledge of plaintiffs and the latter never objected to such use. According to the defendants, like Vimto, the defendants are also using orange Ice Cream Soda and Ras Berry, as flavours. On 20th February, 1992 ad interim order was passed on this application (C.M.A. No,447 of 1992) against the defendants which is operative till date.
2. Learned counsel for the plaintiffs submitted that since the plaintiffs are the proprietor of said mark, as such, they have exclusive right to use it and are entitled to interim injunction against the defendants till the suit is finally decided. According to section 23 of the said Act, Registration is prima facie, evidence of validity in all legal proceedings relating to a trade mark and a registered trade mark can be exclusively used by its proprietor till the registration continues. It is an admitted position that trade mark of defendants as Vimto has not been registered. In the case of infringement of trade mark, the test is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trade mark as the goods of the proprietor of the trade mark. Initially the onus that the defendants mark is likely to deceive or cause confusion lies on the plaintiff and when ex facie some resemblance is found to exist between two marks then it is for the defendant to establish that two marks are so dissimilar that there is no possibility of anybody being deceived on the basis of defendants' mark. As held in various cases, it is the totality of the mark which is to be taken into consideration. In the instant case, the plaintiffs' registered trade mark is Vimto. The defendants are using word 'Vimto' prefixing their trade mark 'Pakola'.
3. Although the defendants have claimed that they are using Orange, Ice Cream Soda, Rus Berry and Vimto as flavours, but the fact remains that 'Vimto' is a registered trade mark and is to be used exclusively by its proprietors. Besides said registration has become conclusive as to its validity after 7 years of its registration and the plaintiffs are entitled to sue for infringement without being liable to prove user. In the case of. Hiralal Parbhudas v. Ganesh Trading Company, reported in AIR 1984 Bombay 218, the High Court of Bombay, after taking into consideration several decisions of the Indian Supreme Court summed up well-established principles to be observed in deciding the question of similarity of two marks in the following manner:--
(a) What is the main idea or the salient feature?
(b) Marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole.
(c) Overall similarity is the touchstone.
(d) Marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection.
(e) Overall structures, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied.
(t) The purchaser must not be put in a state of wonderment.
(g) Marks must be compared as a whole, microscopic examination being impermissible.
(h) The broad and salient features must be considered for which marks must not be placed side by side to find out differences in design.
(i) Overall similarity is sufficient." Keeping in view the established principles, it is noted that Vimto being the trade mark of the plaintiffs is being used by the defendants of course by prefixing their trade mark Pakola. Under the circumstances, an unwary purchasers, not the intelligent purchaser, is always likely to be deceived for the reason that he will only demand Vimto and is not supposed to provide necessary details about the two trade marks. A strong prima facie case is made out in favour of the plaintiffs and in such situation the balance of convenience goes into the backgrounds. This is for the reasons that the defendants cannot be permitted to take advantage of their own mischief by raising the plea of balance of convenience. Under the circumstances, the plaintiffs are likely to suffer irreparable loss. Mr. Khalil Kazilbash learned counsel for the defendants contended that descriptive mark Vimto has wrongly been registered as invented word, and is liable to be expunged from the register under section 46(4) of the Act. Elaborating it, he submitted that the word Vim means Vigour and by suffixing the word to it does not become an invented word. He also submitted that to be an invented word within the meaning of the Act a word must not only be newly coined in the sense of not being already current in the English language, but must be such as not conveying any meaning or any obvious meaning to ordinary person. In other words, it must be a word having no meaning or no obvious meaning, until one has been assigned to it. For rectification and correction of the register, the proper remedy is to take up the matter before the relevant authority under section 46 of the Act. In injunction application, this point cannot be resolved, least it may have an adverse effect on the case of any of the contesting parties. Mr. Kazilbash learned counsel for the defendants also argued that said mark was abandoned and was never used as a trade mark in Pakistan by the plaintiffs, as such, on this ground also the plaintiffs are not entitled to any relief claimed in the plaint. The question that whether it was or was not abandoned is a disputed fact and can only be resolved after the evidence is recorded. At this stage, above plea cannot be accepted. Learned counsel also argued that the plaintiffs had full knowledge that work 'Vimto' since 12-1-1983 was being used by the defendants to signify flavour, therefore, on this score also the plaintiffs are not entitled to claim any interim injunction against the defendants. The question of delay depends upon the circumstances of each case. The plea of acquiescence can only be invoked when it is established from the circumstances that the plaintiffs had knowledge about it, which, in fact, in this case is yet to be established. Learned counsel for the defendants cited Formica Corporation v. Pakistan Formica Ltd. Reported in 1989 SCM R 361 to contend that the question of infringement would not arise if trade name has become publici juris. Mere adverse user unknown to the owner of the mark will not make the mark publici juris. If the plaintiffs can explain the delay the same will not count against him. Even otherwise, it requires evidence to decide if said mark has or has not become publici juris, which is yet to be recorded. Accordingly, ad interim injunction granted on 20-2-1992 is confirmed till final disposal of the suit.
4. C.M.A. No,447 of 1992 stands disposed of.
5. Interim injunction confirmed. revisions by the competent authorities. Therefore, it is advisable to consult the official sources or legal professionals for the most up-to-date and accurate information.