1. ' This is an application on behalf of the plaintiff for restraining the defendants by themselves or through their employees, servants, agents, distributors, stockiest from manufacturing, supplying, stocking and selling their preparation under mark 'KAYPOL' or other mark similar to or resembling mark 'CALPOL' of the plaintiffs, from using labels, boxes or cartons same as or similar to Annexures 'D' and 'E' to the plaint or similar to or resembling those of plaintiffs Annexures 'B' and to the plaint.
2. ' The application has been filed in a suit for restraining infringement of registered trade mark and passing off goods and for compensation and damages valued at Rs,500,000.
3. ' The case of the plaintiffs is that the plaintiffs carry on business inter alia of manufacture, sale and supply of medicines and of pharmaceutical and medical preparations products -and substances which are popular and well-known for their standard and quality. Plaintiffs in respect of their business own trade mark "CALPOL". This mark is registered in United Kingdom and other countries of the world. The mark 'CALPOL' is registered in Pakistan under No,44074, dated 28-8-1965 in class 5 and registration is renewed for 15 years from 28-8-1987 up to 28-8-2002 and is valid and subsisting. Plaintiffs have by licence permitted their subsidiary company Welcome (Pakistan)
4. Limited, to manufacture, sell and supply the said preparation or product in Pakistan and also by licence permitted them to use the trade mark. By reason of which goodwill generalized by use of the said trade mark by the subsidiary has accrued to the plaintiff. In 1986 the production was 8473014 bottles and their value Rs,31,428,736. The said preparation is Paracetamol Pediatric Suspension for relief of pains and fever among children and is marketed and sold and popular in Pakistan under mark 'CALPOL' also pronounced 'CAPOL' contained in bottles of 60 ml. With labels as per photo marked 'B' and each bottle packed in highly distinctive paper box or carton. The box has distinctive red and white color and incorporates a photograph of a mother holding her child. Trade Mark 'CALPOL' is printed in red lettering on a white background. Beneath the said trade mark are printed the descriptive words "Paracetamol Pediatric Suspension" in black lettering and the expression relieves "PAIN and FEVER" also printed in black with the words "PAIN and FEVER" also printed in block letters so as to make them stand out.
5. ' It is alleged in the affidavit that the-plaintiffs recently came to know that the defendants have also started making preparation which they have also represented to be Paracetamol Pediatric Suspension for relief of pains and fever among children and which are marked 'KAYPOL' and are contained in bottles with labels as per photo marked 'D' and packed in paper box marked 'E annexed to the affidavit. The defendants have represented their preparation the same as that of the plaintiffs. They have represented their mark 'KAYPOL' in imitation of and phonetically same as or closely similar to that of the plaintiffs. They have also imitated and adopted distinguishing or leading characteristic or features of plaintiff's label, namely, the device of "mother and child" or "woman and child". Its placing colour scheme get up wordings and their placing on the label in imitation of and to make their label almost same or similar to label of the plaintiffs with intent to represent their goods as goods of plaintiffs. The preparation of defendants is counterfeit and spurious drug and its manufacture and sale is prohibited by law. It was pleased that the product of the plaintiffs under their mark and in bottles bearing labels packed in boxes as in suit much before its registration in Pakistan in 1965 and also thereafter. The plaintiffs have been doing so continuously and have acquired custom business, reputation and standing as such owing to efficacy and standard of quality of their product which the plaintiffs are maintaining and improving by research. Analytical expertise and highly sophisticated quality control measures as detailed in para.10 of the plaint. The defendants have by use of the mark 'KAYPOL' on their product infringed the registered trade mark of the plaintiffs and by imitating and adopting the device, its placing colour scheme, get up wording and their placing from labels and boxes of plaintiffs have played deceit and fraud upon the plaintiffs and consumers by passing off their preparation or product as of the plaintiffs and injured them in their custom, business, trade and reputation.
6. ' In the counter-affidavit filed by the defendants, it is alleged that the defendants are manufacturing company since 1935 at Karachi and manufacturing the said Paracetamol Paediatric Suspension since long. It is alleged in the counter-affidavit that under the Drugs Act, 1976 the defendants were granted Registration No, 003410 on 4-11.978, however, the defendants have applied. For brand name of their product as per policy of Federal Health Ministry and were granted the brand name KAYPOL by Ministry of Health Special Education and Social Welfare (Health Division) Government of Pakistan. Islamabad vide Letter No, F. 1-23/85/11, dated 17-4-1986. It is further alleged that he product of the defendants is quite different to the product of the plaintiffs which can easily be distinguished. The defendants are Manufacturing Paracetamol Pediatric Suspension under law like other manufacturing companies. It is denied that the defendants have imitated and their labels boxes are almost same or closely similar to those of the plaintiffs. It is also denied that the defendants have imitated and adopted the leading or distinguishing or characteristic feature of plaintiffs and label as their mark and label to make the same as similar to those of plaintiffs with intent to cause confusion and to deceive and pass off their preparation or product as preparation or product of plaintiffs.
7. ' From the pleadings of the parties and from the evidence so far adduced the following facts emerge out. Plaintiffs are companies registered under the laws of United Kingdom and defendants are registered under the Companies Act, 1913. The plaintiffs and defendants both are engaged in the sale and manufacture of medicines and medicinal preparations. The mark 'CALPOL' is registered in the. United Kingdom and other countries of the world. On 28-8-1965 the trade mark 'CALPOL' was registered in favour of the plaintiffs. This registration was renewed for 15 years from 28-8-1987 up to 28-8-2002. The plaintiffs have by licence permitted their subsidiary company, Wellcome (Pakistan) Limited to manufacture, sell and supply the said preparation or product in Pakistan and also by licence permitted them to use the trade mark. The said preparation is Paracetamol Pediatric Suspension for relief of pains and fever among children and is marketed and sold and popular in Pakistan under mark 'CALPOL' also pronounced 'CAPOL' contained in bottles of 60 ml with labels as per photo marked 'B' annexed to the plaint and each bottle packed in highly distinctive paper box or carton. The box has a distinctive red and white colour and incorporates a photograph of a mother holding her child. Trade Mark 'CALPOL' is printed in red lettering on a white background. Beneath the said -trade mark are printed the descriptive words.
8. "Paracetamol Paeuiatric Suspension" in black lettering and the expression "relieves PAINS and FEVER" and the words "PAINS and "FEVER" printed in block letters so as to make them stand out. The defendants have started making the preparations which they have also represented to be Paracetamol Paediatric Suspension for relief of pains and fever among children and which are marked 'KAYPOL' contained in bottles of 60 ml with labels as per photo marked 'D' annexed to the plaint and packed in paper box. The box has a distinctive red and white colour and incorporates a photograph of a mother holding her child. Admittedly the defendants' trade mark has not been registered under the Trade Marks Act, 1940.
9. ' The dispute between the parties centres round these questions : when did the plaintiffs and defendants start manufacturing their respective preparations under their respective trade mark; whether the plaintiff's started using their trade mark earlier or defendant's started using their trade mark earlier; whether prima facie there is visual or phonetic similarity between the plaintiffs' and the defendants' trademarks and whether even if such similarity exists, prima facie the plaintiffs should be granted interim injunction during the pendency of the suit.
10. ' Mr. Muhammad Farrukh Irfan Khan the learned counsel for the plaintiffs urged that once a prima facie case has been established, the appropriate relief of injunction is to be granted. In matters of infringement of trade marks, the balance of convenience is to be seen not from the point of view of the plaintiff's or the defendants but also from the point of view of the purchasers and in order to ensure purity in trade and prevent public from getting what they do not want relief of injunction is the only appropriate relier.
11. ' Mr. Latifur Rehman, Advocate for the defendants urged that; the plaintiffs have failed to establish their case pleaded in the plaint, and therefore, they are not entitled to any interim injunction. In respect of primafacie the argument of Mr. Latifur Rehman was that the trade mark used by the plaintiffs and the defendants are visually an phonetically dissimilar and, therefore, there is no infringement of the plaintiff's trade mark by the defendants. The learned counsel pointed out that the spelling of the two words is different and their pronunciation is also different. On this basis it was urged that there is no visual or phonetic similarity between the two trademarks. With regard to visual similarity it was further stated that the paper box of the defendants medical preparation "KAPOL" invariably contained the SQUARE with (KC) which is very conspicuous on the paper box itself while the plaintiff's paper box contained word Wellacome with Horse. The learned counsel, therefore, urged that in view of the difference on the paper boxes of the plaintiffs and defendants even an illiterate person can distinguish the plaintiff's "preparation" from the defendant's "preparation".
12. ' In deciding the question of prima facie case, it has to be remembered that the plaintiff's case is primarily based on infringement of the registered trade mark. Of course the plaintiffs had made allegations with regard to passing off the defendant's goods as those of the plaintiff's. ' Under section 21 of the Trade Marks Act, 1940 (hereinafter referred to as the Act) the registration of person in the register of proprietor of a trade mark in respect of any goods shall give to that person the exclusive rights to the use of the trade mark in relation to those goods and that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembles it as to likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered.
13. ' I have already indicated hereinabove that while the plaintiff's trade mark is registered, the trade mark of the defendants is not registered. This registration gives to the plaintiffs exclusive right to use the trade mark and that right is to be deemed to be infringed by any person who not being the proprietor of the trade mark or registered user thereof 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. Section 21 of the Act points out two exceptions against the exclusive right of user. One exception is in favour of the proprietor of the trade mark and the other in respect of a registered user using the trade mark by way of permitted use. The defendants have not set up any case of permitted use.
14. ' As indicated hereinabove the plaintiff's trade mark was registered on 28-8-1965. According to the plaint the plaintiff's trade mark is registered in United Kingdom and other countries of the world and has been using the trade mark since 1965 in respect of Paracetamol Paediatric Suspension. In the year 1986 the production was 8473012 bottles and their value Rs,31, 428,736. This indicates that the production of the plaintiffs in respect of their preparation 'CALPOL' was quite high. The defendants on the other hand have not given the figures of sale in respect of their preparation sold under the Trade Mark 'KAYPOL'. In the absence of the figure of sales of the defendant's preparation, it cannot even be said that the defendant's preparation has acquired any appreciable market. Thus, the defendants have failed to establish that they are the proprietor of the disputed trade mark.
15. Therefore, the defendants cannot take advantage of the exception pointed out by me hereinabove.
16. It is, however, clarified that this finding is based on the material so far availabel on the record and is only a tentative finding.
17. ' According to Kerlay's Law of Trade Marks and Trade Names, 12th Edition, paragraph 17-08: "Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind of both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was acquainted. Thus, for example a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.
18. Moreover, variations in details might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
19. It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered trade mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case I find that the bottles and the paper boxes are practically of the same size. Both bottles contain 60 ml approximately. The colour scheme is same, i,e, red and white colour. The essential features of both are that there is a mother holding her child. Trade Mark 'CALPOL' is printed in red lettering on a white background, while in defendant's mark 'KAYPOL' is printed in red lettering on a white background.
20. Beneath the trade marks (CALPOL/KAYPOL) are printed the descriptive words Paracetemol Paediatric Suspension in black lettering and the expression relives "PAIN AND FEVER". The words 'CALPOL' in one and 'KAYPOL' on the other occupying a prominent place with a good deal of similarity between the two writings. Any one, in my opinion, who has a look at one of the boxes or cartons or bottles may easily mistake the other if shown on another day as being the, same article which he had seen before. If one was not careful enough to note the peculiar features of the paper boxes or carton or bottle on the plaintiff's goods, he might easily mistake the defendant's goods for the plaintiffs if shown to him sometime after he had seen the plaintiffs: In this view of the matter I am of the opinion that the bottles paper boxes/cartons are very similar to each other and are likely to cause deception and confusion in the minds of the unwarry purchasers.
21. ' In view of the above, prima facie, the defendants seem to be guilty both of infringement of the trade mark and passing off. The concensus of the authorities appears to be in favour of restraining the defendants from using the trade mark which is deceptively similar to the plaintiff's trade mark, once the plaintiffs have made out a prima facie case in their favour. I have already held above that the plaintiffs have made out a prima facie case in their favour. The plaintiffs are, therefore, entitled to the interim injunction prayed for. I have already pointed out above that the defendants have not placed on record their figures of sales and, therefore, it is not possible to call for any.Security from the plaintiffs.
22. The learned counsel for the defendants contended that 'KAYPOL' has been registered under the Drugs Act. I am of the opinion that mere registration of medicine with Ministry of Health under Drugs Act, 1976 could not immunise the defendants against claims of the plaintiffs under Trade Marks Act.
23. ' In the result the interim order is made absolute. During the pendency of the suit, defendants, their employees, servants, agents, distributors, stockists and all other persons acting on their behalf are restrained from manufacturing, supplying, stocking and selling their preparation under Mark 'KAYPOL' or other mark similar to or resembling mark 'CALPOL' of the plaintiffs. The defendants are further restrained from using labels, boxes or cartons, same as or similar to Annexures 'D' and 'E' in the plaint or similar to or resembling those of the plaintiff's Annexures 'B' and 'C' in the plaint. I further make it quite clear that the suit is pending for decision on merits and none of the above observations regarding grant of temporary injunction are to be taken into account in deciding the question of permanent injuction to the plaintiffs in the suit. Interim injunction granted.