1. By this order I shall dispose of C.M.A. No. 114 of 2000. Thisis an application filed under Order 39; Rules 1 and 2, C.P.C., read with section 151, C.P.C. In this application it has been prayed that this Court may be pleased to grant temporary injunction restraining the defendant and or its; shareholders, employees, servants, distributors, agents, stockist, retailers or dealers and all persons claiming through or under them jointly or severally from manufacturing and/or bottling, selling, advertising, stocking, importing, exporting, passing off or advertising defendant's drinks/beverages or other food or drink products using the mark "MARS" in any manner, either alone or with any other word, device or design, till the decision of the suit.
2. Alongwith the application they have filed a detailed affidavit and also Annexures. Against this application a counter-affidavit has been filed by the defendant who has also filed with the counter-affidavit, photo copies of the documents in support thereof. An affidavit in re-joinder has also been filed by the plaintiff. Alongwith this rejoinder once again documents have been attached in support thereof.
3. Briefly the facts of the case are that the plaintiff is a registered company incorporated in the United States of America and carries on business all over the world directly and through its subsidiaries. It further seems that the plaintiff is involved in the manufacture of food products including Chocolate, drinks/beverages, Ice creams, spices, and herbs and confectionaries etc. It has turn over in excess of U.S. 11 billion dollars and its products are used in over 100 countries. The plaintiff employs 28,000 persons all over.
4. Amongst various products that are manufactured, one of the most popular and world renowned mark is "MARS". This trade mark is used by them for Chocolate, chocolate driniks, Ice cream etc. The trade mark "MARS" was first used in England in the year 1932 in relation to chocolates and confectionaries product. Then it was used for chocolate drinks in the year 1986. In the year 1988 it was used in relation to ice cream. In Pakistan the trade mark "MARS", was registered in class 30 since 1949 and in class 29 since 1978.
5. Alongwith the plaint and the injunction application the plaintiff has shown the entire history of the use of the mark "MARS" internationally and in Pakistan. They have also shown the amount of money spent for the promotion of the mark and attempt has been made to show the use of MARS and the products under TM Marks that has been extensively used by the individuals all over the world, as well as officially, specially in sports related activities. According to the counsel for the plaintiff since there was a demand internationally chocolate drink was introduced globally in 1986. They have also attached with the application promotional material of the MARS drinks and also shown the amount spent on its promotion.
6. According to the plaintiff the chocolate bars and chocolate drinks are equally popular and available throughout Pakistan. It is further stated that the Trade Mark "MARS" is synonymous to high quality products manufactured by the plaintiff. It would be appropriate to mention that the corporate name of the plaintiff is also MARS.
7. With the above background according to the plaintiff lots of small and large manufacturers have tried to take advantage of the goodwill of the plaintiff's products and tried to bring into the market their own products under the names of MARS so that the common average person could be duped into thinking that the products purchased are the quality products of the plaintiffs. In this respect the plaintiff has urged that the drink/beverage under the trade marks MARS that the defendant have started selling should be stopped. The outlet of sale according to the plaintiff is the same and in fact both the chocolates and the drinks are stored in refrigerated containers. Hence the chance of the public being mislead into thinking that the defendant's products are in fact manufactured by the plaintiff is verypossible.
8. The defendant whilst arguing the case have insisted that their mark is a registered mark in Pakistan. According to them they had been using the same since 1997. Their mark MARS is registered in class 32 for Soft Drink and the mark of the plaintiff is registered under class 30, hence, there is no question of the mark in class 32 being passed off as a mark in class 30. Even though detailed counter-affidavit has been filed and the defendant has also shown figures of user figures relating to sales, figures relating to publicity that they have conducted over the years creating a distinct market for the products in Pakistan, therefore, the claim of the plaintiff according to the defendant in the suit is not tenable under the law. Alongwith the counter-- affidavit photo copies of documentary evidence in support of their contention have been filed. The first contention of the defendant is that in order to protect `their valuable proprietary rights the defendants applied for the registration of their mark MARS in respect of Soft Drinks. This mark waseventually used/marketed all over the Pakistan. In support of their contentions that it was used the defendants have produced a photo copy of R.T.I. These forms show the sale of the products from Gadoon Amazai Peshawar. The defendant has failed to produce any other forms relating to any other area.
9. The second contentions of the defendant is that after showing their sale figures through invoices and cash memos. That their products related to beverages, and soft drink has applied for and was registered with the trade marks registry- on the other hand the mark of the plaintiff was applied for registration much latter in connection with the same class as the defendant.
10. Once again the defendants have also brought on record certain applications for registrations of the mark MARS for other classes which were advertised before acceptance in the trade mark journal. The defendant in their counter affidavit have claimed that their bona fide marks have been accepted for registration.
11. The lengthy counter-affidavit and the equally lengthy re-joinder has gone round and round in circle but have repeated the same thing. At present juncture since I am seized of an injunction application I have to see whether prima facie, the case is made out by the plaintiff, for grant an injunction.
12. The plaintiff in support of his contention, has argued that his mark is incorporated and used world vide and is considered amongst the 50 leading trade marks in the world. The defendant may not be using the trade marks MARS for candies but he has definitely tried to cash in on the tremendous reputation and goodwill of the mark MARS. Indeed the defendant has. Applied for registration of the mark earlier and that the plaintiff's mark is not registered in class 32 in Pakistan. The controversy is reduced to whether the goods of the defendant can be used by the defendant without creating a dent in the minds of the Public that it is a products of the makers of the MARS chocolates. The plaintiff view points can be reduced as follows:--
(i) What are the principle of passing off and whether defendant's goods can be passed off as that of the plaintiff?
(ii) Whether adoption of trade marks MARS by the defendant is dishonest?
(iii) Whether chocolates and drinks/beverages are different goods?
13. As the plaintiffs case is for infringement of trade mark MARS by the defendant, therefore, reference can be made to a judgment by the Honourable Supreme Court of Pakistan in the case of TABAQ Restaurant reported in 1987 SCMR 1090. , "When the question of grant of interim injunction came up before he District Judge, the trade mark of TABAQ Lahore stood registered-for that reason, if for none else, there was a prima facie case, balance of inconvenience and likelihood of irreparable injury, all in favour of TABAQ, Lahore.
14. The interim order passed by the District Judge was eminently a legal, just and proper order. Hence the appeal (C.A. 65 of 1987) is allowed with costs, the order passed by the High Court- on 28-1-1987 is set asideand the interim order passed by the District Judge on 2-12-1986 is restored.
15. 1988 MLD 460, it has been held at page 462 that:-- "On the question of balance of convenience or inconvenience, when a prima facie case is made out, such a balance recedes into the background as was held in the case of Vicks Chemical Co. v.
16. Hopes Cosmetics and Chemical Works PLD 1957 Lahore 761. Moreover, I feel that where a case of infringement of law is involved, the question of balance of convenience or inconvenience must be judged in the light of policy of law. If there is prima facie infringement, the Court would lean in favour of prevention of the continuance of that violation.
17. It is well settled that Courts have consistently condemned and adoption of foreign trade marks by Pakistani companies or traders.
18. Thus, in Kabushiki Kaisha Toshiba v. Ch. Muhammad Altaf reported in PLD 1991 SC 27 at page 34 at was observed as follows:-- "Applicant had shown no reason tenable at law to pick up invented word of foreign firm enjoying inside the country and outside a reputation for electric goods of various descriptions' the adoption of the same trade mark phonetically in respect of electric fans is bound to create likelihood of confusion and deception to the consumers of such goods. Hence, it is against public interest to register such a trade mark 1981 SCMR 1039 it was held at pages 1042 and 1045. "that fact of appellant having not been selling its products in Pakistan because of import restrictions does not entitle respondent to copy appellant's trade mark since by doing so it deceives public into thinking that its products are products of appellant. Respondent also not proving use of trade mark 'Jocky' being honestly undertaken and such burden lying on respondent to discharge. Registrar, held rightly held respondent to have dishonestly copied appellant's mark and refused respondent's application for registration of such mark."
19. PLD 1990 SC 1074 at paged 1076 and 1077 it was observed as follows: "The learned counsel for the petitioner obviously remained unable to give any satisfactory reply as to why in the presence of an attractive mark of their own, 'Alpha Sewing Machine' Company, the petitioners are keen to have Trade Mark of Respondent No.2...
20. Observation in Montgomery Flour Mill's case (PLD 1973 Kar.567). With regard, to dishonest adoption of trade mark by Pakistani company were approved by the Honourable Supreme Court in the appeal in the case of Seven-up Company v. Kohonoor Thread Ball Factory, reported as PLD 1990 'SC 313 at page 345 in the following words:-- "The applicants for this registration mark had a wide and open field to choose from. They decided upon the trade, name of another which also happens to be name of the company which has heavily invested in that trade name and` goodwill appurtenant to it. With that real likelihood of deception and confusing it w, 3 clearly a case where registration should have been refused:"
21. PLD 1987 Karachi 356 at page 363 it was observed as follows:-- . .
22. "I am, therefore, satisfied that the conduct of the respondent No. l in appropriating trade mark of the applicant who are foreign owners is not proper. The respondent No. 1 had not applied for registration with clean hands ....In a recent conference on Trade Marks and `Patents Intellectual- property as it was termed held at Islamabad the necessity of safeguard to the rights of owners of foreign trade marks and patents was universally accepted. Mr. Justice Muhammad Haleem Chief Justice of Pakistan in his Presidential Address reported in PLD 1986. Jour. 353 has dealt with the subject in a beautiful manner and has urged the need for protecting such rights and at the same time he has taken due note of the interests of the developing countries."
23. PLD 1991- SC 939 at page 951 while dealing with the question whether a mark will cause confusion or deception it was observed that:-- "This criteria become more important where proprietor's trade mark arid trade name are same or any invented word is sought to be imitated. In such circumstances the applicant for registration of similar or identical mark has to establish honestly and bona fides of higher decree. " .
24. It was held in National Detergents Ltd. v. Nirma Chemicals Works reported in 1991 MLD 2357, at pages 2363 and 2364 that:-- "That appellants have not alleged that the first respondents had abandoned any intention to use their foreign trade mark in Pakistan for the goods and such inference cannot also be drawn in this case as the respondents have themselves filed application for registration of their mark and have expressed their intention to use it in Pakistan. The use of the word ,'Nirma' is clearly not bona fide. No appreciable reasons has been shown by the appellants or their counsel except with the intention to cause confusion. The conduct of the appellants in appropriating Trade Mark of foreign owners is not proper. "
25. The plaintiff's suit, apart from infringement of trade mark MARS by the defendant is also based on passing off by the defendant of its goods under the imitated trade mark MARS as that of the plaintiff as it is the plaintiff who exclusively enjoys tremendous reputation and goodwill throughout the world including Pakistan in its trade mark MARS.
26. 1987 SCMR 1090 it was stated approving the statements from Salmond on jurisprudence that:-- "He who by his skill and labour establishes a business acquires thereby an interest in the goodwill of it, that is to say, in the established disposition of customers to resort to him. To this goodwill he has an exclusive right which is violated by any one who seeks to. Make use of it for his own advantages, as by falsely representing to the public that he is himself carrying on the business in question..
27. Special forms of this right of commercial goodwill are 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. He has a similar right to the exclusive use of the marks which he impresses upon his goods and by which they are known and identified in the market as his."
28. "It is an actionable wrong for a trader so to conduct his business, as to lead the belief that his goods or business are the goods or business of another. This wrong is known as. 'passing off'. It is p immaterial, whether the false representation, as to the goods for business involved in passing off, is made expressly by word, or impliedly by the use or imitation of a mark, trade name or get-up, with which the goods of another are associated in the minds of the p public. "
29. "The true basis of the action is that the passing off injures the rights of property in the plaintiff, that right of property being his right to the goodwill of his business. In general the violation of the right to property is actionable, even though it is innocent and no damage has been proved:"- "A mark vouches for the goods which bear it if another person borrows it, then he borrows the reputation of the others too. Unfair Competition may exist not only in the sale of goods of the same character but in the unfair appropriation and use of the trade mark of another."
30. "In Muhammad Ismail v. M/s. Soofi Soap Factory PLJ 1973 Lah. 208 (Copy enclosed as 10) at page 215 para. 26, the law relating to passing off has been stated in a few propositions; (1) -it is unlawful for a trader to pass-off his goods as the goods of another (2) Even if this is done innocently it will be restrained. A fortiori, if done designedly, for that is fraud, ,(4) Although the first purchaser is not deceived, nevertheless if the article is not delivered to him as to be calculated to deceive a purchaser from him, that is illegal."
31. The purpose of this law or concept of passing off is well-explained in AIR 1980 Delhi 254; at 256, para. 12 (Eiora Ind. v. Banaras Days).
32. The purpose of tort of passing off is to protect commercial goodwill, to ensure that people's business reputations are not exploited. Since business "goodwill" is an asset, and therefore, species of property the law protects it against encroachment as such. The tort is based on economic policy, the need to encourage enterprise and to ensure commercial stability. It secures a reasonable area of monopoly to traders. It is thus, complimentary to trade marks law which is founded upon statute rather than common law..
33. " 1239-A. Essential characteristics of a passing off action. "
34. "The essential characteristics which must be present in order to create a valid cause of action for passing off is stated by Lord Diplock are; (1) MRS representation (2) Made by a person in the Course of Trade. `(3) to prospective customer of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trade (in the sense that this is a reasonably seeable consequence and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or a will probably do so. ".
35. The Principle of passing off has been stated by Lord Langdale M.R. As early as 1842 as being:-- "A man is not to sell his own goods under the pretence that they are the goods of another man"
36. (Perry v. Truefitt, 6 Beav, 66= (1842) 49 ER 749).
37. The defendant is selling drinks and the plaintiff chocolates. The defendant's defence is that both are different goods and the general principles of passing off shall not apply for them. Defendant's strongest defence is that its goods, drinks/beverages are different goods from the goods manufactured and sold by the plaintiff (Chocolates). However, plaintiff's drinks/beverages marked with its world famous trade mark MARS are available and offered for sale in various countries of the world including Pakistan. Plaintiff has also made a case for passing off in which case identity or similarity of the goods is not necessary. Defendant's goods need not be the same, they may be allied, cognate or even different. In a passing off action there is no requirement that the defendant should be carrying on a business which competes with that of the plaintiff or which would compete with any natural extension of the plaintiff's business. It is submitted by the plaintiff that the defendant's goods namely, drinks/beverages and the plaintiff's goods (without prejudice to plaintiff's use of MARS in relation to drinks/beverages) namely, chocolates are the goods, of the same or similar description, they are sold through same trade channels, through the same outlets and purchased by the same class of purchasers, therefore, from the common men point of the view, both the chocolates and drinks/beverages are Food Products.
(3) in the famous treatise called, Law of Trade Marks and Passing off P. Narayanan (Fourth Edition), in paragraph No.15.86, with reference to the criteria to determine whether the goods are of same description, it has been mentioned:-- " 15.86 Factors to be considered. The various matters to be taken into consideration for deciding whether the goods are of the same description are: (a)the nature and composition of the goods;
(b) their respective uses and functions; and
(c) the trade channels through which they are bought and sold.
38. (3.1)Applying the above criteria to the goods of the plaintiff (chocolates --and goods of the Defendant Drinks/Beverages), it is clear that both are foods predictors, available at same stores and have a connection in the course of trade or otherwise, their trade channels are same.
39. (3.2) In a recent judgment in the case involving famous trade mark LIPTON, titled Unilever PLC v. R.B.
40. Oil Industries, reported in 1999 MLD 1447, where the goods of plaintiff were "tea and defendant's goods" were Lipton Banaspati it was held:-- "it is true that the plaintiff or its subsidiaries are not producing and marketing Banaspati oil with the Trade Mark Lipton, a glance at the Mark Lipton used by the defendant for its predictors Lipton Banaspat: clearly tends to show that, there is a considerable similarity of get-up, colour scheme, shape, style and device with that of the registered trade mark of the plaintiff who are undisputedly manufacturing and marketing a number of foods items with this trade marks since long. Argument advanced on the face of it may sound to be attractive by reason of non-production of Banaspati oil by the plaintiff Company under its registered trade mark and strictly speaking there may be no infringement of their legal right as to the use of their trade mark for this specific product. The fact, however, remains that by imitating their trade mark extensively the defendant prima facie if not contravening the trade mark in respect of the goods produced by the plaintiff is at least apparently wrongly and unlawfully using their products is in fact produced by the plaintiff Company. Public at large being fully conversant with and by the extensive use of plaintiff's products are quite likely to be duped and gather an impression as if Banaspati Lipton produced and marketed by the defendant is the products of the plaintiff multinational company who have acquired lawful vested right to produce and manufacture various food items with their trade name. The label, color scheme, device style and mark used by the defendant on their product of Lipton Banaspati tends to give prima facie impression that; notwithstanding it he mentions of the defendant-Company's name on the tin packs of Banaspati oil, public at large is most likely to be deceived and form a genuine opinion that their product is the product of the plaintiff-Company which by any stretch of reasoning and logic cannot be ignored to the utter detriment and disadvantage of the plaintiff.
41. After all the defendant has a wide range and open field to choose another name for its product and in case it insists for its production under the trade name of the plaintiff, there is hardly any strong and convincing reason to justify the use of registered trade mark extensively used and enjoyed by the plaintiff-Company for over decades."
5. The leading case in this respect' is PLD 1990 SC 313 (7-Up case 7-Up was not an invented word) wherein at page 345 dealing with beverages (Cl.32) and Pan Masala (C1.30) it has been held that:- - "the fact that the company '7-Up' is a multinational of international repute for beverage and for that reason not likely to engage itself in trading in such an indigenous products may academically be sound for a marketing analyst and really of no or very little concern to the class of consumers served by these products. Their sale points and outlet points are quite often the same. The consumers served are largely of the same category. Both the products though classified differently for the purpose of trade mark fall, from consumers point of view, in the same category of light refreshment of Re-preparations. Their features do make out a case of there being likelihood of confusion or deception with regard to their source. The applicants for this registration mark have a vide and open field to choose from. They decided upon the trade name of another which also happens to be the name of the company which has heavily invested in the trade name and goodwill appurtenant to it. With that real likelihood of deception and confusing it was clearly a case where registration should have been refused."
(4) In the case reported as PLD 1990 Supreme Court 107-4 at page 1076 (Philips case Philips was not an invented word) the Supreme Court approved the following finding of the High Court "
42. (6-1) It is not uncommon nowadays to find sewing machines being sold at the same shop where household appliances manufactured by respondent No.2 bearing Trademark Philips are offered for sale...
43. "If any purchaser of sewing machine were to be offered for sale a machine manufacture by the appellant bearing the mark Philips, he would naturally take it to be a product of respondent No.2 and with the image of quality which he has in his mind regarding respondent No.2's products he might readily buy it only to find soon afterwards that he had been duped and cheated. There is every likelihood of causing of deception and confusion with the use of the mark Philips by the appellant and in such case different nature of goods loses relevance.
44. And then at page 1077 it was observed as follows:------ "He contended that our law recognizes and also protects trade mark in relation to goods and not independently of goods. Therefore, if the respondent No.2 is not manufacturing sewing machines or goods like sewing machines, the petitioner could legitimately claim and obtain the registration in question. The proposition is not that simple. Even then the question of deception and confusion could not be ignored as that remains the pivotal point in our law on the issue involved in this case."
45. 7.In PLD 1991 Supreme Court 27 at page 33 (Toshiba case) paragraph No. 8 the Honourable Supreme Court held as follows:-- "The view taken by the Registrar of Trade Marks that not only the trade mark has to be identical/similar but also the goods covered by the trade mark have also to be identical/similar, is not in accord with law, after the similarity of the trade mark was established and phonetically it was found to be identical. "
8. In the case of Unilever Ltd. v. Sultan Soap Factory reported as PLD 1991 Supreme Court 939 at page 951 it has been held as follows:-- "It is now well-settled that it is not necessary that the goods of both the parties may be the same.
46. However, in case where goods are different the ultimate object of finding out confusion and deception is to be judged on consideration whether the name of the owner of the registered mark is so much associated with the goods that if same or similar mark is registered, the purchaser will take the goods under such mark in the normal course, the product of the proprietor of the registered mark. Therefore, in such case besides identical nature or similarity of trade mark the governing factor is the association of proprietor's name with the goods, its reputation and goodwill.
47. The case of 7-Up PLD 1990 SC 313 and Alpha Sewing Machine's case PLD 1990 SC 1074 illustrate this conclusion. The criteria become more important where proprietor of trade mark and trade name are the same or any invented word is sought to be imitated. In such circumstances the applicant for registration of similar or identical mark has to establish honesty and bona fide of higher degree.
48. The counsel have relied on the following case-law:--
(1) PLD 1968 Kar. 369.
(2) CLC 1986 Kar.1636.
(3) PLD 1990 SC 313.
(4) PLD 1990 SC 1074.
(6) 1992 MLD 2307:
(7) AIR 1969 Bom. 24.
(8) AIR 1986 Delhi 329.
(9) AIR 1994 Delhi 239.
(10) AIR 1985 Allahabad 242
(11) AIR 1944 Lahore 386.
(12) AIR 1983 Punjab 418.
(13) 1992 MLD 2307.
(14) 1973 R P C 560 (15)1983 FSR 155
(16) 1992 RPC 529.
(17) 1997 RPC 155.
(18) 15 RPC 105.
49. Therefore, in view of the above keeping in mind the fact that the petitioner's mark enjoys any international reputation and in case, if the injunction application is not granted then it shall encourage all other types of organizations to take advantage of the popularity of such internationally known marks and claim that they are either previous users or their mark is registered vis-a-vis the international mark. Since at the present juncture one is only to appreciate whether prima facie a case is made out or not relying on the above noted case-laws and the observations made therein the injunction application is granted prayed.