' NAZIM HUSSAIN SIDDIQUI, J.---This judgment will dispose of Civil Petitions Nos.364-Q of 1999 and 104-Q of 2000. Both these petitions arise from Suit No,21 of 1998 filed by respondent No,1, Messrs Chiltan Ghee Mills (Pvt.) Ltd. (hereinafter referred to as "Chiltan Ghee Mills"), against petitioner, Messrs Mehran Ghee Mills (Pvt.) Ltd. (hereinafter called as "Mehran Ghee Mill") and Assistant Director, Pakistan Standard Institution, Government of Pakistan for declaration and permanent injunction relating to the matter governed by the provisions of the Trade Marks Act, 1940 (V of 1940), hereinafter referred to as 'the Act".
2. In Petition No,364 of 1999, impugned order is dated 15-10-1999 passed by a learned Single Judge in Chamber, High Court of Balochistan in C.M.A. No, 1 of 1999, wherein order dated 22-12-1998 of learned Additional District Judge-V, Quetta was impugned. The order dated 15-10-1999 was passed with the following observations:-- ' "The upshot of the above discussion would be that the appeal being devoid of merit is dismissed with the direction that the appellant may manufacture Ghee, but the same cannot be sold with Trade Mark of Chiltan in any manner. The restriction as imposed on manufacturing of Ghee by learned Additional District Judge-V, Quetta seems to be unlawful in view of the categoric statement made on behalf of Assistant Director, Pakistan Standard Institution, Government of Pakistan that necessary permission for manufacturing of Ghee has been given to the appellant.
The appeal is disposed of accordingly in the terms as mentioned hereinabove. The appellant may use any trade mark except the word 'Chiltan' which cannot be incorporated in any manner in the trade mark which is to be chosen by the appellant himself."
3. In Civil Petition No,104 of 2000, order dated 17-11-2000 of a learned Single Judge in Chamber, High Court of Balochistan, Quetta has been challenged, whereby impugned order dated 30-9-1999 of learned Additional District Judge-V, Quetta was set aside with the direction to trial Court to proceed with the matter in accordance with law after framing the issues and allowing the parties to produce their respective evidence/documents and then to decide the matter, on merits, in accordance with law.
4. The facts relevant for decision of these petitions are that the respondent No,1, Chiltan Ghee Mill, filed said suit stating therein that said Mill was one of the project of Messrs Ghee Corporation of Pakistan (Pvt.) Limited, Lahore (hereinafter referred to as "GCP"), and it was sold by Privatisation Commission through auction, which was purchased by the management of the respondent No,1, without any kind of liabilities, for Rs,49,740 million and its possession was handed over to the said Management on 10-9-1992. According to the plaint, Chiltan Ghee Mill was established in 1974 and started production in January, 1976, Government of Pakistan, however, through GCP in 1976 nationalised all Ghee Manufacturing Units in Pakistan alongwith Chiltan Ghee Mill. In 1992 GCP was denationalised and Chiltan Ghee Mill was purchased by the respondent No, 1 . It is alleged that on 31-12-1986 a Trade Mark Application was submitted to the Trade Mark Registry, Karachi for registration of Trade Mark "Chiltan" under the GCP Logo in Class 29 in respect of Vegetable Oil/Ghee in the name of Messrs Chiltan Ghee Mills and was registered as Trade Mark application bearing No,92834 dated 31-12-1986. However, case of registration remained under consideration till said Mill was purchased by the respondent No, 1.
5. Thereafter, a fresh application was submitted by the respondent No,1 on 13-11-1994 for registration of Trade Mark in Clas 29 in respect of Chiltan Ghee Mill. This application was registered with said Trade Mark Registry, bearing No,127415, dated 13-11-1994 in lieu of Trade Mark Application No,92834 dated 31-12-1986. It is alleged that GCP issued NOC to the respondent No,1 for use of Trade Mark "Chiltan Banaspati" with exception of the word "G.C.P.". The respondent No,1 has claimed that Trade Mark "Chiltan Banaspati" was introduced in the year 1974 and since then it is being used continuously, extensively and has always been very prominently depicted on the Tin Containers of 16 Kg., 5 Kg., 2.5 Kg. 6 Littres and 2.5 Littres, which have always been seen by the public at the time of purchase.
6. It is also the case of respondent No,1 that the petitioner, Mehran Ghee Mill, introduced "Pak Chiltan", which is identical to and/or nearly resembles with the respondent No,l's "Chiltan Banaspati" brand in order to cause confusion and deception in the course of trade, in particular amongst the unwary purchasers. It is alleged unauthorised adoption and use of "Pak Chiltan" by the petitioner is indeed deliberate, dishonest and mala fide to take advantage of goodwill and reputation of the respondent No, 1.
7. The respondent No,1 has claimed that the petition by doing as above has infringed/attempted to infringe of the rights of respondent No,1 in its trade mark and was also responsible for passing off its goods, as that of the respondent No, 1 .
8. The respondent No,1 on above facts and circumstances prayed for the following reliefs:-
(a) a decree for permanent injunction restraining the defendant No,1 perpetually from using the imitated "Pak Chiltan" or any other similar trade mark, livery and get up as may be a colourable or slavish imitation or counterfeit and/or infringement of the plaintiff's treatment "Chiltan Banaspati";
(b) a decree of permanent injunction restraining the defendant No,1 perpetually from using in any manner and selling Ghee and/or any other edible oils and cognate or allied goods/products under the imitated packages livery with the "Pak Chiltan" either alone and apart from the packages or collectively and from using and infringing Chiltan as used by the plaintiff or any colourable imitation thereof, manufacturing, selling, supplying, stocking, importing, exporting, offering, for sale, passing off, advertising or otherwise enabling others to infringe or pass off, offer for sale or use and sell defendant No, 1 's products in particular Ghee and/or any other Edible Oil using the imitated "Pak Chiltan" or any colourable similarity of plaintiff's "Chiltan Banaspati";
(c) a preliminary decree for an account to be rendered by the defendant No,1 of the sale and profits wrongfully made by him from the sale of its products under the impugned "Pak Chiltan";
(d) a decree for withholding the advertisement being made of "Pak Chiltan" through TV, media and hold any other advertisements made or to be made through newspapers;
(e) costs of the suit may also be awarded."
9. The case of the petitioner, in brief, is that respondent No,1 had purchased the assets of Chiltan Ghee Mill only and not the trade mark. The petitioner has alleged that, as per para. 13 of Sale Agreement dated 8-7-1992 between G.C.P. And the respondent No,1, the latter was not to use the G.C.P. Logo after exhausting the then existing stocks taken over from Ghee Corporation of Pakistan but the respondent No,1 continued to use the same get-up and colour scheme of trade mark to cause confusion and deception in the general public of Pakistan, as to establish that said project was still under the affiliation/control of G.C.P.
10. The petitioner specifically pleaded that the suit as framed was not maintainable and claim of respondent No,1 was based upon supposed infringement of trade mark and passing off. The petitioner asserted that it has established a different trade mark under the title of "Bolan and Pak Chiltan" alongwith specific calligraphic style and get-up and earned goodwill with reference to the goods manufactured by it. The petitioner stated that on 29-9-1994 vide Application No,126807, it had applied for Trade Mark "Pak Chiltan" and that the respondent No,1 had submitted application, on 14-11-1994 and the application of the petitioner was prior in time.
11. The respondent No,1 alongwith suit filed an application, under Order 39, Rules 1 and 2, C.P.C.
Which was allowed by trial Court and the petitioner was restrained from manufacturing/selling or marketing, as was prayed, vide order dated 22-12-1998, which was modified by High Court, as per order dated 15-10-1999, the relevant portion of it has been quoted earlier.
12. The petitioner filed an application under Order 7, Rule 11, C.P.C. Which was allowed by trial Court, as per order dated 30-9-1999 and the plaint was rejected. High Court in appeal set aside above order and directed the trial Court to decide the matter, on merits, as mentioned earlier.
13. It is contended on behalf of the petitioner that respondent No,1 could not bring an action for infringement of trade mark on the basis of its pending application. Learned counsel also argued that, likewise the respondent No,1 has failed to establish its case relating to passing off action. He also argued that injunction applications of the respondent No,1 ought to have been dismissed and the order of rejecting plaint by trial Court should have been maintained.
14. We have examined the record with the assistance of learned counsel for the petitioner and the respondent.
15. First, we take up the issue of infringement of trade mark. We have noticed that trade marks of respondent No,1 and petitioner have close resemblance and are likely to cause confusion in the mind of purchaser. The question that whether there has been an infringement or not is to be decided by comparing and placing the two marks together and then to determine about their similarity or distinctiveness.. If the two marks are absolutely identical no further probe is needed and infringement is established. Essential features of the marks shall be looked into for effectively deciding the issue of infringement. To constitute infringement it is not necessary that whole of the mark be adopted. The infringement will be complete if one or more dominating features of a mark are copied out. If there is a striking resemblance, ex facie, it would lead towards the conclusion that the mark has been infringed. There is mark degree of similarity between two marks of this case.
Mark/Label of respondent No,1 has virtually been adopted by petitioner in same. Colour scheme, design and get-up to pass off its (petitioner's) goods; as that of the respondent No, 1 .
16. Next point to be considered is whether temporary injunction could be granted in spite of the fact that trade mark of respondent No,1 has not yet been registered. Under section 23 of the Act, registration of a trade mark is a, prima facie, evidence of its validity. On this point, in the case reported as P.L. Anwar Basha v. M. Natarajan (AIR. 1980 Madras 56), the following was held:-- ' "A suit for infringement of trade mark when an application for registration is pending on the date of plaint is competent even if the trade mark is, registered pending the suit because under section 23 of the Act the date of registration should be taken to be the date of application which the certificate of registration has to bear."
17. It is noted that admittedly, the applications for registration of trade mark of both respondent No,1 and petitioner are pending before the Competent Authority. It is a proven fact that Trade Mark "Chiltan Banaspati" is being used since 1974, while the petitioner has started using its Trade Mark since 1996. Under the circumstances the suit is maintainable for the alleged infringements. A strong, prima facie, case is established, balance of convenience is in favour of the respondent No,1, and said respondent No,1 will suffer irreparable loss if injunction is not granted.
18. As regards passing off action, it is noted that the principle underlying the passing off action is that it is 'unlawful for a trader to pass off his goods, as the goods of another'. Passing off action may be independent as it c may be coupled with infringement. It is maintainable irrespective of the fact that the trade mark is registered or unregistered. Such action is covered by Subsection (2) of section 20 of the Act. For a claim relating to passing off action the plaintiff shall prove that his mark within the scope of definition (t) of section 2 of the Act was not only distinctive but had been continuously in use and the defendant realising the fact that the trade mark of the plaintiff is a valuable asset, in order to deceive The customers, had copied the same. The definition of a mark as given in section 2 is not exclusive but includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof. It is not necessary that the mark, ex facie, shall deceive or confuse, but what is important is the total impact upon a common purchaser. In the case reported as Ferozuddin v. Muhammad Shafi and another (PLD 1975 Karachi 486) reference has been made to Halsbury's Laws of England, Third Edition, Volume XXXVIII at page 594, which reads as follows:-- ' "The consequence of the application of the right to prevent passing off is that a trader, who uses a name or mark or get-up that has become distinctive of his goods, can prevent others using the same or a similar name or mark, where that use will deceive or is calculated to deceive a substantial number of members of the trade or public into thinking that goods, offered for sale or supplied by them are his."
Under the circumstances, the suit is also maintainable on the ground of passing off action.
19. Accordingly, we uphold the order dated 15-10-1999 subject-matter of Civil Petition No,364 of 1999 and order dated 17-11-2000 subject-matter of Civil Petition No,104 of 2000. Both above orders are perfectly correct and not open to any exception.
20. In consequence, leave to appeal is refused and the petitions are dismissed.