1. ' By this Order, I intend to dispose of C.M.A. No,26363 of 2001 under Order 39, rules 1 and 2, C.P.C., C.M.A. No,4885 of 2001, under Order 39, rule 4, C.P.C. In Suit No,369 of 2001 and C.M.A. No,6092 of 2001 under Order 39, rules 1 and 2, C.P.C. In Suit No,1109 of 2001. In both the suits same plaintiff has filed suit against different set of defendants. However, facts and law involved in both the matters are common.
2. ' Before adverting to the merits of the listed applications, brief resume of the facts will be necessary to appreciate the contentions of both the parties. Plaintiff claims to be the proprietor and originator of N.B.N. Trade mark in respect of Ball and Taper Bearing. It is the case of the plaintiff that he adopted the said trade mark in the year 1997. He had applied for registration of the said trade mark on 21-8-1999, pending registration. Plaintiff also claimed to have applied for registration of copyright in respect of artistic work label/raper under the title NBN on 10-2-2000. The case set up by the plaintiff is that being proprietor of the said mark he possesses exclusive right to the use of said trade mark in respect of Ball and Taper Bearing, which he gets manufactured from China. It is asserted that the Chinese Manufacturer had given no objection for registration of Trade Mark NBN in favour of the plaintiff. Grievance of the plaintiff is that the defendants in Suit No,369 of 2001 and defendant No,2 in Suit No,1109 of 2001 also belonging to the same trade feternity have no right to copy the Mark N.B.N. And/or to import the goods under the same mark and description. In Suit No,1109 of 2001 Collector of Customs Appraisement, Customs House. Karachi has also been made a party to seek restraining orders not to clear the goods imported by the defendants therein which bears the Mark N.B.N. In terms of section 15(e) of the Customs Act.
3. ' Applications under Order 39, rules 1 and 2, C.P.C. In both the suits were filed to seek restraining orders against the private defendants from using the subject trade mark and/or importing the similar goods under the subject mark of which the plaintiff claims proprietorship. Defendants in defence to the injunctive relief pleaded (i) subject mark is not registered, (ii) said mark is common to the trade, (iii) the plaintiff is not the proprietor of the subject mark, and (iv) defendants are prior user than the plaintiff, who claimed to have adopted the mark in the year 1997.
4. ' It was also asserted that even the Subject Mark N.B.N. Is a copy of well-known Japanese Mark N.T.N.
5. ' Ms. Navin Merchant, learned counsel for the plaintiff argued that the plaintiffs rights are protected both under the Trade Marks Act as well as under the Copyright Act. She conceded that the Trade Mark "N.B.N." is not registered as yet. It is contended that under subsection (2) to section 20 action for passing-off is maintainable, where it is established that any person is passing off the (sic) another person. In this case it is her contention that the defendants are (sic) goods. Ms. Navin Merchant asserts that the plaintiff is also entitled for protection under section 15 of the Customs Act which confers power on the Customs Authorities not to allow release of the goods bearing counterfeit trade mark or a false description. It is further urged that in case of parallel import of goods, first importer has prior right, as doctrine of exhaustion is attracted. Learned counsel for the plaintiff relied upon the following case-laws (1) Sunder Parmanand Lalwani and others v. Caltex (India) Ltd., (AIR 1969 Bombay 24), (2) The Imperial Tobacco Company of India Limited v. Albert Bonnan and Bonnan & Company (1924 Privy Council 18) and (3) Colgate Palmolive Limited and another v. Markwell Finance Limited and another (1988 RPC 283).
6. ' Mr. Muhammad Aslam, learned counsel for defendant No,2 seriously contested the claim of the plaintiff. It was contended that the plaintiff has made a false claim as to the proprietorship of the said trade mark. It was contended that the goods with subject trade mark are readily and freely available in open international market. Large number of manufacturers in China and Taiwan are producing Ball and Taper Bearings of various specification. Same are offered to the traders in Pakistan and so also around the world. He drew my attention to Annexures 'B', 'D/2' and E/2' to the written statement to demonstrate that the same manufacturer from whom the plaintiff is importing the goods have offered the very goods with subject trade mark to the private defendants. It was, therefore, argued that subject goods are common to trade. He also drew my attention to various invoices much anterior to the year 1997 when the plaintiff claimed in para.2 of the plaint to have adopted the subject trade mark. Aannexure 'D/5' to the written statement is an application for registration of the same trade mark by one Shakeel Traders. Mr. Muhammad Aslam, learned counsel for the defendant No,2 also asserted that the plaintiff through public notice annexed with the plaint as Annexure V' falsely claimed to be registered proprietor of the subject trade mark in Print Media and Trade Journals. It was contended that such false representation being an offence in terms of section 68 of the Trade Marks Act, 1940 and in this view of the matter he submitted that, the plaintiff is liable to be prosecuted as he has not come to this Court with clean hands. He prayed for the dismissal of the application.
7. ' Mr. Raja M. Iqbal, learned counsel for the defendant No,1 raised serious objection as to the maintainability of the suits as against the defendant No,1 in person who according to him cannot be sued in its official designation or title and is hit by section 79 of the Code of Civil Procedure, 1908.
8. In support of his contention, he has relied upon the case-laws as reported in (1) Secretary, B.&R., Government of West Pakistan and 4 others v. F azal Ali Khan (PLD 1971 Karachi 625), (2) Province of the Punjab through Member. Board of Revenue, (Residual Properties), Lahore and others v.
9. Muhammad Hussain through Legal Heirs and others (PLD 1993 SC 147) and (3) Haji Abdul Aziz v.
10. Government of Balochistan through Deputy Commissioner, Khuzdar (1999 SCMR 16).
11. ' Learned counsel for the plaintiff in rebuttal submits that this being mere irregularity and is curable, same may be corrected by the Court. Striking out the plaint as against defendant No,1 will not affect merits of the case as essentially dispute is between private parties. Let plaintiff make proper application to such an effect, same will be disposed of on its own merit, therefore, at this stage I do not deem it necessary to decide such contention.
12. ' Arguments of learned counsel for the parties were heard at great length, I have perused the material brought on record.
13. Trade mark applied to a property itself is a property. Explanation to section 54 of the Specific Relief Act, recognizes trade marks as property. It is valuable intangible property and cannot be allowed to be encroached upon by any person. Under section 21 of the Trade Marks Act, 1940 a registered owner has exclusive right to the use of the trade mark in relation to the goods with which it is reputed to be associated. Admittedly, the mark N.B.N.' subject-matter of the suit is not registered.
14. Therefore, the plaintiff cannot claim any infringement of the mark, at the best plaintiffs claim falls on 'Passing-off action recognized in terms of section 20(2) of the Trade Marks Act, 1940. Ms. Navin Merchant, learned counsel for the plaintiff placed reliance on Ferozuddin v. Muhammad Shafi and another (PLD 1975 Karachi 486) and Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant (1987 SCMR 1090) to assert that where the plaintiff is able to show he is the user of a particular mark and the application for registration is pending such circumstance do give right to the plaintiff to seek injunction. It is true that in terms of section 14 right to use a trade mark vests either in a person who is the proprietor of the mark or who proposes to use a mark and apply in writing to the Registrar, which apparently the plaintiff has done. Contention of Ms. Navin Merchant that since the foreign manufacturer has given no objection for the registration of the subject mark to the plaintiff, therefore, plaintiff possesses better right and title to claim proprietorship in the subject mark and doctrine of exhaustion is fully attracted. Arguments appear to be persuasive. 'No objection' issued by the foreign manufacturer, which is Annexure 'A/2', dated 3-11-1999 to the plaint. Such 'no objection' is merely a disclaimer by one Nigbo Teke Bearing Company Limited, China. This certificate does not show that the said company is registered proprietor of the subject mark in her homeland. Same company is exporting similar goods to the private defendants as reflected from invoices placed on record. Besides the said company, defendants have placed on record invoices and brochures of other companies manufacturing the similar product under the same trade name. Doctrine of exhaustion is not attracted in this case for more than one reasons. First plaintiff's claim is not based on said doctrine, secondly plaintiff himself claimed to have adopted the mark in 1997, when prima facie, it appears from material on record that defendants were importing and trading same goods with same mark even prior to adoption by the plaintiff.
15. ' Under section 10(2) of the Trade Marks Act, even the registration of trade mark which are identical or nearly resemble each other in respect of the same goods or description of goods are permissible to be 1 registered favoring different proprietors. There appears to be, prima facie, honest and concurrent user of subject mark by the private defendants. Another important provision that may be relevant for the purpose of deciding the listed applications is section 79 of the Trade Marks Act, 1940 which for convenience is reproduced as follows.
16. "Trade usage, etc., to be taken into consideration.---In any suit or other proceeding relating to a trade mark, the Tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade marl: or get-up legitimately used by other persons."
17. From a bare perusal of the above provision, it follows that a particular trade mark common to the trade, when largely used unhindered by more than one person in the same trade it becomes public injuries and all traders in the same field can claim their right on it for reference one can refer to Andhra Perfumery Works v. Karupa Surya Narayan (AIR 1969 Mad. 129).
18. Exclusive rights to use trade mark by virtue of registration is conferred on a proprietor in terms of section 21 of the Act are subservient to exception as provided under sections 22, 25 and 26 of the Trade Marks Act. Exclusivity to use mark recognized under section 21; however, does not affect the right of a prior user, may it be unregistered. It, therefore, follows that right in a trade mark created by prior user despite non-registration is superior right recognized under section 25 of the Trade Marks Act, 1940 which runs as follows: "Saving for vested rights.---Nothing in this Act, shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark 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 trade mark 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 trade mark in respect of those goods under subsection (2) of section 10."
19. Admittedly, the plaintiffs mark is not registered. His application for registration is pending. Plaintiff cannot claim a better right and title in a trade mark then a registered trade mark holder, whose right as discussed above are subservient to the exception provided under sections 22, 25 and 26 of the Act. The right, if any, that could be claimed by the plaintiff is of "passing-off action" on the basis of pendency of the application. Therefore, right to agitate passing-off action is also subservient to the right and exception as provided under section 10(2) and sections 22, 25 and 26 of the Trade Marks Act, 1940.
20. ' Reliance on a case of Colgate Palmolive Ltd. And another (supra) by the plaintiff is of no avail. In this case though the same goods were imported by the traders in U.K. Manufactured by a Brazilian subsidiary of American parent company of U.K. Subsidiary. It was brought on record in said case that the imported goods under the same brand name were of inferior quality and did not subscribe to the British standard as reputed to be attached with the goods of same brand manufactured and marketed by the U.K. Subsidiary and that the licence of Brazilian Company was subject to territorial limits which was flouted. Under the peculiar circumstances, the High Court of Justice, Chancery Division, extended the injunction against the parallel import. In case where the goods are being imported in Pakistan by more than one importers it would be difficult for any of the importer to appropriate the trade mark of foreign origin without there being any evidence on record to the effect that a party is importing particular goods under a licence from the registered holder of a foreign trade mark. More particularly in a case where the mark in question itself is stated to be a limitation of "NTN" a mark of Japanese origin, which is also registered in Pakistan. It is settled proposition in law that the imitator cannot claim any right or protection under the Trade Marks Act (for reference see 1991 CLC 382).
21. ' I was able to lay hand on a case from Pakistani jurisdiction, regarding parallel import cited as Messrs Ghulam Muhammad Dossul & Company v. Messrs Vulcan Company Limited (1986 MLD 886). Injunction was sought by the plaintiffs therein, against the defendants from using the Trade Mark "ARMINIUS" in respect of revolver imported by the defendants from a firm in West Germany.
22. Various dealers in Pakistan were importing the arms from the said source. The application for injunction failed. Such decision was upheld by the apex Court as reported in Messrs Ghulam Muhammad Dossul & Co. v. Messrs Vulcan Co. Ltd. And another (1984 SCMR 1024).
23. ' Case of the plaintiff is still on a lower pedestal. In "ARMINIUS's case" the plaintiff therein had obtained the registration of a trade mark in their favour. Whereas, in the instant suit admittedly such registration has not yet been extended to the plaintiff.
24. ' From the documents that have been produced on record, making a tentative assessment, it appears that one Yaiyah Traders, Faisal Corporation. Waseem Autos and HAICO are also importing similar goods under the same trade name and mark. Defendants have placed on record a Brochure of Bey Erl Lin Trading Co. Ltd., Taiwan offering Ball Bearing under various brand names including the one in issue. Defendants have also placed copies of the commercial invoice of the same product with same mark organization from China Ningbo Cixi I/E Corp., 269 Sishan Road Cixi, Ningbo P.R. Of China.
25. From the various documents referred to above, it is apparent that prima facie, same mark is being used by other persons associated in the same trade even prior to a date when plaintiff in 1997 decided to adopt the same. Contention of learned counsel for the plaintiff that he is the originator and proprietor of the subject mark which had been adopted by him since 1997, under the circumstances, is indeed doubtful. As the private defendants, prima facie, were able to demonstrate that the said trade mark is common to the trade use and there has been unhindered concurrent as well as prior user of the subject trade mark by various traders. Plaintiff's claim of exclusive proprietary right under the circumstances at the present juncture appears to be doubtful.
26. ' Under section 68 of the Trade Marks Act, 1940 penalty for falsely representing a trade mark as registered is punishable with imprisonment as well as fine. As stated above various advertisements placed on record show that the plaintiff had claimed the mark N.B.N. To be registered. From the documents filed by the plaintiff in support of his claim, it gives an impression as if the plaintiff is using said mark under the authority or assignment by its foreign principal. None of such letters as Annexures A/2 and A/3 clearly states that the plaintiffs principal are registered proprietor of said mark in the country of its origin or elsewhere and so also the documents annexed with the written statement reflects goods under the same mark are being offered by Chinese manufacturers. Such being the case, in my humble opinion plaintiff has not succeeded in establishing prima facie case in his favour the matter can only be decided at the trial as to the alleged claim of proprietorship of the mark to the exclusion of other traders in the same trade.
27. Adverting to the other contentions of the plaintiff that under section 15 (e) of the Customs Act, defendant No,1 Custom Authorities are bound to detain the goods of the defendants under section 15(e) of the Customs Act. Section 15 (e) of the Customs Act would only be attracted in case where the trade mark is registered in Pakistan and other persons are importing or getting the goods manufactured from abroad. Similar position is in respect of the goods on which a design is applied in respect of which a copyright exists. Admittedly, the plaintiff's claim of proprietorship in the subject trade mark has not yet crystallized, it is still in cloud. Provision of section 15 (e) of Customs Act would not apply in cases of unregistered mark (see also 1986 MLD 886). Under the circumstances, plaintiff has failed to make out a prima facie case for the grant of injunction, balance of convenience is in favour of private defendants whose goods are held up on account of injunctive order. Accordingly, the application under Order 39, rules 1 and 2, C.P.C. Are dismissed with cost of Rs,10,000 to each private defendants in both suits. However, the cost would only be paid subject to the decision of the suits at trial. Cost is imposed as the private defendants have suffered loss on account of the injunctive orders obtained by the plaintiff. For the foregoing reasons, application under Order 39, rule 4, C.P.C. Is also allowed. Goods of the defendants as detained by the Customs Authorities admittedly manufactured in China may be released forthwith to the defendants.
28. ' Observation made while recording above order are tentative, same will not affect, respective rights of both the parties as may be established on merit at trial.
29. ' The listed applications as mentioned earlier stand disposed of in above terms.