MUSHIR ALAM, J. -- In this suit for injunction, infringement and passing oft and accounts. Plaintiff claims they are manufacturing and selling foams mattresses, pillows and the foam and allied product various brand names including Mujahid Foam falling in Class 17 of the clarification of the goods. It is claimed that the plaintiffs applied for the registration of their trade mark Mujahid Foam on 17.1.1984. It was advertised on 1.2.1985 accordingly it was registered in their favour w.e.t. the date of application. According to the plaintiffs they are the original proprietor and bona fide user of the subject-matter since then. It is claimed that the defendants are infringing the mark of the plaintiff.
Through listed application under Order 39, Rules 1 and 2, CPC (CMA No. 754/2002) plaintiff has sought injunctive relief against the defendant.
2. It was asserted that the defendants applied for the said mark in 22.6.1988. However, they abandoned their application and later on filed JM No. 13/1992 seeking rectification of register as against the registered mark of plaintiff, which matter is subjudice in appeal. Mr. Abid Zuberi learned counsel for the plaintiff contended that registration of a trade mark in terms of Section 21 confer exclusive right on the plaintiff to use the mark to the exclusion of any other person. According to the learned counsel, the dismissal of JM No. 13/92 established the right of the plaintiff. Learned counsel contends that the defendant is infringing the plaintiff's mark against which injunctive relief is sought through listed application. In support of his contentions Mr. Zuberi, has relied upon Muhammad Haroon and another v. F. Y. & Brothers and another (1986 M LD 930), Zakauddin v.
Muhammad Zahid and 2 others (PLD 1993 K 766), Messrs Chas A. Mendoza v. Syed Tausif Ahmed Zaidi and 2 others (PLD 1993 K 790) and Messts Tri-Star Industries (Pvt.) Ltd. v. Messrs Trisa Bursten Tabrik A.G. and others (1999 YLR 638).
3. In contra Mr. Sajjad Ali Shah, learned counsel for the defendant seek shelter under Section 25 of the Trade Marks Act. He contend by dismissal of JM No. 13/1992, defendant rights of prior user is not lost. According to the learned counsel, plaintiffs who are their arch rival in the foam business, have in fact hijacked the mark of the defendant. According to him, plaintiffs have never used such mark and all the documents relied upon by the plaintiffs in support of their claim appears to be manipulated. He h: s pointed out that sale figures given in the suit (Annexure P/11 a'page 87) are different then the figures given in their counter-affidavit filed in JM No. 13/1992 available at page 755 of the Court file. He has also disputed the statement of advertisement charges appearing at page 515 showing the expenses incurred on the promotion of such mark since 1980. He has drawn my attention to the application of registration filed by the plaintiffs for the registration of the subject mark dated 17.1.1984 which shows that the plaintiff have themselves claimed user, since two months prior to such application. Mr. Sajjad All Shah, claims that no expenses could be incurred prior to the adoption of such mark, therefore, statement of expense on account of the advertisement is highly doubtful. He has also taken me through Form A.R.1 regarding Excise Tax available at pages 91 to 169 of the file to demonstrate that Mujahid Foam does not find mention in such form. According to him even the sale invoices dates back from the year 1995 onwards and not prior. Even same of the invoices, including at pages 195, 197, 203, 211, 213, 215 and 217 find mention of 'Mujahid Foam but such mention appears to be interpolated, to add credence to the claim of the plaintiff. He drew my attention towards the invoices for advertisement at pages 475 to 491, which do not find mention of Mujahid Foam in any of such advertisement invoices only authentic publicity material in news media is dated 15.12.2001. It was therefore, vehemently argued that plaintiff have drawn support by fabricating documents and they have not approached the Court with clean hands.
4. Mr. Sajjad in support of his contention that defendants are prior user and are using subject mark extensively since 1980, has drawn my attention to advertisement bill dated 30.8.'1980 and certificate of transmission/telecast dated 17.11.1980 issued by Pakistan Television Corporation Annexures D/3, D/5, D/13 and D/14, to show that Mujahid Deluxe Foam were advertised on television, much prior to the alleged adoption by the plaintiffs. He has also drawn my attention to various invoices relating to the publicity and even print media advertisement to demonstrate that the brand 'Mujahid Foam' is being used by the defendants, who were earlier marketing other products under the name "Mujahid" such advertisement dated 22.7.1980 to 30.11.1984 available at pages 129 to 141 of the Court file (Part II). Mr. Sajjad asserts, that plaintiff have not produced any credible material to show that they were using such name prior to the dismissal of the defendants No: JM No. 13/1992.
5. I have heard the arguments and perused the records.
6. Section 21 of the Trade Mark Act gives to the registered mark holder exclusive right to use the registered mark to the exclusion of others Section 21 reads as follows:- "Right conferred by registration. -- (1) Subject to the provisions of Sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing provision, 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 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, and in such manner as to render the use of the mark likely to be taken either"--
(a) as being used as a trade mark; or
(b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade.
From the bare reading of the above provision, it is apparent that exclusivity of user attached to the registered mark holder is not absolute but, is subject to limitation as prescribed under Sections 22, 25 and 26 of the Act. In a Suit No. 369/2001 Abdul Wasim v. M/s. SACO Traders (Pvt.) Ltd. and another. I had occasioned to examine rights of the prior user, relevant Exclusive Rights to use trade mark by virtue of observation in this context reads as follows:- registration is conferred on a proprietor in terms of Section 21 of the Act are subservant 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 Mks Act. in the foregoing background in presence of a registered trade mark in favour of the plaintiffs, plaintiff's right to use such mark is indeed recognized under the Trade Marks Act but exclusivity to use such mark is not absolute but qualified. Rights of prior user as recognized under Section 25 of the Act, are 'equally protected. Section 25 of the Act for ready reference is reproduced 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 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 sub-section (2) of Section 10. By virtue of Section 25 protection against Infringement action is extended to the unregistered user of a trade mark, to claim such right,' burden is on a person claiming' protection under Section 25 Mid. A person claiming right of a prior user in -terms of Section 25 has to prima facie demonstrate:--
(1) that contesting mark is in his continuous use.
(2) Such continuous use is prior in time then the mark was used by a person who claim to be a proprietor of such mark and or from the date of Registration of the subject mark in respect of the same goods, and or
(3) There is honest and concurrent user as recognized under Section 10(2) of the Act.
In view of the foregoing the 'defendants have to prima facie demonstrated through material on record, their prior user of the contesting mark.
7. As observed above, initial burden is on the defendants or a person claiming rights under Section 25 thereof, to prima facie demonstrate such fact. Both the plaintiff and defendant counsel have seriously objected to the sale invoices and other material produced by them respectively. Where such being the position the Court has to prima facie and tentatively assess and weigh the material produced by the parties. Interlocutory applications like the one in hand under Order 39, Rules 1 and 2, CPC are generally decided on the basis of tentative assessment of pleadings, affidavits, counter- affidavits, rejoinder if any and, documents annexed thereto.
8. I do not intend to consider photocopy of sale invoices to be prima facie credible material, as both the parties' have their reservation as the authenticity and credibility of such sale invoices.
9. Admittedly the plaintiffs had applied for the mark on 17.1.1984 claiming user of the mark two months prior to the date of application mark was advertised on 1.2.1985. As against this the defendants applied for the registration of subject mark on 2.12.1979, which was advertised in the trade mark general on 1.6.1982. It is also matter of record that defendants failed to deposit registration fees, the application was treated as abandoned. It was only when the defendant filed an interlocutory petition (LP on 15.8.1988) which was held to be incompetent. Defendants however, again applied for the registration on 22.8.1988. From above, it is apparent that the defendant had applied earlier for the registration of the 'contentious mark. Defendants were able to demonstrate that they had extensively advertised the subject mark through mass media, as is apparent from the invoices of transmission issued by Pakistan Television Corporation, and copies of advertisement carrying contentious mark in various newspapers in the name of defendants. Prima facie the advertisement in the mass media including newspaper at pages 131 to 141 in Part II do lend support to the defendants case that they were extensively using contentious mark much prior to the adoption of the same by the plaintiff.
Sale figure produced by the plaintiff appearing at page 87 Part-I .Annexure P/1 1 shows great deal of disparity with sale figure for the same period in JM No.13/1992, such disparity in sale figure has not been satisfactorily explained therefore, tentatively, i am of the view that sale figures referred to at page 755 of the IInd Part and at page 87 of the 1st part do not prima facie inspire confidence, therefore, at the moment for the purpose of deciding this application I will not give any credence to such sale figures. Such figures are to be established and proved at the time of trial.
10. As far as the contentions of learned counsel for the plaintiff that dismissal of ILP, application for rectification and JM No. 13/1992 amounts to abandonment and wavier on the part of the defendant to use the said mark is concerned. Indeed, the application of the defendant for rectification and so also dismissal of JM No. 13/1992 is a circumstance which prima facie go in favour of the plaintiff, in the context of concurrent user. Such fact of uninterrupted use of the contentious mark and even registration thereof, in favour of the plaintiff, may amount to waiver and acquiesce as far as plaintiff's right to claim protection on the basis of concurrent user as against defendant is concerned. Rights of concurrent user is also qualified and subject to proof of "honest concurrent user or of other special circumstances" as may be required in a particular case.
However, in view of Section 25, right of prior user is preferential and superior right of course subject to proof, as against the right of registered holder of contentious mark recognized under Section 21 thereof. Rights of prior user is valuable and superior right then the right of registered holder of contentious mark. Right of prior user in terms of Section 25 is not dependant on registration. In a defensive action defendant has to satisfy the Court that the defendant is using such mark extensively prior to the use by the registered proprietor. As discussed above the defendant have prima facie demonstrated that they are prior user of contentious mark "Mujahid Foam" defendants have produced advertisement material which are published and printed material which shows advertisement in newspaper and so also on Television much anterior to the adoption of contentious mark by the plaintiff as discussed above, therefore, in my humble opinion defendants have successfully demonstrated that they are prior user and are entitled to protection as recognized under Section 25 of the Act.
In view of the foregoing discussion listed application is dismissed. 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.