MUSHIR ALAM, J.-- In this suit for Infringement of Trademark Passing off Perpetual Injunction, Reduction of Accounts and Damages plaintiff has also filed an application under Order 39, Rules 1 and 2, CPC (being CMA No. 7318/2001) seeking ad-interim orders to restrain the defendant form infringement of its Registered Trademark during pendency of the suit. It was inter alia, contended by the learned counsel for the plaintiff, that the subject mark "Aletris cordial" with device of a feminine hand holding a bottle in a distinctive get up and design in yellow and black colour scheme, was originally registered in the name Rio Chemical Inc., U.S.A., On 24.12.1966 in respect of a pharmaceutical preparation. It is asserted that the plaintiffs was marketing such product of the principal, in Pakistan. The plaintiff acquired the said mark from their principal under assignment deed dated 21.5.1993. Plaintiff independently applied and obtained registration of the said mark in its name vide 'registration No. 121513 dated 23.8.1993. It is stated by Mr. Salim Ghulam Hussain, learned counsel for the plaintiff that, several notice of caution and warning were got published in various newspaper against counterfeit product under the similar name and get-up as is evident from annexed as F/6 to F/14. It is stated that the defendants secretly managed to obtain the copyright in respect artistic work of the label in respect of subject mark of plaintiff under the Copyright Ordinance, 1962. Such registration was successfully impugned by the plaintiff before the Copyright Board at Karachi. The Copyright Board vide its order dated 29.11.1999 directed that the entry existing in favour of the defendants, herein be removed. Certain observation as to the assignment deed, relied upon by the plaintiff, were also made. Order of the Copyright Board, was challenged by the defendants before the Lahore High Court in FAO No. 100/2000. The appeal was dismissed. It was, therefore, contended by Mr. Salim Ghulam Hussain that in terms of Section 21 of the Trademark Act the plaintiff has exclusive right to use the subject mark. Copyright, even otherwise, according to him, does not confer any right on the defendants to appropriate mark of the plaintiff. In support of his contention he has relied upon on Tapal Tea (Pvt.) Ltd. v. Shahi Tea Company (2002 CLD 1113) = (2002 CLR (Kar) 1793). It was further contended that comparison of the mark and label of the plaintiff clearly demonstrate that the defendants have copied the entire getup, design and colour scheme of the plaintiff. It was urged that in terms of Section 21 of the Trademark Act. Plaintiff exclusive right to use the same, infringement cannot be allowed. He has relied on Mehran Ghee Mill (Pvt.) Ltd. v.
Chilan Ghee Mills (Pvt.) Ltd, (2001 SCMR 967), Western Brand Team Karachi v. Tapal Tea (Pvt.) Ltd.
(PLD 2001 S.C. 14) Messrs Tri-Star Industries (Pvt.) Ltd. v.. Messrs Irisa Bursten Tabrik A.G. (1999 YLR 638), Jamshed Aslam Khan v. Mrs. Azra Jawed and 2 others (1996 CLC 435), the Wellcome Foundation Limited v. Messrs Karachi Chemical Industries (Pvt.) Limited (2000 YLR 1376).
2. It was further urged that trademark once registered with the Trademark Registry gives the holder of such registered mark a right to use the same to the exclusion of other such right are not defeated by getting the said mark registered under any other law, as was claimed in this case. It is further asserted the defendants copyright has since been struck down, defendant cannot be allowed to use said mark for its product. In support reliance is placed on judgment from the Indian Jurisdiction M/s. Jinda Industries Limited v, M/s. Samana Steels Limited (1993 PTC (Delhi) 129), Messrs Hinduston Pencils Pvt. Ltd. v. Messrs India Stationery Produces Co. And another (1989 PTC (Delhi) 61) and Prince Rubber Industries v. K.S. Rubber Industries (1983 PTC 34).
3. Learned counsel for the defendant M/s. Shakeel Abid and Ch. Tanveer Amjad, Advocates contended that the plaintiff has no locus standi to file the suit. It was asserted that the plaintiff claims right to said trademark on the basis of Assignment Deed which, according to the learned counsel, has been challenged before the Registrar Trademark, same is pending decision. Mr. Shakeel has further drawn my attention to page 43, of the file whereby, the defendants had disclaimed the name of "Aletris Cordial" and it was pointed that disclaimer was also made in the device of bottle. It was, therefore, urged that plaintiff cannot claim exclusively either in the name "Alteris Cordial" or in the device of bottle sought to be protected through injunctive order. In support he has placed reliance on Muhammad Abid and 2 others v. Nisar Ahmed (2000 SCMR 780) = (KLR 2000 (SC) 204), United Bank Ltd. Through its President and 3 others v.
Muhammad Hafeez Shakir and 32 others (1998 CLC 1822), Khawaja Abdus Subhan v. Khurshid and 11 others (2000 YLR 2898) and Shahjehan Khan and others v. Muhammad Tariq (2002 CLC 571) = (2002 CLR (Kar) 79).
4. It was further asserted that, despite the fact defendant lost before Copyright Board as well in High Court, the question as to the veracity of the assignment is still sub judice before the Registrar Trademark. He therefore, urged that, weakness of the defence cannot be considered while considering the plaintiff's case who is required to stand on his own leg. In support he relies on Mehtab Khan and others v. Faiz Muhammad (PLD 2003 Pesh. 46) = (2003 PLR (Pesh.) 726) and Muhammad Akram alias Akan v. Mst. Pathani through Legal Heirs and 5 others (2001 MLD 1030). It was asserted by the learned counsel for the defendant that in Dasur India Ltd. v. Hilal Confectioner), (Pvt.) Ltd. (PLD 2000 R 139) protection to wrapper was given by this Court which was copied by the defendants therein from foreign sources.
5. Mr. Salim Ghulam Hussain learned counsel for the plaintiff exercising right of rebuttal contends that the artistic work has been defined under Section 2(c) Copyright Act which excluded the label, whereas, correspondingly "Mark" as defined (under Section 2(f) of the Trade Mark Act, include label, he therefore, urged that he use of the label registered to the plaintiff under the Trademark Act cannot be exploited by the defendants. Mr. Salim has also placed reliance on commentary on "Intellectual Property Law" by P. Narayanan, page 164 (Eastern Law House Publication 1990 Edition).
6. I have heard the arguments and perused the record.
The defence in cases of Trademark (sic) registration of artistic work under the Copyright Ordinance, 1962 as well, as registration of drugs under the Drug Act. The purport, scheme and object of both the Trademark Act, 1940, and the Copyright Ordinance, 1962 and so also the Drug act are entirely different. All the enactment operate and regulate different sphere of activity presently this case is confined to Trademark Act and Copyright Ordinance. Definition of Trademark as per Section 2(1) of the Act, 1940 is as follows:-
(1) "trade mark" means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person."
Section 5 of the Trademark Act reads as follows:
5. Registration to be in respect of particular goods.- (1) A trade mark may be registered only in respect of particular goods of classes of goods.
(2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final.
7. From bare perusal of definition of Trademark, Section 5 and other Provision of the Act of. 1940 what appears. To be the scheme of the Trademark Act is that ' Trademark' is registerable in respect of some vendible good in any of the 34 classes detailed in 4th scheduled to the Trademark Rule. Trademark, in fact is relatable or associated with any vendible ,good. Such vendible good acquires special significance when same are associated or reputed to be -associated with any Trademark, such goods in commercial parlance may be referred as "Branded good". Indeed Trademark, Copyright, a Patent and Design gives monopolistic right to the registered owner thereof in the sense that such right holder have right to use and exploit such property to the exclusion of others (See Section 24 of Trademark Act, Section 42 Copyright Ordinance Section 12 Patent Act).
However, as far as trademarks are concerned, such are meant to distinguish the goods of owner of the mark whether registered (or otherwise like prior user) from that of the other manufacture or producer of goods. Such distinction is for the benefit of consumer of such, goods, though it also benefit the manufacturer and producers of such goods as well. There is no corresponding Provision to Section 5 of the Trademark Act, under the Copyright Ordinance, 1962. Copyright in terms of (sic) the Ordinance, 1962 is an exclusive right in (sic) tangible medium of comprehension either audio or visual in any form that could be copied reproduced multiplied, communicated terminated, repealed, broadcast, telecast, adopted in any form. Generally artistic work could be protected under the Copyright Ordinance, 1962. Copyright in such artistic work is not necessarily or directly associated with any vendible goods unless of course same is used or proposed to be used and is desired to be used for some vendible good then in terms of Section 14 of the Trademark Act, 1940 same are required to be registered as such. "Copyright". From the scheme of the Copyright Ordinance appears to protract "Copyright" in original work, by itself it is not relatable or associated with any vendible good. The holder of such copyright in artistic work has exclusive right to reproduce and multiply such work. In terms of Section 34 of the Copyright Ordinance, 1962 the holder of a copyright has exclusive right to reproduce the work in any form, to publish, to perform, to translate to communicate broadcast, telecast, perform, adopt. From the scheme of the Copyright Ordinance, 1962 it appears that such Copyright work independently is capable of reproduction and reproduced copy is vendible independently and individually. It does not has any nexus with any other separate and independent vendible good unless said artistic work otherwise is also used as a Trademark under the Trademark Act as discussed above.
8. Section 21 of the Trademark Act confers exclusivity of use of a registered Trademark in relation to any vendible good in respect of which it is registered. Such exclusivity to use the registered mark can be gauged from the language of Section 21 of the Act of 1940. Once it is demonstrated that a person is registered holder of a mark exclusively is presumed. However, such exclusivity is subject to certain condition namely (a) and condition or limitation order on register at the time of registration by the Registrar as provided for under Section 21 (b) prior user of the mark irrespective whether the same is registered or not as provided for under Section 25(c) or where the use of the name and description of the good is used bona fide by a person of his name place of business either of himself or of his predecessors or, (d) honest and concurrent user of mark in terms of Section 10(2) ibid. Defence based on any of the consideration set out above, may be considered formidable statutory defence against claim of infringement or passing of.
9. Examining the defence raised by the learned counsel or the defendant, firstly that bona fide registration of the subject mark on the basis of assignment has been challenged same is sub judice before the Registrar. It was further urged that copyright board had expressed doubts in respect of assignment deed. It may be observed that similar objections were considered by a learned Bench of the Lahore High Court in 160 No. 100/00 (supra) dealing with similar objection it was held in para 12 as follows:- "That Trade Mark was first registered in favour of Rio Chemical Company Inc. USA on 24.12.1966 under which the said company had exclusive right to use the word "Alteris Cordial" and device of the bottle as shown in the presentation on the form of application. It is not disputed that it was registered on 24.12.1966 in favour of Rio Chemical Company Inc. USA. The said Trade Mark was assigned in favour of respondent No. 1 which was registered on 5.6.1993. By virtue of Section 23 read with Section 35 of the Trade Mark Act, registration of a Trade Mark, is prima facie evidence of the validity of the original registration of the Trade Mark and all subsequent assignments and transmissions thereof. Therefore, 1 am of the view that the learned Copy Right Board could not have gone behind the assignment in favour of respondent No. 1 duly registered under the provisions of the Trade Mark Act. The question whether the assignment in favour of respondent No. 1 duly registered under the provisions of the Trade Mark Act. The question whether the assignment was valid could only be gone into in the proceedings under the, Trade Marks Act but could not have been collaterally impeached."
It was further observed that: "I may clarify here that these observations are being made for a limited purpose i.e. Whether respondent No. 1 was or was not an aggrieved person. Registration of the Trade Mark with the disputed label design or its assignment in favour of respondent No. 1 is not being adjudicated in this appeal because it is beyond the scope of this appeal."
I am also of the view that any decision rendered in a collateral proceeding will not prejudice or effect either the rights of the plaintiff nor of the defendants in proceeding before the Registrar Trademark.
10. Adverting to other contention of the learned counsel for the defendant that there was a disclaimer in respect of the name of the product and bottle as depicted in the registered mark. He has drawn my attention to plaintiffs certificate of registration dated 24.12.1966 at page 43 of Court file, which reflect registration of mark subject to disclaimer in following terms.
"Registration of this Trademark shall give no right to the exclusive use of words "Alert's Cordial" and device of bottle except substantially as shown on the form of application".
(Underlining added for emphasis) above was referred to urge that plaintiff can neither claim any exclusive right to use the name "Alertis Cordial" nor in the devise of bottle. He therefore, contended that plaintiff cannot bring out any action for infringement in respect of disclaimed part or portion of mark i.e. Name and devise of bottle, which could be used by any one in the same trade. Arguments indeed are ingenious. From the disclaimer as reproduced above it is evident that disclaimer is with "Except substantially as shown in the form of application" when one or more par part a mark are subject to disclaimer then what may be subject-matter of registration is distinctive manner, get- up and colour scheme in which each of the constituting disclaimed parts of or portion of mark are.
Placed and arranged to give it same distinction from the other mark using same disclaimed part or portion for competing goods. Indeed the plaintiff cannot claim exclusive right to the use of the name of the product i.e. "Alertis Cordial" or devise of bottle used in one mark as such mark was registered subject to disclaimer. There is no cavil to the proposition that a registered holder of Mark, who had disclaimed, any of the feature of the mark, either in word, device or get-up or where such feature is claimed to be common to Trade whatever the case may be. The holder of the mark may claim monopoly in the manner in which such mark, device, word or any combination thereof is put to use to distinguish his goods from the others. In this 'case the manner plaintiff has used the combination of the word "Aletris Cordial" in a semi circular fashion in a particular form of calligraphy over the picture of a feminine hand holding 'a particular shape of bottle in a particular fashion all disclaimed parts, portion and feature of the Mark i.e. Words and device of bottle and hand have been placed in a particular fashion getup and colour scheme, use of all feature in particular manner give the Trademark of the plaintiff a distinguishing impact. Indeed defendant could have used the words "Aletris Cordial" and or devise of bottle but not in the manner and fashion plaintiff has place them in their mark. When both the Marks subject-matter of suit were examined it appears that the defendant has not only copied the mark verbatim but has even gone to an extent that they have also mentioned the name of the American Company in their label. The defendants are carrying on business by adopting the name of the Foreign Company, which gives an impression as if it is a subsidiary, agent or representative of the Foreign Company. Plaintiff has at-least placed on record certain material to show that they had been importing same good from Rio Chemical Inc. Company USA, various invoices have been placed on record to substantiate their association with Rio Chemical, USA. Whereas the defendant appears to have simply pirated the mark of plaintiff in verbatim by using same get-up, color scheme arrangement of the disclaimed parts in same manner and fashion. Since the defendant cannot claim any right goods. Defendants are not marketing or selling the artistic work independently even otherwise copyright in their favour has been struck down. What the defendants are selling is a pharmaceutical preparation, right to use a registered mark could only be claimed in respect of vendible good. Using a copyright material as a substitute for the Trademark is not the intent and purpose of Copyright Ordinance, 1961 such copyright material independently cannot be used or associated with any vendible or saleable goods unless of course such copyright is registered under the of Trademark Act, 1940.
11. As observed above the Registration of artistic work or other material under the Copyright Ordinance, 1962 is being grossly misused by scrupulous traders with covert object.
12. Such persons and traders have transgressed all moral values, they are not ashamed of even adopting artistic work in internationally reputed and world renewed brand names such foreign artistic work which otherwise, are subject-matter of Trademark, are got registered under the Copyright Ordinance, 1962. Such practice not only seriously tarnishing image of our country but at the same time Copyright Law is being used as a cloak to usurp goodwill of holder of trademark. In Taped Tea (Pvt.) Ltd. (2002 CLD 1113) (supra) Court was confronted with similar situation while repelling similar arguments as urged by Mr. Shakeel in this case, it was held at page 1119 para 10 as follows:-
10. As regards learned counsel for the defendant's contention that the defendant's copyright in its logo and design would give the defendant some justification as to the use of the same. In my opinion this cannot be either sustained or allowed. The reason is very simple. Since the defendant's copyright is quite similar to the earlier registered trade mark of the plaintiff, condoning the former's use of its copyright would give free reign to any unscrupulous person from adopting the mark/design etriment of the latter. Such in my opinion is not the intention of the law and for that matter could not be the intention of the law. In this connection it would be seen that perhaps the copyright obtained by the defendant which is quite similar to the registered trade mark of the plaintiff in the first place should not have been sanctioned by th Copyright Board. In fact in my opinion there should be some provision whereby applications fo registration of a copyright could be advertised I order to invite objection which would then be deal with so as to avoid conflicts between an earlie registered trademark.
It may be noted, that as observed in the above-referred case, due amendment has been made in Section 39 of the Copyright Ordinance, 1962.
Whereas our law-markers in their wisdom had adde following proviso to Section 39 of the Copyright Ordinance 1962 (corresponding to Section 45 of Indian Act, 1951 111 of 2000 [reported in PLD 2001 Central Statute 289 (292)]."
"Provided that in the case of artistic works the Registrar shall not enter the particulars of the work in the Registrar of Copyrights and shall not issue a certificate of registration of the application unless within one month of the filing of the application, or within such extended time as the Registrar may determine, the applicant has advertised the work itself in a newspaper as may be prescribed and sent two copies thereof to the Registrar and unless within one month thereafter, or within such extended time as the Registrar, may determine, not exceeding two months, the Registrar has not received any objections to the registration of particular of the work in the Registrar of Copyrights."
From bare perusal of above, it appears only objections are invited through publication in newspapers. Experience shows that scrupulous traders get the artistic work sought to be copyrighted published in very innocuous newspapers having hardly any circulation. It appears the proviso added to Section 39 of the Ordinance, 1962 is not sufficient to check the malpractice and abuse of Copyright Ordinance.
13. Such tendency was effectively checked in India here a proviso was added as far back as in 1983, to Section 5 of the (Indian) Copyright Act, 1957, which reads as follows:- [Provided that in respect of an artistic work which is used or is capable of being used in relation to any goods, the application shall include a statement to that effect and shall be accompanied by a certificate: from the Registrar of Trade Marks referred to in Section 4 of the Trade and Merchandise Marks Act, 1958 (43 of 1958), to the effect that no trademark identical with or deceptively similar to such artistic work has been registered under that Act in the name of, or that no application has been made under that Act for such registration by any person other than the applicant].
The proviso added to the corresponding provision in Indian Copyright Act appears to be more effective in checking the means of such abuse of Copyright. In my humble opinion law-makers may consider amending Section 39 of Copyright Ordinance, 1962 in line with proviso to Section 45 (Indian) Copyright Act, 1957.
Copy of this order may be sent to Ministry of Law Justice and Parliamentary Affairs Government of Pakistan to consider proposing suggested amendment to the law-maker.
As discussed above plaintiff has made out prima facie case, they are the Registered holder of subject Trademark, in terms of Section 21 of the Trademark Act, have right to use the subject Trademark Act, have right to use the subject Trademark to the exclusion of others. Accordingly, the application under Order 39, Rules 1 and 2, CPC is allowed.
Before parting with this order, it may be observed that any observation made herein will not prejudice the case of defendant before the Registrar Trademark.