1. ' Plaintiffs claim to be proprietor of the Trade Mark Zeera Plus' pending, registration since 22-5-1997.
2. Claim of the plaintiffs is that Trade Mark 'Plus' is distinctive trade mark and is associated with goods of the plaintiffs who are one of the frontline manufacturer of biscuits. It is claimed that, their biscuits are abbreviated as 'Plus' to represent Zeera Plus'. It is claimed in the suit that the 'Plus' is an essential feature of their mark which the defendants adopted and started using Trade Mark 'Plus' alongwith the word `Gluco' causing confusion and deception in the course of trade. It is claimed that the plaintiffs are prior user of the word Plus'; any subsequent adoption by the defendant is indeed deliberate, dishonest, mala fide and calculated to trade on the goodwill of the plaintiffs. The plaintiffs, in para. 22, claimed to have acquired the knowledge in November, 1998 of such user by the defendant of their mark Plus'. Consequently, the suit was filed on 3-3-1999 seeking permanent injunction against the defendant from infringement of the plaintiffs Trade Mark 'Plus'. Preliminary decree for accounts and other consequential reliefs as are conventional in such cases. Alongwith the suit, an application (C.M.A. No,1777 of 1999) under Order 39, rules 1 and 2, C.P.C. Has been filed seeking ad interim orders against the defendant from 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 the biscuits under the Trade Mark 'Plus'.
3. ' The defendant filed the written statement and counter-affidavit raising preliminary objections, inter alia, that neither the word Plus' nor `Zeera Plus' is registered, action for infringement is not maintainable. It was denied that the word Plus' is a constant and/or essential feature of the plaintiffs mark. It was pleaded that the word 'Plus' is laudatory and nondistinctive word. Number of trade marks with suffix Plus' were allowed to be registered with a disclaimer of word Plus'. It was contended that the defendant is also one of the leading manufacturer of biscuits. Its range of biscuit include `Gluco' biscuits which is in their use since 1986. It was asserted that in 1997 additional ingredients 'Calcium' was added necessitating the use of the word "Plus" to indicate some additional nutrient in its ingredients. Defendant claimed to have applied for the registration of said mark on 27-12-1997. Though, it is claimed that they are marketing such product since February, 1997. It is denied that the mark of the plaintiffs is anyway imitation or copy of the plaintiffs mark. The getup, design and colour scheme of both the marks have been highlighted in the written statement and the counter-affidavit to injunction application to emphasis on the dissimilarity and distinguishable features of the marks of the plaintiffs vis-a-vis defendant. The defendant has also given details of the word Plus' used by the various other products in para.8,5 of the written statement.
4. ' Mr. Abdul Hameed Iqbal, learned counsel for the plaintiffs argued that the plaintiff No,1 is the originator and proprietor of the Trade Mark Plus' which is being used alongwith the certain other range of biscuits produced by them. Substantial amounts were incurred in promote. According to him, the adoption by the defendant of the plaintiffs trade mark Plus' is dishonest and mala fide, they cannot be allowed to trade on the goodwill of the plaintiffs. It was contended that the prior user has superior right. In support of his contention, he relied upon the case-laws reported as (1)
5. Shahid Mirza v. Merloni Finanziaria S.P.A. And another PLD 1991 Karachi 425; (2) Zakauddin v.
6. Muhammad Zahid and 2 others PLD 1993 Karachi 766 and (3) Century Traders v. Roshan Lal Duggar & Co. And others AIR 1978 Delhi 250. It was further argued by Mr. Hameed Iqbal, learned counsel that mark 'Plus' is distinctive of the plaintiffs which feature has been copied by the defendant. It was contended that it only becomes common to trade when it is so declared by the Registrar. In support of his submission, he relied upon the case-law reported as Multani Sohan Halva, Hussain Aghai Multan v. Registrar of Trade Marks, Karachi 1987 CLC 1448. It was also argued that the name is not common to trade. According to him copying of the essential feature cannot be allowed.
7. Reliance is placed on (1) Jamia Industries Ltd. v. Caltex Oil (Pak) Ltd. And another PLD 1984 SC 8; (2)
8. Bandenawaz Ltd. v. Registrar of Trade Marks, Karachi PLD 1967 Karachi 492; (3) Messrs Khan Foundry and Workshop, Faisalabad through Proprietor v. The Registrar of Trade Marks Registry, Government of Pakistan, Karachi and another PLD 1994 Karachi 157 and (4) National Detergents Limited v. Mod International (Pvt.) Ltd. 1993 MLD 590.
9. ' As against above, Mr. Zain Sheikh, learned counsel for the defendant, at the very outset, attempted to oppose the injunction application on the ground of delay. He asserted that the mark is not registered and no action for infringement could be filed. According to him, the word Plus' is highly descriptive and laudatory mark. It does not qualify to be registered even if it is applied for registration. In support of his contention, he drew my attention to Annexures A/1 to A/7 to the written statement to demonstrate that various marks with word 'Plus', were allowed to be registered with a disclaimer of word 'Plus'. He asserted that unless the case of misrepresentation, calculated to injure the goodwill or to earn premium thereon, with mala fide intention is established, action of passing off cannot succeed. In support of his contention, he relied upon the case-laws reported as Riaz Ahmed Mansuri v. Abid Ali Qazi and others 1990 MLD 1788 and Erven Warnink B.V. And another v. J.
10. Townsend 7 Sons (Hull) Ltd. And another (1980) RPC 31;. He also drew attention of this Court to pages 77 and 79 of the Court file being mark applied by the plaintiffs and the defendant for their respective biscuits in order to highlight that over all impression, getup and colour scheme are entirely different and distinguishable. He contended that marks are to be judged as a whole and totality of the impression is to be seen. He relied upon the case-law reported as National Detergents Ltd. v. Assistant Registrar of TM 1989 MLD 1137 Karachi. Mr. Zain learned counsel laid emphasis that the word `Plus' is merely a descriptive and laudatory word. Same is being used generally for various products to describe something in addition to the generally reputed quality of the products. He drew my attention to Annexures "D/ 1 to D/4" of the Counter Affidavit in support of his contention. He also urged that the plaintiffs themselves are using the word Plus' for different ranges of biscuits like Banana Plus, Orange Plus, Oro Plus, Energy Plus in laudatory sense. He also relied upon the case-law reported in 1986 RPC 93. In support of his contention that where a word used as a suffix assumes laudatory connotations. It is invariably disclaimed. It is for this reason, according to him, the word Plus' whenever used by any of the person, registration is granted with disclaimer as evident from Annexures "A/ 1 to A/7" to the written statement. He also cited famous case which had been reported as Tapal v. Lever Brothers 1997 MLD 1277 when a Division Bench of this Court had occasion to decide controversy over the word Danedar". It was held to be descriptive and not distinctive. Mr. Zain further contended that on the own showing of the plaintiffs that the sales by the defendant were discovered in November, 1998. They approached belatedly to the Court. He further contended that the defendants are using such mark since month of February, 1997 and such delay defeats injunction. In support of his contention, he relied upon the case-laws reported as (1) Aeg Telefunken Pakistan Ltd. v. Electric Concern Corporation 1985 CLC Karachi 155;
(2) Mst. Khurshed Bibi v. Province of Punjab and another 1987 CLC Lahore 242 and (3) Mst. Najma Rana v. S.M. Maroof and another 1989 MLD 1317 (Karachi).
11. ' I have heard the arguments of learned counsel for the parties, perused the material available on record and thoroughly examined the case-laws cited by them in support of their respective contentions.
12. ' Admittedly, the trade mark of the plaintiffs as claimed by them for Zeera Plus' is not registered.
13. Though their house Mark "LU" is registered. Application for registration of "Zeera Plus" was made on 22-5-1997. Plaintiff has placed on record invoices in respect of "Zeera Plus" prima facie showing sale with effect from 31-3-1997. The defendant claimed to have applied for registration of "Gluco Plus" on 27-12-1997. The defendant has also placed on record invoices for sale of "Gluco" products pertaining to a period ranging from July, 1997 to demonstrate that they are using the subject Mark "Gluco Plus" without any objection. Since the claim of the plaintiffs is not founded on the registered mark, at the best his claim could only be pressed for a passing off action. Passing off action is recognized under subsection (2) to section 20 of Trade Mark Act, 1940. The basic idea in passing off action is that no person is allowed to sell his own goods under the pretence that their goods are of another person. It is an actionable wrong for the defendant to represent for trade purpose that his goods are those of the plaintiff. In a case of Erven Warnik B.V. v. Townend & Sons (Hull) Ltd. (1979) 2 All ER 927(HL), five characteristic were identified which must be present in order to create a valid cause of action for passing off; namely "(1) a misrepresntation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injury the business or goodwill of another trader (in the sense that this is a reasonable foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or in a quia timet action will probably do so". In the case of Hindustan Radiators Co. v. Hindustan Radiators Ltd. AIR 1987 Dehli 353 following eight requirements were outlined:--
(i) That the plaintiff has been using its trading style and trade mark to quite a long period and continuously, whereas the defendant has entered into the said field only recently;
(ii) that there has not been much delay in the filing of the suit for injunction by the plaintiff;
(iii) that the goods of the plaintiff have acquired distinctiveness and are associated in the minds of the general public as goods of the plaintiff;
(iv) that the nature of activity of the plaintiff and that of the defendant are the same or similar;
(v) that the goods of the parties, with which the trade mark of the plaintiff is associated, are the same or similar;
(vi) that the user of the same trade mark or trade name by the defendant is likely to deceive and cause confusion in the public mind and injury to the business reputation of the plaintiff;
(vii) that the sphere of activity and the market of consumption of goods of the parties are the same;
(viii) that the customers of the plaintiff inter alia include uneducated, illiterate and unwary customers who are capable of being deceived, confused or misled.
14. ' Now it is to be seen in the light of the above, how for the test laid down above is attracted in the plaintiff's case when over all getup of the plaintiff's trade mark it is to be seen the plaintiffs Mark "Zeera Plus" are written separately in two different colour "Zeera" in yellow in the brown background.
15. "Plus" is in brown colour in the yellow background. A broad strip of red colour running on the left side displaying "LU" with prominence. As against this, when the mark of the defendant is viewed at page 79 in part 2, to the Counter Affidavit on the right hand image of 'pied piper' is on the left side.
16. Next to it and within backer's 'Hat' "Peek Freens" is mentioned. On extreme right photograph of mother and child is displaced in the blue background, in between image of pied piper and photograph `Gluco' in artistic, bold running writing in dark blue colour is written and under it `plus' in capital letter and above, 'Gluco Energy' in capital white word in semicircle with red background is written. When both the marks are put together and viewed in totality both are quite dissimilar and distinctive. In the case of National Detergent Ltd. v. Assistant Registrar of Trade Mark 1989 MLD 1137 it was held that marks are to be adjudged in totality over all impression was held to be the determining factor.
17. ' Contentions of the learned counsel for the plaintiff that where a distinctive feature is copied restraining orders can be passed and the reliance placed on Jamia Industries Ltd. v. Caltex Oil
(Pak) Ltd. And another PLD 1984 SC 8 and Bandenawa Ltd. v. Registrar of Trade Marks, Karachi PLD 1967 Karachi 492. It was asserted by Mr. Iqbal that "Plus" is essential feature of the Mark and "Zeera Plus" is also known as Plus alone as stated above. It appears that plaintiffs have added the mark plus when they applied for its registration on 22-5-1997, the defendant had applied for the registration of said mark on 27-12-1997, plaintiff claims to be using said mark. The defendant have placed on record invoices with effect from 25-7-1997 Annexures "E/ 13 to E/138" to demonstrate that "Gluco Plus" is being marketed, apparently since July, 1997 unhindered. In a 'Passing off action', it must be shown that the plaintiff has acquired substantial goodwill and reputation in the mark for quite a long period and that the defendant has entered into said field only recently. From what has been discussed above, the plaintiff claims to be using said mark since 1997 and the defendant also claim its user since February, 1997 though the invoices which have been placed on record referred to above shows that "Gluco Plus" is being marketed since July 1997, prima facie there appears to be parallel use of the said mark "Plus" by both the parties.
18. ' The word Plus means "with addition of', "added to", "increased by", "extra", "additionally", "surplus", defendant has placed on record marks of various products for instance "Pert Plus", "Tropical Plus", "Ensure Plus", to demonstrate that the word "Plus" is generally used by various traders to denote that something more is added to the quality generally reputed to be associated with any particular produce. Section 13 of the Trade Mark Act do recognize disclaimer. Declaration of a disclaimer subject to limitation provided under section 13 of the Trade Mark Act, is to be decided by the Registrar or the Tribunal deciding such matter. In the instant case, applications both of the plaintiff and defendant are pending before the Registrar. Prima facie, the plaintiff has not shown, sufficiently long user of the mark. Plaintiff was not able to persuade me to concur with their claim of deception allegedly practised by the defendants. The mark "Plus" prima facie is not reflective of distinctive feature reputed to be attached with the plaintiffs mark. Both the plaintiff and defendant seems to have used this mark in laudatory and non-distinctive sense, referring to something more than generally reputed or know to be contained in their respective products. In case of the plaintiffs "Zeera Plus" it is `Zeera' that is claimed to be more in quantity then generally is and so also defendant has used the "Plus" to denote the additional nutrient in their "Gluco Plus" biscuits when the mark of products of the plaintiffs and defendant are viewed from the stand point of any unwary purchaser both the mark when viewed, each appears to be quite different and easily j distinguishable. There appears to be no likelihood of confusion or deception from the unwary purchaser point of view. One may refer to the case of Tapal v. Lever Brothers 1997 MLD 1277 and so also the observation made in the case of "Always Trade Mark" 1986 RPC 93 where it was held that where it K appears that mark is used as suffix it assumes laudatory connotations and is invariable disclaimed. As discussed above number of marks have been placed on record wherein, the word "Plus" has been disclaimed. In my humble opinion plaintiff has failed to make a prima facie good case for grant of injunction. L Defendant is, prima facie, manufacturing and marketing their product "Gluco "Plus" since July, 1997, suit was filed almost over 1-1/2 years i.e. 3-3-1999, in my humble opinion application does not merit consideration on account of delay as well. In cases Aeg Telefunken Pakistan Ltd. v. Electric Concern Corporation 1985 CLC 155; Mst. Khurshid Bibi v. Province of Punjab and another 1987 CLC 242 and Mst. Najma Rana v. S.M. Maroof and another 1989 MLD 1317 the injunction was (M declined where the plaintiff did not approach the Court promptly. The upshot of the above discussion, the injunction IN application is dismissed and the same stands disposed of as such.