1. ' The plaintiff claimed to be engaged in business of grinding, packing, marketing/selling of different kind of spices in Pakistan under a specially designed Trade Mark "SHAN" label. In the label, the word "SHAN" has been shown in a Oval Device in red and yellow background which is being used by him since 1.980. Annexure 'A' as owner of Registered Trade Mark by virtue of registration under T.M.
2. No,86053, in Class 30, dated 22nd April, 1985 in respect of "Spices only" with validity up to 2-4-2007.
3. He claims that due ito excellent quality and fine taste of the spices packed by him, the same are extremely popular and sought after throughout the country. 'The defendant, according to the plaintiff is engaged in the packing and marketing of spices, of the 'same description that of the plaintiff. It is the, case of the plaintiff that defendant mala fide adopted an identical/closely similar trade mark, viz. "AALI SHAN" label, by depicting work "AALI" in extremely small script and gave prominence to word "SHAN", in bold letters in the Oval Device, which is identical with that of the plaintiff. The plaintiff took serious notice of this illegal act and lodged an F.I.R. Bearing No,1725 of 1998 with P.S. Buffer Zone. As a result thereof punitive action wds taken by the police. The defendant discontinued his illegal activities and stopped marketing his spices under the Trade Mark "AALI SHAN" label. Recently, the defendant has again commenced the marketing of his spices under the Trade Mark "AALI SHAN". The words AALI SHAN has been shown in an oval device, which is identical with that of the plaintiff and the word AALI has been shown in extremely small script. The defendant is not only using the word "SHAN" but also adopted the same design, get up, colour scheme and other leading features of plaintiffs Trade Mark. The defendant has deliberatively and with mala fide intentions copied the Registered Trade Mark of the plaintiff to earn illegal profits out of the reputation and goodwill acquired by the plaintiff and defendant is infringing and passing off his spurious spices by selling to the public in order to make briefs and damage the business of the plaintiff and the spices of the defendant bears the features of the packing which are confusing, similar and identical to that of the plaintiffs Registered Trade Mark and thus constitutes gross and flagrant infringement of the plaintiff's Registered Trade Mark, inevitably lead to deception and confusion to unwary purchasers who were likely to believe or be led to believe that the defendant's spices, emanate and manufactured by the plaintiff or it has some connection with the plaintiff in the course of the trade. The aforesaid act of the defendant is calculated to deceive, the unwary purchasers and general public. The plaintiff on above facts, filed the suit with following prayers:-- "(a) For permanent injunction restraining the defendant, his servants, agents, distributors, representatives, dealers and/all persons claiming through him, from infringing the plaintiffs Registered Trade Mark SHAN label, under No,86053 in clause 30, in respect of 'Species only' from marketing, selling, distributing, offering for sale, advertising or otherwise using on their spices Trade.
4. Mark AALI SHAN label and the said mark in conjunction with any other mark or other similar mark and in any colour.
(b) For a permanent injunction restraining defendants his servants, agents, distributors, representatives, dealers/shopkeepers and all persons claiming through or under him from passing off or attempting to pass his spices, as those of the plaintiff by selling, offering for sale, advertising or otherwise dealing in conjunction with any other mark or any other similar trade mark in any colour.
(c) For an account of all profits made by defendant by using the infringing mark on his spices and for payment by the defendant to the plaintiff of all such profits.
(d) For an order to the defendant to deliver upon oath all labels, packets, cartoons, advertising materials, printing blocks, dies films and any other material which bears the infringed trade mark.
(e) For payment of Rs,400,000 as damages by defendant to the plaintiff.
(f) For the costs of the suit.
(g) And for any such further/better and other relief this Honourable Court deems just and equitable in the circumstances of this case."
5. ' An application (C.M.A. No,9449 of 1999) has been filed with supporting affidavit, wherein contents of the plaint were reiterated with prayer for grant of injunction restraining the defendant, their servants, agents, dealers and all other persons claiming through or under the same defendant from infringing, passing off, enabling others to infringe, pass off, manufacturing, marketing, selling his products viz. Spices, under the Trade Mark "AALI SHAN" label as those of the plaintiffs genuine products (species) under his genuine Trade Mark SHAN and otherwise using any mark or word similar to plaintiffs Trade Mark SHAN label.
6. ' On 12-11-1999, the defendant was restrained from publishing his product in newspapers or periodicals and he was further restrained from using the mark "SHAN" on his product alongwith same colour scheming in English and Urdu type set.
7. ' On 9-2-2000, MRs, Tabassum Ghazanfar, Advocate appeared on behalf of the defendant on her undertaking, this Court passed the order in following terms:-- "As regards this application learned counsel says that the defendants undertake not to advertise the goods under the impugned trade mark of Alishan Masala and also to cease packing of the same under saidtrade mark as well as exporting under the same trade mark. She also prays that one week's time may be given for removing of the products under the impugned trade name from the marke. To come up on 22-2-2000."
8. ' The application has been opposed by the defendant by his own counter-affidavit, averring therein that word "AALI" in "AALI SHAN" is quite distinct and readable and does not create any confusion and the same has been obtained under Registered Trade Mark and there is no infringement of trade mark of the plaintiff. It was also maintained that the suit of the plaintiff is frivolous. Rejoinder to the counter-affidavit was filed, wherein the facts stated in the affidavit in support of the application were reiterated again.
9. ' I have heard the learned counsel for the parties. Contention of Mr. Sultan Ahmed Shaikh, learned counsel for the plaintiff was that the plaintiff is owner of Trade Mark "SHAN". Annexure "A" or various kinds of spices which is registered in clause 30 of IVth Schedule to the Act, and its validity is effective up to 24th April, 2001. The said Trade Mark cannot be used by any person. It has been contended by him that the defendant has advertised and is marketing various kinds of spices by using the word "SHAN" on his products of spices. He has referred Annexure 'E" label containing the Trade Mark "SHAN" in oval with addition of word "AALI" above the word "SHAN" in oval. It has been further contended by him that the defendant has applied for the registration of the Trade Mark of "AALI SHAN" in clause 30 for the same products viz. Spices but till date, it has not been advertised in the Trade Mark General. He further contended that mere filing of the application for registration will not confer to the defendant any right to use. He further contended that the label used by the defendant is similar to the Trade Mark "SHAN" of the plaintiff and there is every likelihood that unwary purchaser may purchase the spices of the defendant under the notion that these are the products of the plaintiff or has some connection with plaintiff.
10. ' Learned counsel for the plaintiff has drawn my attention to the test formulated for the infringement of Trade Mark in Insaf Soap Factory v Lever Brothers Port Sunlight Ltd. (PLD 1959 (W.P.)
11. Lahore 381), wherein the learned Division Bench of Lahore High Court, by approving the view expressed in Ram Kumar Jalan v R.J. Wood & Co. (AIR 1941 Lahore 262), observed as follows: -- "That in cases of infringement of trade mark the test is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trade mark as the goods of the owner of the trade mark still holds good."
12. ' Learned counsel for the, plaintiff has also referred the case of Muhammad Fazil v. Messrs Ashfaq Brothers, Karachi (1981 CLC 1519), wherein the injunction granted by the trial Court was confirmed in appeal by observing that two labels are similar to each other and are likely to cause confusion and deception in minds of unwary purchaser.
13. ' Conversely, Mr. Adnan Ahmed, learned counsel for the defendant has taken two-fold pleas against the injunction application, firstly, that the application for registration of Trade Mark "AALI SHAN" in clause 30 by the defendant is pending. Though he conceded that till date, neither it has been registered nor advertised in the Trade Mark General under the provision of section 15 of the Act: Secondly, that the Mark "AALI SHAN" is not similar to the Mark "SHAN". He further contended that first syllable of the Mark "ALLI SHAN" is dissimilar with the trade mark of the plaintiff as such there is no similarity between the two marks, as such there is no likelihood to any confusion in the mind of unwary purchaser and in support of his contention, has referred the case of Abdul Wahid v. Hail Abdur Rahim and another (PLD 1973 SC 104). In the aforesaid case Trade Marks "Daigon" and "Dragon" were found to be dissimilar from the Trade Mark "Saigon" as the first syllable "Sai" was found to be dissimilar. Above view was based on the observations of Astbury, J. In Fox's Application (1920) 37 RPC-37) in following terms:-- "Where the suffix of two words is a common onenot-common on the Registrar, but common in the English language-one must, at all events, have some regard to the earlier portion of the word which is distinguished one from the other. If the suffix is common, the earlier portion of the word is the natural and necessary, and, in fact, the mark of the distinction."
14. ' It was further observed that it is an accepted principle that where words have a common suffix but if A earlier portion of these words is different, and if they do not conflict they are held to be distinctive.
15. ' In deciding the question of prima facie case, it has to be remembered that the plaintiff's case is primarily based on infringement of the registered trade mark. Of B course the plaintiff has made allegations with regard to passing off the defendants goods as those of the plaintiff.
16. ' Under section 21 of the Trade Marks Act, 1940 (hereinafter referred to as the Act), the registration of person in the register of 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 of those goods and that right shall be deemed to be infringed by any C person, who not being the proprietor of the trade mark of a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembles it as to likely to deceive or cause confusion in the course of trade, in relation to any goods in respect of which it is registered.
17. ' The consideration which has to be kept in mind is whether a member of the public buying the products of the defendant was likely to be deceived into believing that he was buying the products of the plaintiff.
18. ' In Bandenawaz Ltd. v. Registrar of Trade Marks, Karachi and another (PLD 1967 Karachi 492), late Justice Noorul Arfin, highlighted the principle to be applied for test for the purpose of ascertaining resemblances, by adopting the test applied in Aristoc Ltd. v. Rysta Ltd. (1940) 62 RPC 65, wherein the House of Lords, while considering the resemblance between Aristoc and Rysta stated the principle to be applied in such cases as follows:-- "The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938 (which corresponds to section 10), must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps, an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher for elcution (sic). The Court must be careful to make allowance for imperfect recollection and effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants. The tendency to slur a word beginning with 'a' is generally speaking very common, and the similarity between 'Rysta' and 'Ristoc' would, I think, fairly obvious. It would not be supposing to lean that a person asking for 'Aristoc' stockings from a shop assistant who only knew of 'Rysta' stockings had been supplied with the latter and vice versa."
19. ' In the light of the above pronouncements, it has to be decided whether there is any resemblance between the two labels on packets. With reference to the plaintiffs Trade Mark "SHAN", Annexure 'A'.
20. ' There is no doubt in my mind as would be crystal clear even on a cursory glance at these two marks that the defendant's Mark "AALI SHAN" is a colourable immitation of the plaintiffs registered Trade Mark "SHAN" as in Urdu, word "AALI" has been printed on the right side in small size, whereas, word "SHAN" has been highlighted in the oval, whereas, in English word "AALI" in small letters has been shown, whereas word "SHAN" is very prominent. The get up, design and colour scheme are all identical. The only difference which it has pleased the defendant to make that he branded his mark by adding "AALI" with Mark "SHAN" of the plaintiff. It is consequential keeping these two designs, marks, etc. Side by side, that they are bound to cause confusion in the market to the customer in general and amounting to a flagrant infringement of the plaintiffs registered trade mark definitely deceiving a purchaser of a firm acquainted with the plaintiffs get up and leading him to purchasing the defendant's products as that of the plaintiffs.
21. ' It may be pointed out that during the hearing, the label of the defendant was shown to the defendant's counsel in Court by me and on a cursory look, he himself was deceived by saying that it belongs to the plaintiff.
22. ' In my view, the plaintiff has a good prima facie case. I have noticed that resemblance between the two marks is so striking and the intention to infringe so obvious that the argument of balance of convenience is of no avail to the defendant. In my opinion a very strong prima facie case has been made out by the plaintiff and does not open to the defendant to say I hat they ought to be allowed to continue to take advantage of their own wrong. I am supported in these conclusions by the following observations appearing in the case of Rexona Proprietary Ltd. v. Majid Soap Works (PLD 1956 Sindh 1):-- "The next point is that in such a case the balance of convenience lies in favour of refusing a temporary injunction on the ground that the plaintiff would be ruined by refusal of injunction whereas the defendant would be ruined by granting the injunction, and that at this stage one should not anticipate the final result of the case.. It is perfectly true in this case that the plaintiff is a subsidiary company of Lever Brothers, and is a wealthy firm, whereas it appears the defendants are comparatively a petty concern. But in this case the evidence of the wrappers themselves is so clear that fraud is intended that the argument of convenience cannot be sustained."
23. ' The pendency of the defendant's application for registration of his mark with Registrar of Trade Marks will not disentitle the proprietor of a registered trade mark, if a case is otherwise made out, an injunction restraining the infringement of his registered trade mark merely because the person against whom the injunction is sought has applied for registration of his mark. On the other hand, the law as laid down in section 21 of the Act, is that the proprietor of a registered trade mark has the exclusive right to its use and that such right will be deemed to be infringed by any person who uses a mark identical with it or so nearly resembling to as it be likely to deceive or cause confusion.
24. ' It may be stated that the registration of trade mark is not meant for the benefit of the trader only but also protects the public-at-large and its main object is to secure free enjoyment of the right of manufacturing and marketing of one's products and also to save general public from being deceived by the acts of unscrupulous manufacturers and sellers of goods bearing the fake trade mark of otheRs, For maintaining the purity of the trade mark and for safeguarding the interest of the public, it is the duty of the Court to put restraint on use of another's trade mark by a person like the defendant; who is not entitled to use it.
25. ' Consequently. C.M.A. No,9449 of 1999 is granted, the order dated 12-11-1999 is confirmed, the defendant is restrained from infringing, passing off, enabling others to infringe, pass off, manufacturing, marketing, selling his products viz. Spices under the Trade Mark "AALI SHAN" label as those of the plaintiffs products (spices) under his genuine Trade Mark SHAN label and otherwise using any mark or word similar to plaintiffs mark SHAN label. Resultantly, the C.M.A. No,1446 of 2000 filed by the defendant for recall of order dated 12-11-1999 is dismissed.
26. Interim injunction confirmed.