1. ' Through this application filed under Order XXXIX, Rules 1 and 2 r/w section 151, C.P.C., plaintiffs who have filed a suit for infringement and passing off and for permanent injunction, account, damages etc. Have prayed for grant of temporary injunction pending final disposal of the suit restraining the defendants and their affiliates by themselves or through their servants, dealers, representatives, agents or otherwise whosoever from infringing the registered Design of plaintiffs-company of Plastic Bottle under the label of their trade mark registered under No,10449-D and from selling, offering for sale, advertising or otherwise passing off the defendant's product as and for the products of the plaintiffs or persons having a business connection with the plaintiffs, by the use of similar Design for the sale of their inferior quality product, or any other mark closely resembling the plaintiffs, registered Design as to be likely to deceive or cause confusion with the Design of the plaintiffs upon their products. This application is supported by an affidavit of Muhammad Khaleeq, ,General Manager of the plaintiffs Mills stating therein that the plaintiffs are the sole, true and original owner and proprietor of the specific Design of Bottle/Container registered under No,10449- D which is under the use of the plaintiff since long without any let or hindrance and plaintiffs have acquired a substantial and memorable amount of goodwill and appreciation and recognition all over Pakistan in the general public as well as in the relevant business community or traders who belong to the same trade in Pakistan. The trade mark "Seasons Canola" alongwith specific calligraphic style and getup is established as the Hallmark of the plaintiff. They claim to have invented the specific Design of the Bottle/Container for the marketing, selling distribution of their product for public consumption. The plaintiffs claim to be market leader due to quality and manufacturing of cooking oils in Pakistan having maximum authorized dealers throughout the country. It is alleged that despite being fully aware of the plaintiffs substantial reputation, the defendant with mala fide and ulterior motives have started manufacturing and selling cocking oil using exactly similar Design of Bottle/Container to imitate the registered Design of the plaintiffs in order to usurp the existing goodwill of plaintiffs and as such they are violating the law specially section 8 of the Patent and Design Ordinance, 2000. The defendants have caused the infringement of the goods and by trading unfairly are causing irreparable losses and damages to the plaintiffs. It is further alleged that defendants are encroaching upon the rights of the plaintiffs and to defraud the public into believing that the goods manufactured and sold by the defendants so marked emanate from the plaintiffs or their affiliates and thereby causing confusion and deceptions in the general purchasing public particularly amongst the unwary purchasers. The adoption of the imitated Design amounts to misrepresentation made in the course of trade to the prospective customers and is likely to cause un-quantified/ irreparable damages to the business and/or goodwill of the plaintiffs by copying such trademark and Design. Unless the defendants are restrained through an injunction of the Court, the plaintiffs shall suffer irreparable loss and damages. A perusal of the plaint shows that virtually the same reliefs has been sought by the plaintiffs in the plaint apart from damages assessed at Rs.10 million with interest thereon at the rate of 14% per annum from the date of the suit till payment.
2. ' In response to the summons served upon the defendants, the defendant No,1 has filed counter- affidavit of their Legal Manager Taj Muhammad Khan who has controverted the allegations made against the defendants in the affidavit filed in support of the application under Order XXXIX, Rules 1 and 2, C.P.C. Preliminary legal objections have been taken by stating that the application is misconceived, mala fide and illegal, hence liable to be dismissed with costs as the plaintiffs have - failed to make out a prima facie case for grant of temporary injunction. It has been further stated that the balance of convenience is not in their favour and no irreparable loss is likely to be sustained by them if the application is rejected. It has also been alleged that the whole edifice of the proceedings filed by the plaintiffs is based upon alleged Design of registration obtained by them ,through fraud and concealment of material facts as the plaintiffs after having been served with notice in Suit No,263 of 2004 (Messrs Faisalabad Oil Refinery (Pvt.) Ltd. v. Messrs Wali Oil Mills Ltd.) for permanent injunction and damages, have filed this suit only as a counter-blast and in fact the plaintiffs have not come to the Court with clean hands. It is further stated that the suit filed by the plaintiff is not in respect of trade mark as their trade mark is "Season" whereas defendants are selling their product under the trade mark "Kisan" and have their own goodwill and reputation. It has further been stated that the plaintiffs have been admittedly using the alleged bottle in the course of -their business long before the filing of the application for grant of copy right in design as such no novelty resided in the said design when the same was applied for registration and under the well-established law no registration is effected, unless the design or configuration sought to be protected is new and original and not of pre-existing type. It is further alleged that even from the averments made in plaint as well as in the application for grant of temporary injunction it is fully established beyond any reasonable doubts that the alleged design was in use long before the application for registration was made, hence plaintiffs are not entitled for the relief claimed and the application is liable to be dismissed with costs. The defendant No,1' have claimed that they are carrying on a well-known and reputed business as manufacturers, processors and merchants of various quality products for the last several decades specially "Ghee' and Cooking Oil and other allied goods which are made according to international standard and are popular with great demand throughout the country. They have their own trade mark `Kisan' having a reputation in the market. It is further alleged that the plaintiffs have approached the Court with unclean hands and design of the Bottle/ Container was got registered through misrepresentation and suppression of facts for which the defendants have filed J.M. No,06/2004 and notice thereof has also been served upon the plaintiffs which is also fixed alongwith this suit.
3. ' Rejoinder has been filed on behalf of the plaintiffs reiterating the facts as stated in the affidavit filed in support of the application for grant of temporary' injunction. The exclusive right of the defendant to use the word "Kisan" has also been disputed as it is a common word. It has been reiterated that defendants are not only infringing the registered Design but are also passing off their goods under the identical/similar containers which is the exclusive property of the plaintiffs by virtue of registration in their favour. The plaintiffs have, therefore, asserted their rights for grant of temporary injunction.
4. ' Mr. Kh. Mansoor Ahmed learned counsel for the plaintiffs has advanced his arguments on the same line as taken in the plaint, affidavit in support of the application for grant of temporary injunction and the rejoinder. It has been vehemently urged that the design of the Plastic Bottle/ Container has been invented by the plaintiffs, and in view of their application for registration filed on 9-3-2000 said design stands duly registered as Design No,10449-D on 13-3-2004 with the Registrar of Design. Such certificate has been placed on record alongwith the photographs showing the front, back, side, top and bottom view of the said Plastic Bottle. Some advertisements, which appeared in different magazines and other periodicals have also been placed on record to show that their product is being sold under their trade mark in plastic bottle, design of which has been got registered by them. Learned counsel for the plaintiff in support of his plea for grant of temporary injunction has placed reliance on the cases reported as Jamshed Aslam Khan v. Mrs. Azra Jawed and 2 others 1995 CLC 436 (which was maintained in appeal as well), where temporary injunction in favour of the plaintiff was granted against defendant restraining them from infringing plaintiffs specified trade mark "Shahzadi Patti" (label) by passing off as the plaintiffs who had been using the trade mark registered in their name in their own right for quite sometime had a right to protect the same so long the registration in their name was not cancelled. Learned counsel has also placed reliance on J.N. Nichols (VIMTO) PLC v. Mehran Bottle (Pvt.) Limited Karachi PLD 2000 Karachi 192, which is again a case under the Trade Mark Acts. Plaintiff has also placed reliance on Sat Paul Singh, Trading as Kakar Industries, Meerut v. S.P. Engineering Works, Meerut 1982 PTC 193 decided by the High Court of Dehli (India) relating to piracy of registered design and principles governing grant of interim injunction in such cases. Another case cited by the learned counsel is that of "The Coca Cola Company v. A.G. Barr & Co. Ltd." decided by Court of Session, Scotland 1961 Reports of Patent, Design and Trade Mark Cases 387, where the respondent had been using a bottle of similar size which had fluting and a waist, but no label, for sale of beverages called "Kolabar" "Cydrap", and "Stilkursh". The last two drinks were distinguishable in colour from "Coca Cola' but both "Coca-Cola' and "Kolabar" were of the same dark brown, translucent colour, and in view of assurance given on behalf of respondent that pendente lite they would discontinue bottling "Kolabar"in the type of bottle complained of the petitioners application for interim interdict was refused. Learned counsel has also referred to Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd. 1996 PTC
(16) 202 from High Court of Calcutta) where injunction was granted in case of infringement of design. The learned counsel has also referred to the case of Powell v. The Birmingham Vinegar Brewery Company, Ltd. 1897 Reports of Patent, Design, and Trademark Cases 720.
5. ' Ms. Shazia Tasleem learned counsel for the defendants has argued that the plaintiffs are not entitled for grant of relief by way of temporary injunction as they have neither a prima facie case in their favour nor the balance of convenience. The apprehensions of irreparable loss are also uncalled for and in fact the plaintiffs have not come to the Court with clean hands. At the very outset learned counsel argued that law relating to trademarks is different from the law relating to the registration of designs hence the case-law cited by the learned counsel for the plaintiffs with reference to Trademarks shall not be applicable to the present case. She further argued that cases cited with reference to infringement of designs are also distinguishable on law and facts inasmuch as according to the certificate of registration, the design was registered on 13-3-2004 though such application appears to have been filed on 9th March, 2000. The plaintiffs have themselves claimed that the said design was first ever adopted and used by them in the year 1997 and thereafter it has been continuously in their use on a very large scale as is evident from the advertisements which appeared in various newspapers and periodicals such as English monthly Magazines "She" and "Women's Own" for the months of August, 1998. June, 1999 and August, 2000. Thus, it will be seen that the design got registered by the plaintiffs which was neither new nor novel, was in use much prior to its registration and was also published at least throughout Pakistan. Photocopies of the relevant pages of the said Magazine have been filed in Suit No,263 of 2004 and the original have been placed before this Court in this suit with a statement at the time of arguments. In support of her contention that the design should be new, novel and original and should not have been in use prior to date of application for registration, learned counsel has referred to the case reported as Tajuddin v. Haji Mushtaq and another 1995 CLC 2182, where injunction was refused while taking into consideration such ground amongst others. Learned counsel has further referred to Messrs Niky Tasha India Private Ltd. v. Faridabad Gas Gadgers Private Ltd. AIR 1985 Delhi 136, where in a suit for infringement it has been held that "it is well-settled both in India and in England that an interlocutory injunction will not normally be granted where damages will provide an adequate remedy should the claim succeed." It was further held that "the mere fact that the plaintiff is in possession of a patent or of a registered design is not of itself necessarily prima facie evidence of validity. On the contrary, where it appears that the design has only recently been registered, and where it appears that there is a substantial issue to be tried, an interlocutory injunction will not be granted." One of the reasons amongst others for refusal to grant injunction appears that the defendant had made an application on the original side of that Court for cancellation of plaintiffs design, in this case as well it is not disputed that the defendant has also filed J.M. No,6 of 2004 for cancellation of registration sought by the plaintiffs which is also fixed before this Court alongwith this suit. Reliance has also been placed on B.K. Plastic Industries v. Jayantilai Kalidas Sayani AIR 1972 Calcutta 339 where in it has been observed that even if a design which is original but is published earlier than the date of registration such design loses its novelty or newness on the date of registration and hence the registration may be revoked. Case of Maniar Industries Ltd. v. Mobin Plastic Industries Karachi 1987 CLC 135 has also been cited to canvass that a design which was allowed registration being already in market long before application, the prayer for registration and consequent registration, therefore, would be against scheme of Act II of 1911 and contrary to requirement of section 43(1) thereof that it may be "new or original designs not previously published". The same view appears to have been taken by Abdul Rashid, J. In the case of Qadar Bakhsh v. Ghulam Muhammad AIR 1934 Lahore 709. In this context learned counsel has also placed reliance on Dwarkadas Dhanji Sha v. Chhotalal Ravicarnadas & Co. AIR 1941 Bombay 188.
6. ' Lastly, the learned counsel has referred to a case from High Court of Justice "Chancery Division in the matter of Vredenburg's Registered Design No,788, 451 (Reports of Patent, Design, and Trade Mark Cases 52 RPC 7), where the rule has been laid down in the following words:-- "Section 49 requires a design to be new or original and not previously published".
7. ' Learned counsel has, therefore, vehemently urged that the design already having been published and not being new or novel was got registered by the plaintiff through misrepresentation, for cancellation whereof the defendants have filed J.M. No,6 of 2004 under section 10 of the Registered Design Ordinance, 2000.
8. ' I have given due consideration to the arguments advanced by the learned counsel for the parties and perused the material available on record with their able assistance and the case-law cited in support of their respective contentions.
9. ' Indeed, it is not a case for infringement of a trade mark and as such the case-law cited by the learned counsel for the plaintiffs with reference to Trade Mark Act has no applicability to the facts of this case. Registered Design Ordinance XLV of 2000, which was promulgated on 7-9-2000 is in the field and the rights of the parties are to be determined as per requirement of the said Ordinance. Subsection (2) of section 3 of the Ordinance says that subject to the provision of the A Ordinance design shall not be registered, unless its new or original apart from other conditions specified therein. Subsection (3) has laid down that for the purpose of novelty, any disclosure to the public of the industrial design shall not be taken into consideration if it accrued within 12 months preceding the filing date or, where applicable, the priority date. Admittedly the application for registration of design as per certificate of registration issued on 13-3-2004 was filed on 9-3-2000 whereas the said design was published in English Magazines "She" and "Women's Own" of August, 1998, much prior to the specified time of one year as per law hence there appears to be a violation of section 3(3) of the Ordinance and the case-law cited by the learned counsel for the defendant as referred to above stand fully attracted. According to section 8 of the Ordinance, a proprietor of a registered design may bring a suit for recovery of damages and for injunction against the B continuation of infringement provided that, for the purpose of grant of temporary injunction, the registered proprietor must show that he, has a prima facie case and that his design is valid and it has been infringed by the defendant, which requirements I find lacking in this case.
10. ' In view of the discussion made above and material placed on record, so also pendency of J. M.
11. No,6 of 2004 filed by the defendant for cancellation of registration obtained recently by the plaintiff allegedly through misrepresentation, I do not find a prima facie case in favour of the plaintiff.
12. Moreover, the design got registered by the plaintiffs does not appear to be new or novel and it was already in market long before filing of application for registration. Even the plaintiffs have stated that they are using such design since 1997 and from the material available on record it appears that it was published in Pakistan at least in two Journals named above in the month of August, 1998. The case-law cited by the learned counsel for the defendants with reference to such aspect of the case appears to be relevant. The following observation made by Ibadat Yar Khan, J. In the case of Maniar Industries Ltd. (supra) appears to be applicable to the present case on all fours:-- "The above evidence clearly indicates that the 'Diamond Design' combs were in the market in 1980 when the application of the respondent No,1 came to be filed praying for registration of the `Diamond Design' of the combs. As such the prayer for registration and consequently the registration itself would be against the scheme of the Act and contrary to the provisions of section 423(1) of the Act. Which limits the powers of the Controller to register only such designs as are "new or original designs not previously :published."
13. ' The balance of convenience also does not appear to be in favour of the plaintiffs and no irreparable loss is likely to be caused to them if the injunction is refused, as they have already sued for damages.
14. ' Resultantly, I find that no case for grant of temporary D injunction has been made out as all the requirements for such relief viz. Prima facie case, balance of convenience and irreparable loss are lacking in this case. This application is, therefore, dismissed, however, with no order as to costs.