2011 C L D 1730
[Quetta]
Before Mrs. Syeda Tahira Safdar, J
Messrs AKHTAR MUHAMMAD AND BROTHERS through Proprietor ---Appellant
Versus
Haji MUHAMMAD NABI AND BROTHERS and another ---Respondents
Civil Miscellaneous Appeal No. 8 of 2011, decided on 24th August, 2011.
(a) Trade Marks Ordinanc e (XIX of 2001) ---
----S. 40(5) ---Trade mark ---Infringement ---Scope ---Act of infringement only takes place
when there is a registered trade mark --- In absence of registration, act of infringement is
nowhere.
(b) Trade Marks Ordinance (XIX of 2001) ---
----Ss. 39, 40 & 41 ---Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 & 2 ---
Infringement of trade mark ---Interim injunction ---Pre-conditions ---Plaintiff claimed that
trade mark in question was registered in his name and use of the same by defendant was
an act of infringement ---Interim injunction was granted by Trial Court in favour of
plaintiff ---Plea raised by defendant was that no trade mark was registered in favour of
plaintiff ---Validity ---In absence of Certificate of Registration of Trade Mark, no r ight
accrued in favour of plaintiff, infringement of which could be claimed ---No prima facie
case existed in favour of plaintiff and balance of inconvenience was also not in his
favour ---In absence of other two ingredients, suffering of irreparable loss wa s out of
question ---Trial Court did not properly appreciate the facts thus arrived to the conclusion
which was not in accordance with law and facts, therefore, the same was not sustainable --
-High Court in exercise of appellate jurisdiction, set aside the o rder passed by Trial Court
and application of interim injunction filed by plaintiff was dismissed ---Appeal was
allowed, in circumstances.
Muhammad Qahir Shah for Appellant.
Kamran Murtaza for Respondent No.1.
Date of hearing: 8th June, 2011.
ORDER
MRS. SYEDA TAHIRA SAFDAR J. ---The appellant, feeling aggrieved of order
dated 18 -2-2011, of Additional District Judge -IV, Quetta, whereby the application filed
under the provisions of Order XXXIX, Rules 1 and 2, Civil Procedure Code (C.P.C.), was
granted in favour of respondent No.1, thereby the appellant is restrained from
"launching/bringing the product in the name of "FRUTTI" (INSTANT JUICE POWDER)
and the respondent No.2/ defendant No. 2 is restrained from releasing the said product
in favour of th e respondent No.1/defendant under sections 39 to 41 of the Trade Marks
Ordinance 2001, subject to furnishing surety by the plaintiff -applicant in the sum of
Rs.10,20,000 in accordance with the section 55 of the Trade Marks Ordinance 2001
before the court."
The appellant assailed the order on the ground that despite the fact that the
respondent No.1 filed the suit without having any vested right, legal title or character
about the consignment of 3348 cartons of "FRUTTI" Flavored Instant Drink Powder, the
suit has been filed only to harass, and blackmail the appellant. It is further contended that
the trial court having no jurisdiction in the matter, while respondent No.1 had already
availed the remedy before Collector Customs, Balochistan, by way of filing c omplaint,
which was entertained, and found baseless. The main suit was not maintainable, and
liable for dismissal. It is further contended that the consignment in question was lawfully
imported by the appellant having different trade mark product, which ha s already been
observed by the Customs Authorities. Despite the fact respondent No.1 with mala fide
intention filed instant suit for illegal gains. It is also contention of the appellant that the
Trade Mark Registry, Karachi had never issued any registrati on certificate in favour of
respondent No.1, rather only the application submitted by respondent No.1 was
processed. It is further contended that the trial court while misinterpreting the relevant
provisions of law, made an order thereby restrained the app ellant, which caused
irreparable loss to him. It is, therefore, prayed that impugned order be set aside, while
application for interim injunction be dismissed.
The learned counsel for the parties are heard at length, and documents attached
with the appeal are perused. The learned counsel for the appellant argued that the product,
imported by the appellant, is absolutely different from the product, which has been
imported by respondent No.l. Further, there is non -compliance of the legal requirements
on part of respondent No.1, as no undertaking/ surety was given by the respondent No.1
while filing the complaint as required, thus he is not entitled for the relief claimed. It was
further argued that the respondent No.1 is not the owner, rather his status is on ly of a
distributor of the goods, while as per relevant provisions of law only owner can give
notice for infringement of registered trade mark. It is argument of the learned counsel that
the appellant is lawful importer of the goods in question, thus entit led to utilize the same.
It is further his argument that the provisions of Trade Marks Ordinance, 2001 are not
applicable in respect of imported goods. It was his argument that the suit was
incompetent, which was required to be dismissed, and he (appellant ) has made no
violation of law by importing the goods in question, thus no restraining order can be made
to deprive him from his legal right. Replying to the arguments advanced by learned
counsel for the appellant, the learned counsel for the respondent No .1 strongly asserted
that the trade mark has already been registered in favour of respondent No. 1 under
relevant law. Further, there is also a Certificate of Registration of Copy Right bearing
No.22010 -COPR in his favour. It is further contended tha t the product in question, which
has been imported by the appellant, is similar to that of the product of respondent No.1, to
which extent Trade Mark has already been registered. It was his argument that the
appellant is not holder of a registered trade ma rk, therefore, not entitled for any relief. He
strongly refuted the arguments and asserted that there is no concealment of facts, nor
there is any mala fide on his (respondent No.1) part. In addition, surety, as required
under impugned order, has alre ady been filed by him.
According to the record, the respondent No.1/plaintiff filed a suit seeking
declaration, and permanent injunction thereby claiming himself to be sole distributor of
product known as "FRUTTI" AND "TOP JUICES" (INSTANT JUICE POWDER ) for
Pakistan, with contention that the product has been imported after completing all the legal
formalities, while huge amount is being invested in the business. It is further pleaded that
respondent No.1/plaintiff applied for registration of trade mark to the Government of
Pakistan, Intellectual Property Organization Trade Mark Registry, whereupon Trade Mark
with registration No.245780 was allotted to him, publication was also made in same
respect in daily newspapers. It is his contention that the produc e i.e. "FRUTTI" AND
"TOP JUICES" (INSTANT JUICE POWDER) is already registered, therefore, no one can
use the same name, as required under law, but the defendant/appellant is trying to
introduce a low standard product in the market just to defame his compan y, and loss to
his name, and logo. It is also pleaded that having knowledge of the same, the matter was
reported to the concerned Authorities, but no concrete steps were taken in same respect
by the concerned Authorities, resultantly instant suit has been filed by the
plaintiff/respondent No.l. In reply defendant No.1 (present appellant) strongly contested
the plea taken by the plaintiff/respondent No.1 in the suit, and denied issuance of any
registration certificate by Trade Mark Registry Karachi in favour of the
plaintiff/respondent No.l. The plaint was accompanied by an application under the
provisions of Order XXXIX, Rules 1 and 2, C.P.C. for grant of interim injunction, which
was allowed by the learned trial court through order dated 18 -2-2011 in terms as
mentioned hereinabove, which is impugned in present appeal. In present case, the matter
in dispute is use of similar Trade Marks. The plaintiff/ respondent No.1 claimed his right
being possessor of a registered Trade Mark, which has been infringed, by the act of the
appellant, therefore, claimed violation of his right existed in his favour under provisions
of Trade Marks Ordinance, 2001. Section -39 of the Trade Marks Ordinance, 2001, is
relevant in the matter in hand, as it describes the rights conferre d by registration of a trade
mark in favour of a person. It reads as under: --
"39. Rights conferred by registration .---(1) A registered trade mark shall be
personal property.
(2) The proprietor of a registered trade mark shall have exclusive rights in th e
trade mark which are infringed by use of the mark in Pakistan without his consent.
(3) Without prejudice to the rights of the proprietor of a registered trade mark to
obtain any relief under any other law for the time being in force, the proprietor
shall also have the right to obtain relief under this Ordinance if the trade mark is
infringed.
(4) References in this Ordinance to the infringement of a registered trade mark
shall be to any such infringement of the rights of the proprietor.
(5) The rights of the proprietor shall have effect from the date of registration:
Provided that no infringement proceedings shall begin before the date on which
the trade mark is in fact registered.
(6) The rights conferred by registration of trade mark under this Ordi nance shall
extend to trade mark registered under the Trade Marks Act, 1940 (V of
1940)"
While section 40 of the Trade Marks Ordinance, 2001, is also very much relevant,
which describes the instances, whereby infringement of a registered trade mar k has been
made. The section reads as under: --
"40. Infringement of registered trade mark. ---(1) A person shall infringe a
registered trade mark if such person uses in the course of trade a mark which is
identical with the trade mark in relation to good o r services which are identical
with those for which it is registered.
(2) A person shall infringe a registered trade mark if such person uses in the
course of trade a mark where because: --
(a) the mark is identical with the trade mark and is used in relat ion to goods or
services similar to the goods or services for which the trade mark is registered; or
(b) the mark is deceptively similar to the trade mark and is used in relation to goods or
services identical with or similar to the goods or services for w hich the trade mark
is registered, there exists a likelihood of confusion on the part of public, which
includes the likelihood of association with the trade mark.
(3) A person shall infringe a registered trade mark if the person uses in the course
of trad e a mark which is identical with, or deceptively similar to the trade mark in
relation to: --
(a) goods of the same description as that of goods in respect of which the trade a mark
which is registered;
(b) services that are closely related to goods in resp ect of which the trade mark is
registered;
(c) services of the same description as that of services in respect of which the trade
mark is registered;
(d) goods that are closely related to services in respect of which the trade mark is
registered.
(4) A pe rson shall infringe a registered trade mark if the person uses, in the course
of trade, a mark which: --
(a) is identical with or deceptively similar to the trade mark; and
(b) is used in relation to goods or services which are not similar to those for whic h the
trade mark is registered. Where the trade mark is a well -known trade mark, or has
a reputation in Pakistan, and the use of the mark, being without due cause, takes
unfair advantage of, or is detrimental to, the distinctive character or the repute of
the trade mark.
(5) A person shall infringe a registered trade mark if the person uses such
registered trade mark as his trade name or part of his trade name.
(6) A person shall infringe a registered trade mark if the person uses such
registered trade ma rk as his domain name or part of his domain name or obtains
such domain name without the consent of the proprietor of the registered trade
mark, with the intention of selling such domain name to another including the
proprietor of the registered trade mark .
(7) A person who applies a registered trade mark to material intended to be used
for labeling or packaging goods shall be treated as a part to any use of the material
which infringes the registered trade mark if when he applied the mark he knew or
had r eason to believe that the application of the mark was not duly authorized by
the proprietor or a licensee.
(8) In all legal proceedings, a person who sells or offers or exposes goods for sale,
or puts them on the market or has in possession for sale or an y purpose of trade or
manufacture any goods bearing a mark which infringes a registered trade mark
shall be treated as a party to infringement of a registered trade mark, unless he
proves that:
(a) having taken all reasonable precautions, he had no reasons to suspect the
genuineness of the mark; and
(b) on demand made by Tribunal, he gave all the information in his power with
respect to the persons from whom he obtained such goods; or
(c) he had, otherwise acted innocently.
In view of subsection (5) of sec tion 40 of the Ordinance the right of proprietor
accrues from the very date when the registration has been effected, while proviso to the
subsection specifically speaks that no infringement proceedings begin before the date on
which the trade mark is in fa ct registered. Therefore, the act of infringement only took
place when there is a registered Trade Mark, and in absence thereof the act of
infringement is no where. In present case, though the respondent No.1/plaintiff claimed
registered trade mark bearing No.245780 in respect of product "FRUTTI AND TOP
JUICES", issued in his favour, but contrary to it the document, which has been referred as
a Registration Certificate bearing date 21 -2-2008 having No.245780 reveals that the
mentioned number is only number of the application submitted for registration of trade
mark. It is further noted in the bottom of it that: --
"Note: -- THIS IS AN ACKNOWLEDGEMENT RECEIPT OF APPLICATION
AND NOT REGISTRATION CERTIFICATE."
This clarifies that it is not a Registration Certif icate, rather only an
acknowledgment receipt of the application submitted by the applicant for the purpose.
Further, reliance has also been placed on a Certificate of Registration of Copy Right
bearing registration No.22010 -COPR by the respondent No.1, ori ginal also produced as a
Certificate of Registration of Trade Mark, but it is also not properly referred or relied,
rather it is only a Certificate of Registration of Copy Right, and not of a Trade Mark. The
plaintiff/respondent No.1 misquoted the document s and by misrepresenting them tried to
mislead the court, which shows mala fides on his part. Furthermore, the annexed letters
with the memo of appeal bearing dates 3 -11-2010 and 16 -11-2010 clearly disclosed that
the trade mark has not yet been registered in favour of respondent No.1/plaintiff. The trial
court has failed to consider this aspect of the case. In absence of a Certificate of
Registration of Trade Mark, no right accrued in favour of respondent No.1/plaintiff,
infringement of which can be claimed . No prima facie case existed in favour of
respondent No.1/plaintiff at this stage, while balance of inconvenience is also not in his
favour. In absence of two ingredients suffering of irreparable loss is out of question.
The trial Court has not properly appreciated the facts, thus arrived to the
conclusion, which is not in accordance with the law and facts, thus not sustainable. In
view of the above discussion, the appeal is hereby accepted, impugned order dated 18 -2-
2011 of Additional District Judge -IV, Quetta, is hereby set aside. The application made
under Order XXXIX, Rules 1 and 2, Civil Procedure Code (CPC) stands dismissed.
No orders as to costs.
M.H./107/Q Appeal allowed.This judgment is reproduced from a publicly available source for informational purposes and does not constitute legal advice. If you believe this listing contains an error,
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