2015 C L D 512

[Sindh]

Before Salahuddin Panhwar, J

HAMDARD LABORATORIES (WAQF) PAKISTAN---Plaintiff

Versus

MUHAMMAD FAHIM---Defendant

Suit No. 1268 of 2014, decided on 25th September, 2014.

(a) Trade Marks Ordinance (XIX of 2001)---

----Ss. 21, 43 & 74---Civil Procedure Code (V of 1908), O. XXXIX, Rr.1 &
2---Infringement and passing off of registered trade mark---Application for
permanent injunction---Contention of plaintiff was that he was marketing
under the Trade Mark of ROOH AFZA label but defendant had started
manufacturing, packing and marketing a syrup under the Trade Mark ROOH-
E-SAMAR label and both the marks were identical, confusing and
deceptively similar with each other visually as well as phonetically---Interim
injunction, application for---Validity---Injunction was a form of equitable
relief and was to be issued in aid of equity and justice but only where a
person had established all the three ingredients in his/her favour---Both
'Sharbat Rooh Afza' and 'Rooh-e-Samar' had no phonetic similarities---
Registration of 'mark' would give to its proprietor an exclusive right to use
the trade mark and registration was a prima facie evidence of its validity---
Infringement of such right could not be allowed to hold the field but before
restraining one from continuing with lawful trade or business it must be
established prima facie that his right being hit by exception could not be
allowed to continue---Similarity between two products/brands these should
so resemble that an ordinary consumer might not differ between what he
intended to purchase or what was presented to him---Bare look of both the
products did not result into any confusion because not only the colour
scheme but also the calligraphy and its manner were quite different from each
other---Mere having photo-graph/picture of different fruits was not sufficient
to believe the plea of plaintiff that label of defendant's product 'Rooh-e-
Samar' would cause 'confusion' or 'deception' to its customers of 'Sharbat
Rooh Afza'---Colour scheme, calligraphy and picture of fruits of products
was entirely different with considerable distinction to an ordinary eye---Label
of product of defendant would not result in causing a 'deception' or
'confusion' to the customer of plaintiff---No case of 'confusion' or 'deception'
having been made out, plaintiff had no prima facie case in his favour to
deprive the defendant from doing/continuing lawful business or trade---
Application for temporary injunction was dismissed in circumstances.

Wellcome Foundation Limited v. Karachi Chemical Industries

(Private) Ltd. 2000 YLR 1376; J&P Coats Limited v. Golden Thread
Industries through Proprietor 2011 CLD 811; Messrs Dewan Sugar Mills
(Pvt.) Ltd. v. M.B. Abbasi and others 2007 CLD 1610; M. Sikandar Sultan v.
Masih Ahmed Shaikh 2003 CLD 26; Mehran Ghee Mills (Pvt.) Ltd. v.
Chiltan Ghee Mills (Pvt.) Ltd. 2001 SCMR 967; The State v. Abdul Qayum
PLD 2001 SC 14; 1990 CLC 497; PLD 1973 SC 104; 1988 CLC 489; NLR
1981 UC 362; 1987 CLC 1539; 1980 CLC 1272; PLD 1971 Kar. 189; 1984
CLC 2478; PLD 1964 SC 536; 1972 SCMR 100; 2005 YLR 1895; 2006 YLR
1895 and 2006 YLR 856 ref.

Wellcome Foundation Limited v. Karachi Chemical Industries

(Private) Ltd. 2000 YLR 1376; J&P Coats Limited v. Golden Thread
Industries through Proprietor 2011 CLD 811; M. Sikandar Sultan v. Masih
Ahmed Shaikh 2003 CLD 26; Mehran Ghee Mills (Pvt.) Ltd. v. Chiltan Ghee
Mills (Pvt.) Ltd. 2001 SCMR 967; Puri Terminal Ltd. v. Government of
Pakistan 2004 SCMR 1092 and J.N. Nichols (VIMTO) PLC A Company
Incorporated in the United Kingdom v. Mehran Bottlers (Private) Limited,
Karachi PLD 2000 Kar. 192 rel.

(b) Trade Marks Ordinance (XIX of 2001)---

----Preamble---Constitution of Pakistan, Art. 18--- Object of the Ordinance---

Object of Trade Marks Ordinance, 2001 was to ensure a protection to the
goodwill, name and reputation of a "trade mark" to avoid any mala fide move
of other competitor to come and take the benefit of such name and reputation
of the 'mark'---Trade Marks Ordinance, 2001 would fall within the exception
of Art. 18 of the Constitution which had ensured and protected the right of
every citizen to enter upon any lawful profession or occupation and to
conduct any lawful trade or business---Trade Mark did not restrict any one to
enter upon a lawful business or to do a lawful trade but same would demand
that such trade or business should not be at the cost of the goodwill or
reputation of other registered 'mark'---'Trade mark' once registered would
become the property of the person in whose favour same was registered---No
new mark should be registered which might result into a 'deception' or
'confusion' while purchasing a product/brand---Any ordinary man while
purchasing a product/brand was not supposed to minutely examine the same
to find out the difference into a product in his hand or the one which he
intended to purchase---Name of product/brand alone or its phonetic would
not matter but scheme, colour, calligraphy and manner of presentation of
such product would matter while deciding a question of 'deception' or
'confusion'---Question of 'deception' and 'confusion' could be determined on
the principles that the purchaser/customer was not intelligent to stick with
name of product/brand one; that phonetic should not be such to let seller/shop
keeper to present other product than demanded with an excuse of similarity
between two; overall similarity consisting upon theme, manner and colour
scheme which was of more importance as difference in theme might not open
the eye of an ordinary man but the colour scheme would do the same.

Salman Ahmed Shaikh for Plaintiff.

Shamshad Ali Qureshi for Defendant.

Date of hearing: 10th September, 2014.

ORDER

SALAHUDDIN PANHWAR, J.---Through instant order I intend to

dispose of two applications Under Order XXXIX, Rules 1 and 2, C.P.C.
(C.M.A. No. 9812 of 2014), whereby the plaintiff has sought the relief of ad
interim injunction against defendant and another application under Order
XXXIX, Rule 4 read with section 151, C.P.C. (C.M.A. No.11282 of 2014)
filed by defendant regarding recalling of interim status quo order.

2 Plaintiff filed a suit for Injunction against infringement of Trade

Mark, passing off, unfair competition, Damages and account of profit.
Succinctly, facts of plaintiff's case are that plaintiff is an internationally
renowned organization, engaged in manufacturing and marketing herbal
drugs, syrups and consumer products for more than six decades and products
of plaintiff are a household name and is very popular among consumers. Sale
of plaintiff runs into billions of rupees. One of goods of plaintiff is marketed
under trade Mark of ROOH AFZA label. In view of excellent quality the
trade mark ROOH AFZA Label is extremely popular and plaintiff carries out
vast publicity for its such Trade Mark. Plaintiff has obtained registration of
the Trade Mark ROOH AFZA Label with the Registrar of Trade Marks, Trade
Marks Registry, Government of Pakistan Karachi and same is required to be
protected under section 86 of the Trade Marks Ordinance, 2001.

3. It was further pleaded that plaintiff came to know that defendant has
recently started manufacturing, packing and marketing syrup under the Trade
Mark ROOH E SAMAR Label. An Advertisement of ROOH-E-SAMAR
Label has appeared in daily Dawn dated 29th June, 2014. The plaintiff
claimed that trademarks ROOH AFZA Label of the plaintiff and ROOH-E-
SAMAR Label of the defendant are identical, confusingly and deceptively
similar with each other, visually as well as phonetically. Besides this, the
design, get up and colour scheme of both the Marks are identical, thus
making the marks confusingly and deceptively; same is sold on same counter
to same consumer hence is unlawful under section 67 of the Trade Marks
Ordinance, 2001. Defendant applied for registration of his label with
Registrar of Trade Marks, Trade Marks Registry, and Government of
Pakistan under trade mark application No.316901 in class 32 which is being
opposed by plaintiff and the opposition is pending adjudication thus no rights
accrue to the defendant within meaning of the Trade Marks Ordinance, 2001.
Plaintiff claimed to have suffered damages to their reputation and good will
by aforesaid wrongful acts of defendant towards its goodwill, reputation and
loss of business.

Along-with said suit the plaintiff also filed C.M.A. No.9812 with the
prayer that:--

"It is prayed on behalf of the plaintiff that this Hon'ble court may be
pleased to grant temporary injunction against the defendant, his servants,
agents, representatives and all persons claiming through them, from
infringing and Passing off the plaintiff's registered Trade Mark ROOH AFZA
Label by selling, marketing, offering for sale, advertising or otherwise using
on their syrups under the Trade Mark ROOH-E-SAMAR Label and using the
said Label in conjunction with any other Mark or confusing and deceptively
similar Mark and in any color".

The interim injunction was granted in favour of the plaintiff.

However, the defendant caused appearance and has also filed an application
under Order XXXIX, Rule 4 read with section 151, C.P.C. seeking recalling
of status quo order.

4. Learned counsel for the plaintiff has argued that since there is a
protection to its Trade Mark as such the defendant has been guilty of
infringement of his rights by preparing, packing, selling and marketing its
product ROOH-E-SAMAR by giving it a packaging, colour scheme and
name which may result in deceiving the customer of plaintiff, therefore,
plaintiff has got a good prima facie case; since trademarks of plaintiff is well
known and earns good result therefore, balance of convenience also lies in its
favour. If the injunction is not granted the irreparable loss and injury to
plaintiff shall continue. In support of case the counsel for plaintiff placed
reliance on the case-laws, reported as Wellcome Foundation Limited v.
Karachi Chemical Industries (Private) Ltd. (2000 YLR 1376), J&P Coats
Limited v. Golden Thread Industries, through Proprietor (2011 CLD 811),
Messrs Dewan Sugar Mills (Pvt.) Ltd. v. M. B. Abbasi and others (2007 CLD
1610), M. Sikandar Sultan v. Masih Ahmed Shaikh (2003 CLD 26), Mehran
Ghee Mills (Pvt.) Ltd. v. Chiltan Ghee Mills (Pvt.) Ltd. (2001 SCMR 967)
and The State v. Abdul Qayum (PLD 2001 SC 14).

5. Conversely, learned counsel for the defendant has contended that

defendant is a registered company, hence under Article 18 of the Constitution
has right to run business and such fundamental is guaranteed and even per
section 36(1) of Trade Mark Act 1940 defendant can use the applied Trade
Mark with its product; product of defendant is not similar in scheme and
colour therefore no question of deception to consumer is there; defendant has
applied in 2012 for registration of Trade Mark which is exclusive power of
Registrar where plaintiff has filed its objection therefore, instant suit is not
sustainable. The learned counsel for the defendant also placed the copies of
label(s) of 'Sharbat Rooh Afza', 'Rooh-e-Shireen (a registered trade mark of
Quice) and 'Rooh-e-Samar' duly pasted on a single paper to show that there is
no confusing resemblance. In the last he argued that no prima facie case or
balance of convenience is there in favour of plaintiff rather status quo is
causing irreparable loss and legal injury to defendant therefore, application of
the plaintiff merits dismissal. Case-laws, reported as 1990 CLC 497, PLD
1973 SC 104, 1988 CLC 489, NLR 1981 UC 362, 1987 CLC 1539, 1980
CLC 1272, PLD 1971 Kar. 189, 1984 CLC 2478, PLD 1964 SC 536, 1972
SCMR 100, 2005 YLR 1895, 2006 YLR 1895, 2006 YLR 856 were relied.

6. I have heard the arguments, so advanced by either sides, and have

also perused the available record.

7. Before diving into merits of the case, I would like to make it clear
here that no doubt injunction is a form of equitable relief and is to be issued
in aid of equity and justice but only where the person, seeking injunction,
establishes existence of all three ingredients in his/her favour. Reference, if
any, can well be given to the case-law, reported as Puri Terminal Ltd. v.
Government of Pakistan (2004 SCMR 1092) wherein honourable Supreme
Court held that:--

"21. No doubt an injunction is a form of equitable relief and is to be

issued in aid of equity and justice, but not to add injustice. For grant of such
relief, it is mandatory to establish that in order to obtain an interim
injunction, the applicant has not only to establish that he has a prima facie
case, but he has also to show that the balance of convenience is on his side
and that he would suffer irreparable injury/loss unless he is protected during
the pendency of suit".

8. To my understanding the Trade Marks Ordinance falls within

exception of Article 18 of the Constitution which, otherwise, ensures and
protects the right of every citizen to enter upon any lawful profession or
occupation and to conduct any lawful trade or business. Therefore, I feel it
proper to have a look at the objective of the Ordinance which is nothing but
to ensure a protection to the goodwill, name and reputation of a "trade-mark"
so as to avoid any mala fide move of other competitor to come and take the
benefit of such name and reputation of the 'mark' which, undoubtedly, is not
established in a day nor can it be achieved over-night. This has been the
object and purpose of getting a 'mark' registered under the law. The Trade
Marks, no where, restricts one to enter upon a lawful business or to do a
lawful trade but only demands that such, otherwise, lawful trade or business,
should not be at the cost of the goodwill or reputation of other registered
'mark'. It, nowhere, speaks about trade but 'the trade-mark' under which one
is; or intending to continue his business.

9. Having said so, I would further add here that 'trade-Marks', once
registered becomes the property of the person in whose favour it is registered.
Since, usually the people do not stick with the name alone while purchasing a
product, therefore, it became necessary to widen the scope of 'registered
Mark' that no new 'mark' should be registered which, because of its similarity,
may result into a 'deception' or 'confusion' to an ordinary eye while
purchasing a particular product/brand. An ordinary man while purchasing a
product/brand is not supposed to minutely examine the product/brand handed
over to him so as to find out the difference(s) into a product in his hand or the
one which he intended to purchase. Therefore, it is not the 'name' of
product/brand alone or its phonetic but the scheme, colour, calligraphy and
manner of presentation of the product which matter(s) while deciding a
question of 'deception' or 'confusion'. It is needful to add here that the
question of 'deception' or 'confusion' has been insisted for an ordinary eye,
which we have in abundance in our society. I am guided in my such view
with the case-law, reported as:--

M. Sikandar Sultan v. Masih Ahmed Shaikh (2003 CLD 26), wherein

it is held that:

"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 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."

In the case of Wellcome Foundation Limited v. Karachi Chemical Industries

(Private) Ltd. (2000 YLR 1376), it is held that:--

"It is, therefore, clear that in order to come to the conclusion whether
one mark is deceptively similar to another, the broad and essential features of
the two are to be considered. They should not be placed side by side to find
out if there are any differences in the design and if so, whether they are of
such character as to prevent one design from being mistaken for the other. It
would be enough if the impugned mark bears such an overall similarity to the
registered trade mark as would be likely to mislead a person usually dealing
with one to accept the other if offered to him."

(Underlining is supplied for emphasis)

In the case of J. N. Nichols (VIMTO) PLC A Company Incorporated in the

United Kingdom v. Mehran Bottlers (Private) Limited, Karachi (PLD 2000
Karachi 192) wherein established principles in question of similarity of two
marks have been observed as under:--

(a) What is the main idea or the salient feature?

(b) Marks are remembered by general impressions or by some significant

details rather than by a photographic recollection of the whole;

(c) Overall similarity is the touchstone;

(d) Marks must be looked at from the view and first impression of a
person of average intelligence and imperfect recollection;

(e) Overall structures, phonetic similarity and similarity of idea are

important and both visual and phonetic tests must be applied;

(f) The purchaser must not be put in a state of wonderment;

(g) Marks must be compared as a whole, microscopic examination being

impermissible;

(h) The broad and salient features must be considered for which marks
must not be placed side by side to find out differences in design;

(i) Overall similarity is sufficient."

10. Thus, it would be germane to state that in view of above case law the
question of 'deception' and 'confusion' has to be examined on following
principles:--

(a) the purchaser/customer is not intelligent to stick with name of

product/brand alone;

(b) phonetic should not be such to let seller/shop keeper to present other
product then demanded with an excuse of similarity between two;

(c) the overall similarity, consisting upon theme, manner and colour
scheme.

(d) Colour scheme is of more much importance because difference(s) in

theme may not open the eye of an ordinary man but the colour scheme does.

11. While, reverting to revert to the merits of the case in hand. First, I
would like to examine the similarity of 'phonetic' 'Sharbat Rooh Afza' and
'Rooh-e-Samar'. On saying, both the above 'names' there appears no phonetic
similarities. The common WORD 'Rooh' is not the decisive factor but it is the
'phonetic' impression which matters. Had it been the sole criteria the 'sharbat
Rooh-e-Shireen' should not have been registered. The instances, referred by
the defendant's side in this regard by mentioning registered product(s) having
common word 'Cola' are also relevant to stand well with this view which
are:--

"PEPSI COLA, COCA COLA, RC COLA, ROOH COLA (OF

PLAINTIFF'S), MACCA COLA, MART COLA, GORMET COLA"

12. Further, to examine the similarities between 'theme, label and colour
scheme' of the two product(s), in question, whether the same if viewed with
an ordinary eye can result into 'deception' or 'confusion'. However, before
going into detail(s), I must add here that I am quite conscious that the
registration gives to its proprietor an exclusive right to use the trade mark and
registration is a prima facie evidence of its validity within meaning of the
section 23 of the Act. The infringement of such right cannot be allowed to
hold the field but before restraining one from continuing with lawful trade or
business it must be established prima facie that his right, being hit by
exception(s), cannot be allowed to continue. Since the question cannot be
decided without making comments on similarities of the product(s)/brands in
dispute, therefore, without prejudice to the prerogative and domain of the
Registrar, the Court can examine and comment while deciding an application
for injunction. I find support in my such view from the guidance so provided
in number of case-laws, referred above so also in case of J & P Coats Limited
and another (supra) wherein such examination was done.

13. Similarly , in the case of Messrs Mehran Ghee Mills (Pvt.) Ltd.
(quoted supra), the honourable Supreme Court of Pakistan while dealing with
the point in issue has held as under:--

"15…………The question that whether there has been an

infringement or not is to be decided by comparing and placing the two marks
together and then to determine about their similarity or distinctiveness. If the
two marks are absolutely identical no further probe is needed and
infringement is established. Essential features of the marks shall be looked
into for effectively deciding the issue of infringement. To constitute
infringement it is not necessary that whole of the mark be adopted. The
infringement will be complete if one or more dominating features of a mark
are copied out. If there is a striking resemblance, ex facie, it would lead
towards the conclusion that the mark has been infringed. There is mark
degree of similarity between two marks of this case. Mark/label of
respondent No.1 has virtually been adopted by petitioner in same colour
scheme, design and get-up to pass off its (petitioner's) goods, as that of the
respondent No.1"

(Underlining has been supplied for emphasis)

14. I have before me the label (s) of both products i.e. 'Sharbat Rooh
Afza' and 'Rooh-e-Samar'. It is worth to make it clear again that it should not
be a mere claim of similarity but claim of similarity should qualify the test
that it (similarity), overall, should be so resemble that an ordinary consumer
may not differ between what he intended to purchase or what is presented to
him. A bare look, nowhere, results into any confusion because not only the
colour scheme but also the calligraphy and its manner are quite different from
each other. Mere having photo-graph/picture of different fruits is not
sufficient to believe the plea of the plaintiff that label of the defendant's
product 'Rooh-e-Samar' shall cause 'confusion' or 'deception' to its customers
of 'Sharbat Rooh Afza'. The colour scheme(s) of these two are entirely
different with considerable distinction to an ordinary eye; the calligraphy is
also differently posed and even picture of fruits is different from that of
'Sharbat Rooh Afza'.

15. In view of above examination I am not of the view that label of the
product of the defendant (Rooh-e-Samar) is being presented/labeled or
marketed in a manner or fashion that it could result in causing a 'deception' or
'confusion' to the customer of the plaintiff whose brand 'Sharbat Rooh Afza'
is well renowned and very much known to its customers, therefore, no case
of 'confusion' or 'deception' is appearing to me. Accordingly, I am not
inclined to sail with the view of the plaintiff but conclude that plaintiff has no
prima facie case in its favour so as to deprive the defendant from
doing/continuing the lawful business or trade. Therefore, application for
injunction is hereby dismissed. In consequence whereof the C.M.A.
No.11282 of 2014 stands dismissed being infructuous.
16. While parting, the Registrar is directed to decide the application of
the defendant for registration of Trade mark without being influenced with
any of the observations made hereinabove.

AG/H-28/Sindh Order
accordingly.
2004 C L D 680

[Karachi]

Before Mushir Alam, J

GENERAL BISCUIT and another---Plaintiffs

Versus

ENGLISH BISCUIT MANUFACTURERS (PRIVATE) LIMITED

through Chief Executive/ Director/ Manager---Defendant

Suit No.282 of 1999, decided on 2nd May, 2002.

(a) Trade Marks Act (V of 1940)-----

---S.21--Infringement of unregistered trade mark--Remedy--Plaintiff could

press his claim only for a passing-off action.

(b) Trade Marks Act (V of 1940)-----

----Ss.20 & 21----Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 &

2---Suit for infringement of unregistered trade mark--Temporary injunction,
grant of---Plaintiffs mark was `Zeera Plus", while defendant with mark
`Gluco" added underneath the word `Plus"---Plaintiff claimed mark 'Plus" as
an essential feature of its products, which defendant could not adopt
alongwith the word `Gluco'-Validity-Both marks after putting them together
and viewing in totality were found quite dissimilar and distinctive---Record
showed parallel use of mark `Plus" by both parties for same
period---Plaintiffs claim not founded on registered mark could be pressed
only for a passing off action-Plaintiff had not shown sufficiently long use of
such mark-- Plaintiff could not substantiate claim of deception allegedly
practised by defendant---Mark "Plus" was not reflective of distinctive feature
reputed to be attached with plaintiffs mark `Zeera'---Both parties had been
using mark "Plus" in laudatory and non-distinctive sense referring to
something more than general reputed or known to be contained in their
respective pry-plaintiff by using `Zeera Plus' with its products had claimed
`Zeera' to be more in quantity than generally was Defendant had used "Plus"
to denote additional nutrient in its products `Gluco Plus'-Both marks were
quite different and easily distinguishable, thus, there was no likelihood of
confusion or deception from unwary purchaser's point of view Applications
of both panties seeking registration were pending before Registrar-Plaintiff
had prima facie no case for grant of injunction Application for temporary
injunction did not merit consideration on account of delay of 1-½ years in
filing suit after alleged use of mark `Gluoo Plus' by defendant Application for
temporary injunction was dismissed in cites.

Shahid Mirza v. Merloni Finanziaria S.P.A. and another PLD 1991 Kan 425;
Zakauddin v. Muhammad Zahid and 2 others PLD 1993 Kar. 766; Century
Traders v. Roshan Lal Duggar & Co. and others AIR 1978 Delhi 250;
Multani Sohan Halva, Hussain Aghai Multan v. Registrar of Trade Marks,
Karachi 1987 CLC 1448; Jamia Industries Ltd. v. Caltex Oil (Pak) Ltd. and
another PLD 1984 3C 8; Bandenawaz Ltd. v. Registrar of Trade Marks,
Karachi PLD 1967 Kar. 492; Messrs Khan Foundry and Workshop,
Faisalabad through Proprietor v. The Registrar of Trade Marks Registry,
Government of Pakistan, Karachi and another PLD 1994 Kar. 157; National
Detergents Limited v. Mod International (Pvt.) Ltd. 1993 MLD 590; Riaz
Ahmed Mansuri v. Abid Ali Qazi and others 1990 MLD 1788; Erven
Warnink B.V. and another v. J. Townsend 7 Sons (Hull) Ltd. and another
(1980) RPC 31; National Detergents Ltd. v. Assistant Registrar of TM 1989
MLD 1137; 1986 RPC 93; Tapal v. Lever Brothers 1997 MLD 1277; Aeg
Telefunken Pakistan Ltd. v. Electric Concern Corporation 1985 CLC 155;
Mst. Khurshed Bibi v. Province Punjab and another 1987 CLC 242 and Mst.
Najma Rana v. S.M. Maroof and another 1989 MLD 1317 ref.

(c) Trade Marks Act (V of 1940)-----

----S. 20---Passing off action---Basic idea behind such action-Essential

characteristics for creating a valid cause of action for passing off; stated.

Erven Warnik BV v. J. Townend & Sons (Hull) Ltd. (1979) 2 All ER 927
(HL) and Hindustan Radiators Co. v. Hindustan Radiators Ltd. AIR 1987
Dehli 353 fol.

(d) Trade Marks Act (V of 1940)----

----Ss.20 & 21---Infringement of trade mark, determination of--Both marks

would be adjudged in totality---Overall impression would be the determining
factor.

National Detergent Ltd. v. Assistant Registrar of Trade Mark 1989 MLD

1137 fol.

(e) Words and phrases---

----"Plus"---Connotation.

(f) Trade Marks Act (V of 1940)-----

----S.13---Declaration of disclaimer---Such declaration subject to limitation

provided under S.13 of Trade Marks Act, 1940 would be decided by
Registrar or Tribunal deciding such matter.

(g) Trade Marks Act (V of 1940)-----

----Ss.2(1)(f) & 13---Use of a mark as suffix to trade mark--Effect---Such use

would assume laudatory connotation and would invariably be disclaimed.

1986 RPC 93 and Tapal v. Lever Brothers 1997 MLD 1277 rel.

(h) Trade Marks Act (V of 1940)-----

----Ss.20 & 21---Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 &

2---Infringement of trade mark---Temporary injunction, grant of ---Non filing
of suit for infringement of trade mark promptly--Effect---Temporary
injunction would be declined.

Aeg Telefunken Pakistan Ltd. v. Electric Concern Corporation 1985 C L C

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 fol.

Abdul Hameed Iqbal for Plaintiffs.

Zain Shaikh for Defendant.

Date of hearing: 16th April, 2002.

ORDER
Plaintiffs claim to be proprietor of the Trade Mark 'Zeera Plus' pending,
registration since 22-5-1997. 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'.

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 non distinctive 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.

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) Shahid Mirza v.
Merloni Finanziaria S.P.A. and another PLD 1991 Karachi 425; (2)
Zakauddin v. 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. Reliance is placed on (1) Jamia Industries Ltd. v.
Caltex Oil (Pak) Ltd. and another PLD 1984 SC 8; (2) 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.

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 axed 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. 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).

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.

Admittedly, the trade mark of the plaintiffs as claimed by them for `Zeera
Pus' is not registered. 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 mis
representation, (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 B 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.

Now it is to be seen in the light of the above, how for the test laid down
above is attracted in the plaintiffs case when over all getup of the plaintiffs
trade mark it is to be seen the plaintiff's Mark "Zeera Plus" are written
separately in two different colour "Zeera" in yellow in the brown
background. "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 it right hand image of `pied piper' is on the
left side. 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 anti 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.

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 E 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 F 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.

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 H 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 1 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 practiced by the defendants. The mark "Plus" prima facie
is not reflective of distinctive feature reputed to be attached with the
plaintiff's 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 plaintiff's "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 stain point of
any unwary purchaser both the mark when viewed, each appears to be quite
different and easily 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 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. 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 declined where the plaintiff did not approach the Court
promptly. The upshot of the above discussion, the injunction application is
dismissed and the same stands disposed of as such.

S.A.K./G-4/K Application
dismissed.
2013 C L D 1531

[Sindh]

Before Aziz-ur-Rehman, J

VIFOR (INTERNATIONAL) INC. through Authorized Signatory---

Plaintiff

Versus

Me'MON PHARMACEUTICAL through Sole Proprietor---Defendant

Suit No. 1282 of 2009, decided on 4th March, 2013.

(a) Trade Marks Ordinance (XIX of 2001)---

----Ss. 2(xxxv), 8(a), 14, 17, 18, 22, 28, 33 & 39---Registered trade mark,
infringement of---Permanent injunction, suit for---Plaintiff being proprietor
of registered trade mark "MALTOFER" alleged its illegal use by defendant
under imitated trade mark "MALTOS" in respect of pharmaceutical
preparation---Proof---No trade mark or any part thereof in respect of goods or
services would be registered, if same would cause deception and/or create
confusion---Proprietor of a registered trade mark has an exclusive right
therein and its violation was not permissible under law---Defendant could not
be permitted to defeat vested right of registered proprietor (plaintiff), who
entered the field first---Defendant's trade mark "MALTOS" was mala fide
replacement of letters "FER" of plaintiff's registered trade mark
"MALTOFER' with letter "S" to make the same "MALTOS"---Defendant's
trade mark "MALTOS" was phonetically, visually, structurally, deceptively
and confusingly similar and nearly resembling plaintiff's registered trade
mark "MALTOFER"---Defendant had deliberately chosen to use trade mark
"MALTOS" with a view to sell deceptively lower quality of goods by
creating confusion qua plaintiff's best quality of goods available in market
under trade mark "MALTOFER"---Nothing was available on record on
behalf of defendant in rebuttal of plaintiff's evidence---No one under law
could use trade mark of someone to deceive public and cause injury to its
owner's goodwill and/or reputation---Plaintiff had not suffered
damages/losses as he had filed suit immediately after getting knowledge
about infringement of its registered trade mark by defendant---Plaintiff
became entitled to relief of permanent injunction in view of its un-rebutted
evidence and such dishonest act of defendant---Suit was decreed in
circumstances.

Jamia Indus Limited v. Caltex Oil (Pak) Ltd. and another PLD 1984
SC 8; Messrs Alpha Sewing Machine Co. v. Registrar of Trade Marks and
another PLD 1990 SC 1074; Messrs Tabaq Restaurant v. Messrs Tabaq
Restaurant 1987 SCMR 1090; Messrs Mehran Ghee (Pvt.) Ltd. and others v.
Messrs Chiltan Ghee Mill (Pvt.) Ltd. and others 2001 SCMR 967; Seven-up
Co. v. Kohinoor Thread Ball Factory and 3 others PLD 1990 SC 313; Messrs
Platinum Pharmaceutical Co. (Pvt.) Ltd. v. Stand Pharm Pakistan (Pvt.) Ltd.
and 3 others 2006 CLC 1190; MOd International (Pvt.) Ltd. v. National
Detergent Ltd. 1993 MLD 605; Glaxo Laboratories Ltd., England v. Assistant
Registrar, Trademark Karachi and another PLD 1977 Kar. 858; Messrs Chas
A. Mendoza v. Syed Tauseef Ahmed Zaidi and 2 others PLD 1993 Kar. 790;
Muhammad Saeed Mughal and 3 others v. Messrs National Aviation Services
(Pvt.) Ltd. through Malik Talat Mahmood 2001 YLR 2004; The Wellcome
Foundation Ltd. v. Messrs Karachi Chemical Industry (Pvt.) Ltd. 2000 YLR
1376; J.N. Nicholas (Vimto) PLC A. Co., Incorporated in the United
Kingdom v. Mehran Bottlers (Pvt.) Ltd., Karachi PLD 2000 Kar. 192;
Pakistan Drug House (Pvt.) Ltd. v. Rio Chemical Co. and another 2003 MLD
1513; Messrs Ali Anas Laboratories through 4 Partners v. Messrs Al-Chemist
and another 1987 MLD 2823; National Detergents Ltd. v. Nirma Chemical
Works and another 1992 MLD 2357; Messrs Platinum Pharmaceuticals Co.
(Pvt.) Ltd. v. Stand Pharma Pakistan (Pvt.) Ltd. and 3 others 2006 CLD 1109;
Hiralal Parbhudas v. Garnish Trading Company AIR 1984 Bombay 218
and CIBA Ltd. Basle Switzerland v. M. Ramalingam and S.
Subramaniam Trading in the name of South Indian Manufacturing Co.,
Madura and another AIR 1958 Bombay 56 ref.

Mohan Goldwater Breweries (Private) Limited v. Khoday Distilleries

Private Limited and another Appeal Against Order Nos.456 and 457 of 1974;
Jamia Industries Ltd. v. Caltex Oil (Pak) Ltd. and another PLD 1984 SC 8;
Law of Trade Mark and Trade Names (1966 Edn.) written by Kerly page 838;
Messrs Mehran Ghee Mills (Pvt.) Ltd. and others v. Messrs Chiltan Ghee
Mill (Pvt.) Ltd. and others 2001 SCMR 967 and Messrs Tabaq Restaurant v.
Messrs Tabaq Restaurant 1987 SCMR 1090 rel.

(b) Tort---

----Damages, claim of---Absence of positive proof about actual losses

suffered by plaintiff---Effect---Such claim could not be granted---Principles.

Under law damages cannot be granted in absence of "positive

evidence". Damages require evidence vis-a-vis details of losses actually
suffered. As a rule, even fixed amount of damages cannot be granted unless
quantum of actual losses is proved. Party claiming damages have to firstly
plead and then prove damages by sufficient, cogent, trustworthy and
independent evidence. Regarding damages and quantum thereof, burden of
proof always lies on the claimant. Without discharging such burden, one
cannot succeed.

Muhammad Amin Muhammad Bashir Ltd. v. Muhammad Amin

Brothers Ltd. PLD 1979 Kar. 233; Daoud Shami v. Messrs Emirates Airlines
and another PLD 2011 SC 282 and Syed Ahmad Saeed Kirmani v. Messrs
Muslim Commercial Bank Ltd., Islamabad 1993 SCMR 441 rel.

Ms. Amna Salman for Plaintiff.

Nemo for Defendant.

Date of hearing: 13th February, 2013.

JUDGMENT

AZIZ-UR-REHMAN, J.---The plaintiff has filed the above suit

through its duly authorized signatory viz. Babar Waheed son of Abdul
Waheed for grant of permanent injunction restraining the defendant
perpetually from using the imitated trademark 'MALTOS' in infringement of
plaintiff's registered trademark 'MALTOFER' or any colourable imitation
thereof in respect of pharmaceutical preparations and for damages, accounts
of profits with the following prayers:--

"27.1. That in view of the above it is respectfully prayed that this

Hon'ble Court may be pleased to pass a decree against the defendant and/or
its, managers, employees, servants, distributors, men, agents, stockiest,
retailers or dealers engaged in the aforesaid illegal activities and all
persons claiming through or under them jointly or severally (hereinafter
jointly referred to as the defendant) in the following terms:-

(a) A decree for permanent injunction restraining the defendant

perpetually from using the imitated trademark 'MALTOS' in any manner or
any other trademark as may be colourable or slavish imitation and/or
infringement of plaintiff's registered trademark 'MALTOFER';

(b) A decree for permanent injunction restraining the defendant

perpetually from using in any manner and selling pharmaceutical
preparations under the imitated trademark 'MALTOS' and from using and
infringing the plaintiff's registered trademark 'MALTOFER' or any colourable
imitation thereof, 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 defendant's
products in particular pharmaceutical preparations or medicinal products,
using the imitated trademark 'MALTOS' or any colourable imitation of
plaintiff's registered trademark 'MALTOFER';

(c) A preliminary decree for an account to be rendered by the defendant

of the sale and profits wrongfully made by the defendant from the sale of his
products under the imitated trademark 'MALTOS';

(d) A final decree for the payment to the plaintiff of sums of the money
found due on taking of such accounts under the aforementioned preliminary
decree;

(e) A further money decree against the defendant for payment of Rs.
15,000,000 (Rupees Fifteen million only) to the plaintiff as damages on
account of partial compensation for, the loss and damage to the goodwill and
reputation of the plaintiff.

(f) Costs of the suit may also be awarded;

27.2. This Hon'ble Court may further be pleased to:

(i) Pass an order directing the defendant to recall all the stocks of any of
his products from the market being sold under the imitated trade mark
'MALTOS' and for destruction or replacement of the labels/packing thereof
along with destruction or handing over to the plaintiff for destruction of all
the offending labels/packing and other printed material bearing the imitated
trademark 'MALTOS';

(ii) An order directing the defendant to declare on oath for delivery up to

the plaintiff or for destruction or defacement of all unsold stocks of labels,
tins, boxes, cartons, packets and promotional/printed materials along with all
printing blocks, dyes, wrappers, plates, advertising materials bearing the
imitated trademark 'MALTOS';

(iii) Grant any such further/additional/other reliefs which this Hon'ble

Court may deem jus, fit and proper in the circumstances of the case.

2. The brief facts of the case are:--

3. Per averments made in the plaint the plaintiff is a company organized
and existing under the laws of Switzerland of Rechenstrasse 37, St. Gallen
Switzerland. According to plaintiff's assertions in Switzerland there are five
official languages i.e. German, French, Italian, Roman and English.

English language is used in international business. Per assertion a

company incorporated in Switzerland has three official names. In Switzerland
per practice a company may use any form of its name i.e., either the English
form or German form or French form. If the English form is used then
incorporated company have to use the denomination of Incorporated/Inc., or
limited/Ltd. While, in use of the French version a company has to use Society
Anonym/SA and likewise, in case of German version a company has to use
Aktiengesellschaft/AG. Plaintiff's company name in view of the above can be
mentioned below:--

Vifor (International) Inc.

Vifor (International) Ltd.

Vifor (International) AG

Vifor (International) SA

4. Being an export oriented company within the Galenica Holding,

plaintiff carries on a worldwide business inter alia from Switzerland. The
company thus is represented in more than eighty (80) countries worldwide
through its licensing and distribution partners.

5. Per assertion made in the plaint, plaintiff company was founded in

1872 by Conard Ferdinand Hausmann, a pharmacist, who founded his
pharmacy in St. Gallen, Switzerland. Hausman Laboratory Inc., was later on
founded in the year, 1952 as being production company for pharmaceutical
specialties in St. Gallen. Today, where plaintiff with the names Vifor
(International) Inc., is based, is the same location where Hausman Inc., was
founded. Research and Development activities of the company were
extended in the year, 1970 with special focus on replacement therapy. In
1983, Hausman Laboratories Inc., was acquired by Galenica Holding Inc., in
Bern, the number one wholesaler in Switzerland. In 1991, per plaintiff's
assertions, the activities in the sections of infusion hospital supply within the
Galenica Holding were sold to B. Braun Melsungen Inc. However, the
activities in the field of pharmaceutical specialties of the former Hausman
Laboratories Inc., was retained and the plaintiff's company with the name of
Vifor (International) Inc., thus came into existence.

6. Per assertion made in the plaint, the treatment of iron deficiency

being the core competence of the newly founded company [Vifor
(International) Inc., and/or Vifor (International) AG]. The plaintiff, therefore,
decided to dedicate itself entirely to the iron therapy. The plaintiff Vifor
(International) Inc., thus focused all its efforts on the development,
production and marketing of its unique iron therapy and its unique iron-
carbohydrate complexes for the therapy of iron deficiency anemia. Per
plaintiff's assertion research and development department develops market-
oriented products and new galenic formulations.

7. Per assertion in the plaint, laboratories are well equipped with high
technology instruments. All research and development activities are being
published in internationally renowned scientific journals and plaintiff's own
patents as well. Plaintiff's company has put special focus on the development
of the next generation of iron preparations with a broad safety profile for oral
and parenteral application. Of course, over the years, unique know-how in
analytical and synthetic chemistry, biochemistry, toxicology and
pharmacokinetics of such iron preparations has been accumulated. Amongst
other trademarks adopted by the plaintiff for distinguishing its goods
trademark 'MALTOFER. has also been inherently adopted by the plaintiff
with a view and for distinguishing its oral iron preparation for the treatment
of latent iron deficiency anemia. Per averments, plaintiff used the
'MALTOFER' firstly on November 17, 1994 in Switzerland. Details of
countries where plaintiff's products bearing 'MALTOFER' trademark are
currently sold, is as under:--

Argentina Bulgaria Byelorussia Chile

Columbia Czech Republic Dominican Ecuador
Republic
Finland France Great Britain Guatemala
Haiti Hong Kong Hungary Indonesia
Jordan Lebanon Liechtenstein Malaysia
Morocco Nicaragua Pakistan Paraguay
Peru Poland Portugal Romania
Russia Switzerland Singapore Slovakia
Thailand Trinidad/Tobago Turkey Uruguay
Venezuela Vietnam Yemen

8. Trade mark 'MALTOFER', per plaintiff's assertions is used in relation

to high efficacy drugs to fight Iron Deficiency Anemia (IDA), and is
available in several pharmaceutical dosage forms viz. drops, syrups, oral
solutions and chewable tablets. Under the trademark 'MALTOFER', the drugs
are being sold in over eighty (80) countries of the world. Due to and on
account of extensive worldwide circulation, trademark 'MALTOFER' per
plaintiff's averment enjoys tremendous reputation and goodwill in more than
80 countries including Pakistan.

9. The plaintiff, in order to safeguard its interests in the trademark

'MALTOFER' has obtained registrations and/or has filed applications thereof
in various countries of the world. Details of registrations of trademark
'MALTOFER' so far obtained in various countries of the world by the
plaintiff are as under:--

Trademark Country Reg. No. Class Reg. Date

MALTOFER Australia 714161 05 31-7-2006
MALTOFER AUSTRIA 562300 05
MALTOFER CANADA 591272 05 1-10-2003
MALTOFER FRANCE 262300 05
MALTOFER GERMANY 562300 05
MALTOFER GREAT BRITAIN 1430113 05 12-2-2007
MALTOFER HONG KONG 09196/1996 05 3-7-2002
MALTOFER ITALY 562300 05
MALTOFER NEW ZEALAND 768587 05 17-5-2007
MALTOFER SINGAPORE T96/08304G 05 8-8-2006
MALTOFER SPAIN 56230 05
MALTOFER SWEDEN 562300 05
MALTOFER SWITZERLAND 379016 05
MALTOFER TURKEY 122927 05 29-6-2000
MALTOFER USA 3154270 10-10-
2006

10. The trademark 'MALTOFER' is continuously being used by the

plaintiff for conducting its aforesaid business in Pakistan. First Drug
Registration for the products under trademark 'MALTOFER' (syrup), per
plaintiff's assertion, was granted by the Ministry of Health to the plaintiff's
previous licensee, Getz Pharma, Karachi under No.026757 on March 3, 2001
whereafter since, May 6, 2002, the plaintiff's present Licensee Messrs R.G.
Pharmaceutical (Pvt.) Ltd., started selling of products under the trade mark
'MALTOFER' in Pakistan. Accordingly, since the year, 2002, plaintiff's
products, under the trademark 'MALTOFER' are being sold under the
authority of the plaintiff. The quantum of sale of the plaintiff's products goes
as under:--

YEARS SALES IN US $
2004 460022
2005 631538
2006 642976
2007 755120
2008 776083

11. Per assertion of the plaintiff, with a view and to turn the business of
manufacture and/or sale of plaintiff's products more effectively in Pakistan
under the well-known trademark 'MALTOFER', the plaintiff has appointed
authorized users in Pakistan. Presently, per averments in the plaint, RG
Pharma is the authorized user of plaintiff's trademark 'MALTOFER'. The
goodwill thus generated due to use of trademark 'MALTOFER' by RG
Pharma has accrued to the plaintiff. Per plaintiff's assertions, RG Pharma
continues to use plaintiff's registered trade mark 'MALTOFER' under the
instructions, guidance and specifications prescribed and laid down by
plaintiff from time to time and also acknowledges proprietorship of plaintiff
re trade mark 'MALTOFER'. Further, plaintiff also owns registration for
trademark 'MALTOFER' in Pakistan under the Trade Marks Act, 1940 (now
replaced by Trade Marks Ordinance, 2011). Details as follows:-

Trade mark Reg. No. Class Dated Goods

MALTOFER 159509 05 15-12-1999 Pharmaceuticals
veterinary and
sanitary preparation

12. Per assertion in the plaint, the products sold under the registered
trademark 'MALTOFER' have acquired a high 'reputation' and 'goodwill' in
Pakistan. The use of a similar or deceptively similar trade mark by another
manufacturer or trader indeed amounts to misrepresentation having been
made in the course of trade to potential customers.

13. The adoption of any trade mark which is confusingly similar and/or
nearly resembles that of plaintiff's trade mark 'MALTOFER' by any party
especially in relation to the pharmaceutical products etc., without the
permission, consent or license of plaintiff is bound to be dishonest and
motivated by an attempt to deceive or confuse the public. Per averments, the
plaintiff became aware, through 'advertisement' in the 'Trade Mark Journal'
No. 682 dated November 1, 2007, actually published on January 18, 2008,
about application for registration of trade mark 'MALTOS', which besides
deceptive is dishonestly opted to confuse the unwary purchasers.
14. Under circumstances, plaintiff with an object to oppose the grant of
registration to 'MALTOS' to the defendant, filed opposition No.307 of 2008
with the Registrar of Trade Marks on May 17, 2008 in the hope that the
defendant would refrain from using the above infringing trademark
'MALTOS'.

15. The plaintiff's opposition was served by the Registrar of Trade marks
upon the defendant in the manner provided by law for filing its defence in the
form of 'Counter Statement' to the 'Plaintiff's Opposition'. The defendant did
not file its requisite 'Counter Statement' and finally the Registrar of
Trademarks through its letter of January 26, 2009 confirmed/apprised the
position to the plaintiff in the following words:--

"With reference to the above noted subject, I am directed to inform

you that the applicants deemed to have abandoned their application
No.217871 under section 28(4) of the Trade Marks Ordinance, 2001, as they
have failed to file the Counter Statement (TM-6) within stipulated/finally
extended time. As a result thereof, the above opposition proceeding
No.307/08 have become infructuous."

16. Per averments, during February, 2009, the plaintiff carried out checks
in the markets but the products under trademark 'MALTOS' were not found
available then in the markets. Subsequently, however, in or about last part
first week of September 2009, the plaintiff came to know that the defendant
is about to launch and start selling of its infringing products under imitated
'MALTOS'. The defendant's imitated trademark 'MALTOS', it is worth to
note, is phonetically, visually structurally deceptively and confusingly similar
and/or nearly resembles plaintiff's registered trade mark 'MALTOFER'.

17. The defendant, per plaintiff's assertions, has exerted every possible
efforts to make out a similar/deceptively similar and/or nearly resembling
imitation of plaintiff's renowned and registered trademark 'MALTOFER'. The
defendant's infringing trademark is nothing but indeed is a mala fide
replacement of letters 'FER' of plaintiff's registered trademark 'MALTOFER'
with letter 'S' to make it 'MALTOS'.

18. Per averments, the defendant's infringing trade mark 'MALTOS' is

confusingly similar to and incorporates dominant and essential part plaintiff's
registered trade mark 'MALTOFER'. Per plaintiff's assertion, the defendant
has no justification and/or any reason for adopting confusingly and
deceptively similar and/or nearly resembling imitated trademark 'MALTOS'
Such adoption of imitated trade mark 'MALTOS' besides dishonest is fraud
upon the plaintiff, public-at-large and unwary purchasers.

19. Per averments in the plaint, the products (pharmaceutical, products),

their uses and sales outlets of both the plaintiff and the defendant are the
same. Defendant by manufacturing, offering for sale and selling its products
under imitated trade mark 'MALTOS', is infringing plaintiff's vested rights
and amounting to 'Passing Off' its 'lower quality' products/goods in the garb
of plaintiff's best quality products/goods. Per plaintiff's assertions from a
cursory look at the Plaintiff's registered trade mark 'MALTOFER' and
defendant's imitated trade mark 'MALTOS' one can easily note that the
defendant's trade mark 'MALTOS' is a colourable imitations of plaintiff's
registered trade mark 'MALTOFER'. Pharmacies in Pakistan, per assertion of
the plaintiff, are not regularized and usually pharmaceutical products are
being sold without prescriptions.
20. Almost, every employ who dispense drugs besides not qualified has
no adequate knowledge of 'English language'. Not only this, the doctors write
prescription in a very scribbled writing and that too by abbreviating and
slurring the words. All this, due to 'close proximity' of two marks 'MALTOS'
and 'MALTOFER' the un-wary purchasers amongst others are bound to get
confused.

21. Trade mark 'MALTOS', per averment in the plaint is causing

confusion and deception in the mind of unwary purchasers vis-a-vis
plaintiff's products under trademark 'MALTOFER' which 'ex facie' is flagrant
infringement of plaintiff's registered trade mark.

22. On account of aforementioned illegal/unlawful business activities,

damages and losses so suffered are in the tune of Rs.15,000,000 (Rupees
fifteen million only). Per averment, the defendant has sold and/or intends to
sell its 'lower quality goods/products as those of the plaintiff's 'best quality
goods/products', therefore, under the law plaintiff is also entitled to the
benefit of income generated by the defendant on account of such sales under
their imitated Trade mark 'MALTOS'. Per averments cause of action firstly,
accrued in favour of the plaintiff during January, 2008 and also on other dates
as mentioned in the plaint.

23. Along with the plaint presented on 10-9-2009, an application under

Order XXXIX, Rules 1 and 2, C.P.C. read with section 151, C.P.C. [C.M.A.
No 8513 of 2009] for grant of temporary injunction was also filed. The
prayer made in the aforesaid application reads as under:--

"This Hon'ble Court may graciously be pleased to grant temporary

injunction against the defendant and all persons claiming through or under it
jointly or severally restraining them from using the imitated trade mark
'MALTOS', in any manner, or any other trade mark as may be a colourable or
slavish imitation or counterfeit and/or infringement of plaintiff's registered
trade mark 'MALTOFER'."

24. On 11-9-2009, when the application came up before the court the
following order was passed:--

"(1) Granted.

(2) Notice for 30-9-2009. Defendants shall not use 'MALTOS' as their
trademark for pharmaceutical/homeo products till 30-9-2009."

25. From the record it appears, that notice issued pursuant to order dated
11-9-2009, had returned unserved. Thereafter, summons/notices were issued
to the defendant on 1-12-2009 and 16-2-2010. Nonetheless per diary sheet of
the Additional Registrar (O.S.), the summons returned unserved with bailiff
endorsement as also 'pasted'. Thereafter, plaintiff's application under Order V,
Rule 20, C.P.C., per Additional Registrar (O.S.) diary of 5-3-2010 was
granted and summons were issued to the defendant. Ultimately, vide order
dated 13-5-2010 passed by the Additional Registrar (O.S.), service upon the
defendant, was 'held good' because of publication in daily 'JANG' Urdu dated
7-4-2010 and also issuance of summons through other modes as well.

26. On 31-5-2010 when the matter came up before the court, besides
holding the service 'good' the case was ordered to proceed 'ex parte' against
the defendant.
27. Subsequently, in compliance with court's order dated 31-5-2011,
'affidavit-in-ex parte proof' was filed on 26-9-2012 and 'deposition' of the
plaintiff's witness viz. Muhammad Babar Waheed son of Abdul Waheed was
recorded on 27-9-2012. In 'examination-in-chief' the witness produced his
'affidavit-in-ex parte' proof as Exh.P.W.1/3 and other documents as
Exh.P.W/4 to P.W.1/7. Since no one on behalf of defendant was present hence
'cross-examination' of the plaintiff's witness was marked as 'Nil'.

28. On 13-2-2013, when the injunction application under Order XXXIX,

Rules 1 and 2, C.P.C. read with section 151, C.P.C. [C.M.A. No.8513 of
2009] and suit came up for hearing/final disposal, Ms. Amna Salman Ahmed,
learned counsel for the plaintiff advanced her arguments and with her able
assistance the materials available on record were scanned.

29. Ms. Amna Salman, learned counsel for the plaintiff argued that the
plaintiff is the registered proprietor of trademark 'MALTOFER' in respect of
pharmaceutical drug to fight Iron Deficiency Anemia (IDA). Learned counsel
further contended that Trade mark 'MALTOFER' was first ever used by
plaintiff on November 17, 1994 in Switzerland. In this regard learned counsel
for the plaintiff, made a reference to para 6 of the plaint which contains
details of registration of trademark 'MALTOFER' and its use in various
countries of the world. Ms. Amna Salman, learned counsel for the plaintiff
next argued that the plaintiff is the registered proprietor of trade mark
'MALTOFER' and doing business in Pakistan for the last several years. The
Drug Registration for the products under 'MALTOFER' was granted to the
plaintiff's first licensee on March 3, 2001 (Reg. No. 026757) and the
plaintiff's second licensee started selling 'MALTOFER' on May 6, 2002. Per
learned counsel the plaintiff is the registered proprietor of trade mark
"MALTOFER" with the details as follows:--

Trademark Reg. No. Class Dated Goods

MALTOFER 159509 05 15-12-1999 Pharmaceuticals
veterinary and
sanitary preparation

30. Per learned counsel, plaintiff through advertisement in 'Trade Mark

Journal No.682' dated November 1, 2007, actually published on January 18,
2008, [Exh.P.W.1/6] became aware about the defendant's application for
registration of trademark 'MALTOS'. Per learned counsel the choice of
defendant for this deceptively similar mark 'MALTOS' is dishonest and has
been adopted to only confuse the unwary purchasers amongst others vis-a-vis
plaintiff's trademark 'MALTOFER'.

31. Ms. Amna Salman learned counsel for the plaintiff further contended
that on January 26, 2009, the Registrar of Trademarks i.e. pursuant to filing
of plaintiff's Opposition No.307 of 2008 on May 17, 2008 had confirmed to
the plaintiff that the defendant/applicants deemed to have abandoned their
application No.217871 under section 28(4) of the Trade Marks Ordinance,
2001, as they have failed to file the 'Counter Statement' (TM-6) within
stipulated /finally extended time. As a result thereof, the above opposition
proceeding No.307/08 have become infructuous.

32. Ms. Amna Salman, learned counsel for the plaintiff vehemently
contended that the defendant's imitated trademark 'MALTOS' on account of
its being phonetically, visually and structurally deceptive is creating
confusion regarding goods/products being sold in markets under plaintiff's
registered trademark 'MALTOFER', therefore, inter alia the plaintiff company
is entitled for restraining order against the defendant. Per learned counsel the
plaintiff besides having a good prima facie case the balance of convenience
under circumstances of the case lies in favour of the plaintiff. Further if the
defendant is not restrained/perpetually restrained from using the imitated
trade mark of 'MALTOS' then the plaintiff indeed will suffer irreparable loss
and injury.

33. Learned counsel for the plaintiff, next contended that defendant's
infringing trade mark 'MALTOS' is nothing but a mala fide replacement of
letters 'FER' of plaintiff's registered trademark 'MALTOFER' with letter 'S' of
'MALTOS'. The defendant, per learned counsel, has no justification or any
reason for adopting imitated trademark 'MALTOS' much-less in view of other
choices available to the defendant. Per learned counsel, adoption of imitated
trademark 'MALTOS' by the defendant is not only dishonest but also a fraud
upon the plaintiff, Public at large and unwary purchasers as well.

34. Ms. Amna Salman, learned counsel for the plaintiff finally contended
that not only the products (pharmaceutical products), but also sales outlets of
both the plaintiff and the defendant are the common. The defendant, by
manufacturing, offering for sale and selling of its products, or otherwise,
continuing the same practice under defendant's imitated trademark
'MALTOS', per learned counsel, is 'infringing' plaintiff's vested rights. Per
learned counsel 'passing off' and/or attempting to 'pass off' 'lower quality
products/goods' deceptively and/or by creating confusion vis-a-vis plaintiff's
'best quality products/goods' under trademark 'MALTOFER', is an act of
fraud and as such unlawful. A cursory glance at the plaintiff's registered
trademark 'MALTOFER' and defendant's imitated trademark 'MALTOS', per
learned counsel, evidently shows that defendant's trademark 'MALTOS' is a
colourable imitation of plaintiff's registered trademark 'MALTOFER'.

35. Learned counsel for the plaintiff in support of her arguments relied
upon following reported cases:--

(a) PLD 1984 SC 8 Jamia Indus Limited v. Caltex Oil (Pak) Ltd., and
another,

(b) PLD 1990 SC 1074 Messrs Alpha Sewing Machine Co., v. Registrar
of Trade Marks and another,

(c) 1987 SCMR 1090 Messrs Tabaq Restaurant v. Messrs Tabaq

Restaurant,

(d) 2001 SCMR 967 Messrs Mehran Ghee (Pvt.) Ltd. and others v.
Messrs Chiltan Ghee Mill (Pvt.) Ltd. and others,

(e) PLD 1990 SC 313 Seven-up Co., v. Kohinoor Thread Ball Factory
and 3 others,

(f) 2006 CLD 1190 Messrs Platinum Pharmaceutical Co. (Pvt.) Ltd., v.
Stand Pharm Pakistan (Pvt.) Ltd and 3 others,

(g) 1993 MLD 605 MOD International (Pvt.) Ltd., v. National Detergent
Ltd.,

(h) PLD 1977 Kar. 858 Glaxo Laboratories Ltd., England v. Assistant
Registrar, Trademark Karachi and another,
(i) PLD 1993 Kar. 790 Messrs Chas A. Mendoza v. Syed Tauseef Ahmed
Zaidi and 2 others,

(j) 2001 YLR 2004 Muhammad Saeed Mughal and 3 others v. Messrs.
National Aviation Services (Pvt.) Ltd., through Malik Talat Mahmood,

(k) 2000 YLR 1376, (The Wellcome Foundation Ltd., v. Messrs Karachi
Chemical Industry (Pvt.) Ltd.,

(l) PLD 2000 Kar. 192 J. N. Nicholas (Vimto) PLC A. Co., Incorporated
in the United Kingdom v. Mehran Bottlers (Pvt.) Ltd., Karachi,

(m) 2003 MLD 1513 (Pakistan Drug House (Pvt.) Ltd., v. Rio Chemical
Co., and another)

(n) 1987 MLD 2823 (Messrs Ali Anas Laboratories through its 4 Partners
v. Messrs Al-chemist and another),

(o) 1992 MLD 2357 (National Detergents Ltd., v. Nirma Chemical Works
and another).

36. At this it would be advantageous to reproduce the relevant sections of

Trade Marks Ordinance, 2001 [Ordinance No.XIX of 2001] as under:--

A. "Section 2 - Definitions

(xxxv) "proprietor of earlier right", in relation to a trade mark, means

a person entitled to prevent the use of a trade mark;"

B. Section 14. Absolute grounds for refusal of registration - (1)

(a) .....................................

(b) .....................................

(c) .....................................

(d) .....................................

(2) .....................................

(a) .....................................

(b) .....................................

(c) .....................................

(d) .....................................

(3) No trade mark or any part thereof in respect of any goods or services
shall be registered which consists of, or contains, any scandalous design, or
any matter the use of which would:--

(a) by reasons of its being likely to deceive or to cause confusion or

otherwise, be disentitled to protection in High Courts or District Courts.
(b) be likely to hurt the religious susceptibilities of any class of
citizen of Pakistan, per se, or in terms of goods or services it is intended to
be so registered; or

(c) be contrary to any law, for the time being in force, or morality.

C. Section 17. Relative grounds for refusal of registration:-

(1) A trade mark shall not be registered if it is identical with an earlier

trade mark and the goods or services, for which the trade mark is applied for,
are identical with the goods or services for which the earlier mark is
registered."

(2) .....................................

(3) .....................................

(4) .....................................

(5) .....................................

(6) .....................................

D Section 18. Meaning of earlier trade mark-

(a) .....................................

(b) .....................................

(c) .....................................

(2) Reference in this Ordinance to an earlier trade mark include a trade

mark in respect of which an application for registration has been made and
which, if registered, would be an earlier trade mark by virtue of clause (a) or
(b) of subsection (1), subject to its being so registered."

(3) .....................................

E. Section 22, application for registration.---(1) An application for

registration of a trade mark shall be made in writing to the Registrar in the
prescribed manner.

(2) without limiting the particulars that may be included in an

application, the application shall contain:-

(a) a request for registration of a trade mark;

(b) full name and address of the applicant;

(c) a statement of goods or services in relation to which it is sought to

register the trade mark;

(d) international classification or goods or services

(e) a representation of the trade mark; and

(f) full name, address and contact details of agent, in case the
application, on behalf of the applicant, if made by his agent.

(3) The application shall state that the trade mark is being used by the
applicant, or with his consent, in relation to goods or services, or that he has a
bona fide intention that it should be used.

(4) The Registrar may refuse to admit an application if it does not contain
all the particulars required under subsections (2) and (3).

(5) The application shall be subject to the payment of the application fee
as may be prescribed.

F. Section 28 Publication, Opposition, Proceeding and Observation---

(1) .....................................

(2) .....................................

(3) .....................................

(4) The Registrar shall serve in the prescribed manner a copy of the
notice on the applicant, and within one month from the receipt by the
applicant of such copy of the notice of opposition, or within such further
period not exceeding two months in the aggregate, as the Registrar, on
application made to him in the prescribed manner and on payment of the
prescribed fee, may allow, the applicant shall send to the Registrar in the
prescribed manner a counter statement of the grounds on which he relies for
his application, and, if he does not do so he shall be deemed to have
abandoned his application.

G. Section 33. Registration

(a) .....................................

(b) .....................................

(2) .....................................

(3) A trade mark when registered shall be registered as of the date of

filing of the application for registration and that date shall be deemed for the
purposes of this Ordinance to be the date of registration.

H. Section 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 the 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 fore, 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

Ordinance shall extend to trade marks registered under the Trademarks Act,
1940, (V of 1940).

37. With regard to grant of injunction/restraining order against the

defendant learned counsel for the plaintiff placed reliance upon the case
reported in 2006 CLD 1109 [Messrs PLATINUM PHARMACEUTICALS
COMPANY (PRIVATE) LIMITED v. STAND PHARMA PAKISTAN
(PRIVATE) LIMITED AND 3 others]. The relevant portion of the aforesaid
case runs as under:--

"..........

28. On a view of the relevant provision of law quoted above and the
case-law relied on by the learned counsel we are of the considered view that
the appellant being the first to apply for the registration of Trade Mark
"Saniflex" before the Registrar Trade Marks and also its drug being
registered earlier than the respondent before the Ministry of Health, was
entitled to the first use of the Trade Mark "Zaniflex" and all the three
ingredients required for the issuance of an interim injunction under Order
XXXIX, rules 1 and 2, C.P.C. i.e. presence of a prima facie case, balance of
convenience and irreparable damages are in favour of the appellant. The
appellant case appears to be fully covered by the judgment of the Bombay
High Court reported in AIR 1958 extract from which has already been
reproduced herein, therefore the respondent cannot be granted any bonus for
its own deliberate persistence in continuing with the use of the trademark."

38. Regarding similarity of two marks the learned counsel for the plaintiff
made reference to the case of Hiralal Parbhudas v. Garnish Trading
Company, [Reported in AIR 1984 Bombay 218] wherein the High Court of
Bombay after taking into consideration several decisions of the Indian
Supreme Court summed up will establish principles to be observed while
deciding the question of similarity of two marks. The relevant observations
run in the following manner:--

"(a) What is the main idea or the salient feature?

(b) Marks are remembered by general impressions or by some significant

detail rather than by a photographic recollection of the whole.

(c) Overall similarity is the touchstone.

(d) Marks must be looked at from the view and first impression of a
person of average intelligence and imperfect recollection.

(e) Overall structures, phonetic similarity and similarity of idea are

important and both visual and phonetic tests must be applied.

(f) The purchaser must not be put in a state of wonderment.

(g) Marks must be compared as a whole, microscopic examination being
impermissible.

(h) The broad and salient features must be considered for which marks
must not be placed side by side to find out differences in design.

(i) Overall similarity is sufficient."

39. Besides, further argued that the balance of convenience lies in favour
of the plaintiff and illegal use of trade mark 'MALTOS' by the defendant is
causing irreparable loss to the plaintiff. Per learned counsel the plaintiff is
registered proprietor of trade mark 'MALTOFER', therefore, under
circumstances, plaintiff also has a good prima facie case in its favour.

40. Keeping in view the submissions of the learned counsel I would like
to refer to the case of CIBA Ltd. Basle Switzerland v. M. Ramalingam and S.
Subramaniam Trading in the name of South Indian Manufacturing Co.,
Madura and another [AIR 1958 Bombay 56]. The relevant extract therefrom
reads as under:--

"But on the other hand, when the respondents complained of

substantial injury by being allowed to sell their goods under this name, of
having built up large sales and spent large amounts on advertisement, it
should be pointed out that the respondents did this at their own peril, because
they had been warned by the appellants as far back as October, 1945. It
hardly lies in the mouth of a party to come to the Court and say, 'I by trading
upon that reputation I have been making money. I have been warned that I
should not so trade and yet I took the risk, and now protect me from my folly
or my own dishonestly because the other side has delayed in coming to the
Court and I have a large stake in the sales which I am effecting by reason of
using a trade mark which resembles the trade mark of another." Therefore,
the argument put forward by Mr. Shah of balance of convenience, of hardship
of equity, has no application on the facts of this case. It is not the case of an
innocent party owing to a long user it has built up a business which should
not be destroyed by rectification of the register. As we have already
pointed out, the word "Cibol" seems to have been deliberately selected by the
respondents for no other purposes than for its resemblance with the word of
the appellants."

41. Upon consideration of the provisions of law and case law reproduced
herein I am of the view that defendant cannot be permitted to use the trade
mark 'MALTOS' chosen by defendant deliberately and with a view to sell
deceptively the lower quantity 'goods/products' by creating confusion vis-a-
vis plaintiff's best quality of 'goods/products' available in market under trade
mark 'MALTOFER'. Such dishonest act of the defendant also entitled the
plaintiff for perpetual protection/restraining order against the defendant.

42. Under the provisions of Trade Marks Ordinance, 2001 [XIX of 2001],
no trade mark or any part thereof in respect of goods or services is
permissible to be registered which inter alia cause deception and/or create
confusion. In this regard reference can be made to section 8(a) of Trade
Marks Act, 1940 and the case of Seven up Company v. Kohinoor Thread Ball
Factory and 3 others. [Reported in PLD 1990 SC 313]. The relevant
observations read as follows:--

".............
 Our statue law recognizes and also protects trade mark in relation to
goods, and not independently of the goods. Therefore, one is justified in
claiming protection for a particular trade mark only if it is related to a
particular good or class or category of goods. The generality of clause (a) of
section 8 of the Act cannot be given the meaning and the content so wide as
to embrace all registered and widely used trade marks so as to exclude their
adoption and use for any and every class or category of goods, howsoever
different and dissimilar. The generality advocated is limited by clause (a) of
section 8 of the Act itself. The test provided is not the identity of the trade
mark or of the goods but likelihood of the deception or confusion such as to
entitle protection in a Court of law. The test of the likelihood of deception or
confusion is dependent on the nature of the goods, marketing methods,
consumer awareness etc., all variables, differing from place to place, country
to country and commodity to commodity. Even in the Caltex's case where the
goods were totally different the Court proceeded to examine the first
requirement and found it amply satisfied by holding that "The potential mark
for them is, therefore, similar to that of the existing market of the opponents,
in the sense that the goods of both the parties are not special goods. They are
goods which would be purchased by the common man." And finally holding
that "The opponents are a large company known by many as having large
resources, and therefore, capable of starting any new industry or trade". It has
to be noted further that the likelihood of deception or confusion is tested not
by the reactions of the immediate vendee but by those of the ultimate
consumer."

43. Section 8(a) of Trade Marks Act, 1940 (Act V of 1940) referred to
hereinabove is pari materia of section 14(3) of Ordinance, 2001 [Ordinance
XIX of 2001]. In terms of section 39 of Ordinance, 2001 a registered
trademark is a personal property and proprietor thereof thus has an exclusive
right in a registered trademark. In the case of Mohan Goldwater Breweries
(Private) Limited v. Khoday Distilleries Private Limited and another [Appeal
Against Order Nos.456 and 457 of 1974] it was held as under:--

"If the principle of "who enters the field first" is adopted for purpose
of registration, then section 18 enabling a person proposing to use a trade
mark to apply for registration will be meaningless, as any person using that
mark subsequently can easily defeat the earlier application of such
registration."

44. From the above, it is manifestly clear that no one even on the basis of
principle 'who enters the field first' can be permitted to defeat the vested right
of the registered proprietor. It is worth to note that no such ground 'who
enters the field first' as far the case in hand is concerned is available to the
defendant.

45. Regarding arguments on the point of resemblance of the plaintiff's

trademark 'MALTOFER' and defendant's trademark 'MLTOS' of course upon
comparing trademark 'MALTOFER' and 'MALTOS' one can easily note that
the defendants infringing trademark 'MALTOS' is nothing but a mala fide
replacement of letters 'FER' of plaintiff's registered trademark 'MALTOFER'
with letter 'S' to make it 'MALTOS'. Such act on the part of defendant besides
being mala fide is also deceptive. In this regard the case of Jamia Industries
Ltd. v. Caltex Oil (Pak) Ltd. and another. [Reported in PLD 1984 SC 8] is
relevant. The observations made therein read as under:--

"that in making comparison of the two marks, emphasis should be

laid on their leading features, and that, in doing so, it should be determined as
to what are the leading characteristics of each of the competing trademarks"
he then referred to several reported cases bearing on the question and
formulated proposition, that "though ordinarily totality of the two marks
should be seen to ascertain whether they are similar to each other or
distinctive from each other, but where a dominant feature of the registered
trademark is incorporated in the competing trade mark, then there is not only
possibility, but also probability of deception and confusion being caused". By
applying these principle the learned judge reach the following conclusion.

"If we take this trade mark and compare it with that of the appellants
then irresistible conclusion would be that the dominant and the essential
feature of the two marks is the five pointed star in outline, and, this being so,
there is every probability that the two marks will be confused with each
other, as also the goods marketed under each mark even with regard to the
first trade mark of the respondents, i.e., the one bearing No.20665, in which
the whole star is coloured, the view may be taken, in the circumstances of the
present case, that this mark bears resemblance to the proposed mark of the
appellants, in that , in both the devices the five pointed star has shown
surrounded by a circle I have already stated that the appellants five pointed
star is within a crescent, but this crescent is in fact a circle. One feature,
therefore, would be common between the respondents' trademark No. 20665
and that proposed by the appellants, i.e., in each case, the five point star is
surrounded by a circle."

46. Herein I may beneficiary make a reference to the book Law of Trade
Mark and Trade Names (1966 Edn.) written by Kerly wherein at page 838, he
has made the below observations on the principles to be followed in
comparing the two marks:--

"Two marks when placed side by side, may exhibit many and various
differences yet the main idea lift on the mind by both may be the same. A
person acquainted with one mark, and not having the two side by side for
comparison, might will be deceived, if the goods were allowed to be
impressed with the second mark, than to a belief that he was dealing with the
goods which bore the same mark as that with which he was acquainted. Thus,
for example, a mark may represent a game of ball; another mark may show
players in a different dress, and in every different position, and yet the idea
conveyed by each might be simply a game of football. It would be too much
to expect the persons dealing with a trade marked goods and relying, as they
frequently do upon marks should be able to remember the exact details of the
marks upon the goods with which they are in the habit of dealing. Marks are
remembered rather by general impression or by some significant detail
than by any photographic recollect of the whole. Moreover variations and
details might be supposed by customer to have been made by the owners of
the trade mark they are already acquainted with for reasons of their
own."

"When the question arises whether a mark applied for bears such
resemblance to another mark as to be likely to deceive, it should be
determined by considering what is the leading characteristic of each. The one
might contain many, even most, of the same elements as the other, and yet the
leading or it may be the only, impression left on mind might be very
different. On the other hand, a critical comparison of two marks might
disclose numerous points of difference, and yet the idea which would remain
with any person seeing them apart at different times might be the same. Thus
it is clear that a mark is infringed if the essential features, or essential
particulars of it, are taken. In cases of device marks, especially it is helpful
before comparing the marks to consider what are the essential of the
plaintiff's device with word marks, the Court is apt to be more
impressed by the danger of giving the plaintiffs what amounts to a
monopoly in a large class of words".

47. In view and applying the above principle on comparison two Trade
Marks 'MALTOS' and 'MALTOFER' in my view has large range of similarity.
The defendant imitated trade mark 'MALTOS' is phonically, visually,
structurally, deceptively and confusingly similar and nearly resembles the
plaintiff's registered trade mark 'MALTOFER'.

48. Learned counsel for the plaintiff while making her submissions
regarding 'infringement' and 'passing off relied upon the case Messrs Mehran
Ghee Mills (Pvt.) Ltd. and others v. Messrs Chiltan Ghee Mill (Pvt.) Ltd. and
others [Reported in 2001 SCMR 967], the Hon'ble Supreme Court of
Pakistan vide dilating upon the question of 'infringement' and 'passing off'
action observed as under:--

"15 ......The question that whether there has been an infringement or

not is to be decided by comparing and placing the two marks together and
then to determine about their similarity or distinctiveness. If the two marks
are absolutely identical no further probe is needed and infringement as
established. Essential features of the marks shall be looked into for
effectively deciding the issue of infringement. To constitute infringement it is
not necessary that whole of the mark be adopted. The infringement will be
complete if one or more dominating features of a mark are copied out. If
there is a striking resemblance, ex facie, it would lead towards the conclusion
that the mark has been infringed. There is mark degree of similarity between
two marks of this case. Mark/label of respondent No. 1 has virtually been
adopted by the petitioner in same colour scheme, design and getup to pass of
its (petitioners) goods, as that of the respondent No.1."

.......................

"18. As regards passing of action it is noted that the principle

underline the passing of action is that it is 'unlawful for a trader to pass of his
goods, as the goods of another'. Passing of action may be independent as it
may be coupled with infringement. It is maintainable irrespective of the fact
that the trademark is a registered or unregistered. Such action is called by
subsection (2) of section 20 of the Act for a claim relating to passing of
action the plaintiff shall prove that his mark within the scope of definition (f)
of section 2 of the Act was not only distinctive but had been continuously in
use and the defendant realizing the fact that the trademark of the plaintiff is a
valuable asset, in order to deceive the customers, had copied the same. The
definition of a mark is given in section 2 is not exclusive but includes a
device, brand, heading, label, ticket, name, signature, word, letter or numeral
or any combination thereof. It is not necessary that the mark, ex facie, shall
deceive or confuse, but what is important is the total impact upon a common
purchaser. In the case reported as Ferozuddin v. Muhammad Shafi and
another (PLD 1975 Kar. 486) a reference has been made to the Halsbury's
Laws of England IIIrd Edition, Volume XXXVIII at page 494 which reads as
follows:

"The consequence of the application of the right to prevent passing

off is that a trader, who uses a name or mark or get-up that has been come
distinctive of his goods, can prevent others using the same or a similar name
or mark, where that use will deceive or is calculated to deceive a substantial
number of members of the trade or public and to thinking that goods, offer
for sale or supplied by them or his".

49. In addition to the above, per learned counsel dominating features of

trade mark 'MALTOFER' of which the plaintiff is registered proprietor have
been copied/adopted by the defendant for its imitated trade mark 'MALTOS'.
The striking resemblance thus created in two trademarks, besides infringing,
the defendant also 'passing off' its 'lower quality goods/products in the garb
of plaintiff's 'best quality goods/products' under imitated trade mark
'MALTOS' thus deceiving not only the plaintiff but public-at-large.

50. Since from defendant's side no evidence is available in rebuttal of

'averments' made in the plaint and 'evidence led' by the plaintiff. Under the
circumstances, the version of plaintiff vis-a-vis 'best quality of
goods/products' has gone unchallenged. Hence, the plaintiff in view of such
position has also succeeded in establishing the 'infringement' and/or 'passing
off' the lower quality goods/products under imitated trade mark 'MALTOS'.
The contents of the 'affidavit-in-ex parte proof [Exh.P.W.1/3] and other
exhibits [Exh.P.W.1/4 to Exh.P.W.1/7] it worth to note, have gone un-
rebutted.

51. Learned counsel for the plaintiff in support of her arguments

regarding 'goodwill' gained by the plaintiff company over years in respect of
business of goods/products under its registered trademark 'MALTOFER'
made reference to the observations of apex court made in the case of Messrs
TABAQ RESTAURANT v. Messrs. TABAQ RESTAURANT [Reported in
1987 SCMR 1090] which read as follow:--

....................

"He who by his skill and labour establishes a business acquires

thereby an interest in the goodwill of it, that is to say, in the established
disposition of customers to resort to him. To this goodwill he has an
exclusive right which is violated by anyone who seeks to make use of it for
his own advantages, as by falsely representing to the public and that he
himself carrying on the business in question. Special forms of this right of
commercial goodwill are rights to trade names and trademarks. Every man
has an exclusive right to the name under which he carries on business or sells
his goods to this extent at least that no-one is at liberty to use that name for
the purpose of deceiving the public and so injuring the owner of it. He has a
similar right to the exclusive use of the marks which he impresses upon his
goods, and by which they are known and identified in the marked as his".

....................

"It is well settled that "passing of actions are designed to protect a

property in the goods on account of its reputation and not in the trade mark
and that "passing of actions or essentially actions tort and are filed in
contradictions to suits filed for infringement of trademarks where invasion
takes place in one's rights in the property, for instance when someone imitates
the good of another. Hence if the suit filed by the respondent was a suit
simplicitor for "passing of and no infringement of the trade mark was
involved therein, the suit undoubtedly lay before the court of first instance.

"Under the Act "a registered trade mark" means a trade mark which is
actually on the register."
52. Indeed, the 'goodwill' of the plaintiff company gained under the
registered trademark 'MALTOFER' is the exclusive right of the plaintiff
company and any violation thereof is not permissible. No-one under law can
use the trademark of someone else for the purpose of deceiving the public
and causing injury to the owners' goodwill and/or reputation.

53. As far as the claim of damages is concerned, under law

damages cannot be granted in absence of 'positive evidence'. Damages
require evidence vis-a-vis details of losses actually suffered. As a rule even
fixed amount of damages cannot be granted unless quantum of actual losses
is proved. Party claiming damages have to firstly plead and then prove
damages by sufficient, cogent, trustworthy and independent evidence.
Regarding damages and quantum thereof burden of proof always lies on
the claimants. Without discharging such burden one cannot succeed.
Reliance is placed on the following cases:--

A. In case Muhammad Amin Muhammad Bashir Ltd., v. Muhammad

Amin Brothers Ltd. [PLD 1969 Kar. 233] wherein at page 238 the Division
Bench of this Hon'ble Court observed in the following words:

"......We are in respectful agreement with the point of view that

difficulties in estimating damages should not be excused for shirking the duty
of solving the problem that may be before a court and that the material which
may be before the court should be scrutinized and examined for purposes of
finding what relevant and sound inference can be drawn from it. This attitude
is however to be accompanied with the obligation that failure of a party to
produce the best evidence should be reckoned against him. Their Lordships
have gone to the length of saying that every presumption should be made
against such a party. In the present case we find that there is no evidence at
all of the price prevailing at the time at which the alleged purchase was made
by the plaintiff- appellant, nor is there anything to indicate the condition of
the market on 30th June, 1959, on which date the breach took place.
Moreover, oral statement has been made without any documents to support it,
which we do not consider to be the best evidence and feel justified in
drawing the conclusion that adverse presumption should be made against the
plaintiff- appellant. In these circumstances, we are of the view there is no
material before us to enable us to hold that the plaintiff-appellant has suffered
any monetary loss."

B. In another case Daoud Shami v. Messrs Emirates Airlines and another

[PLD 2011 SC 282] (Appellate Jurisdiction) the learned Appellate court
observed as under:

".......22. In the case of Syed Ahmad Saeed Kirmani v. Messrs Muslim

Commercial Bank Ltd., Islamabad (1993 SCMR 441), this court held that
only such damages could be recovered which would naturally arise in the
usual course of things from such breach or the parties at the time of
making the contract know that loss or damage was likely to be result from
the breach.

23. Applying the rules referred to in the preceding paragraph to the

facts of the instant case, we find that although the loss was being claimed by
the appellant-plaintiff on the basis of special circumstances i.e. that the
former had to attend his graduation ceremony in Washington D.C., the said
circumstance was not brought to the notice of the defendant airline. In the
entire body of the plaint, there is no averment that defendant-airline was
informed that he had purchased the ticket and was proceeding to U.S. to
attend the graduation ceremony. Even in the evidence led before this court,
no reference was made that respondent airlines had notice of the
aforementioned special circumstance. In Mohindra Lal Sen v. Union of India
(AIR 1960 Patna 411), the court refused to grant damages to a passenger who
alleged that on account of delay of train, he had missed the engagement. The
court found that he could only be awarded damages if the railway
administration knew at the time of reservation of the suit that plaintiff had an
engagement at the place of destination which he could miss if the train was
delayed. The court held as follows:--

"There was no contract to take him to Calcutta for a particular object.

It is well to remember that the punctuality of the train is not guaranteed; and
assume that on the relevant date the Down Janata Express reached Calcutta
very late, say, after 9-00 hours. By the lateness of the train also the plaintiff
might have missed the engagement. Can it be reasonable urged that the
plaintiff would be entitled to damages on account of his missing the
engagement because the train reached late? This circumstance is sufficient to
show in bold relief that the damage, on account of his missing his
engagement cannot be said to be a natural consequence of the breach of
contract by the Union of India.

The plaintiff would also be entitled to damages if the Railway

Administration knew at the time of reservation of the seats that the plaintiff
had an engagement in Calcutta at 9-00 hours on 29-9-1954, and that he had
booked the tickets and reserved the seats in order to go there to fulfill the
engagement. Unfortunately, there is no evidence on this point. There is
nothing to show that the plaintiff told the Railway authorities that he
was booking the tickets and reserving the seats for an engagement in
Calcutta at 9-00 hours on 29-9-1954."

54. There is another aspect of the matter also. Per plaintiff's own
assertions the plaintiff has got knowledge about preparation of selling of
goods in first week of September, 2009. Upon getting knowledge it appears,
that the present suit was immediately filed on 10-9-2009. Thereafter on 11-9-
2009, defendant was restrained from using trademark 'MALTOS'. Under
circumstances, seemingly the plaintiff has not suffered damages/losses.
Besides, the plaintiff has not led any evidence about suffering of damages.
The plaintiff in my view thus is not entitled for any damages in the sum of
Rs. 15,000,000 [Rupees fifteen Million only] or any part thereof.

55. As far as the abandonment of the defendants' application bearing

No.217871 under section 28(4) of Trade Marks Ordinance, 2001 [Ordinance
XIX of 2001], on account of defendant's failure to file any 'counter-statement'
in response to plaintiff's opposition proceeding No.307 of 2008 is concerned,
the view taken by the Registrar of Trademarks is correct and in accordance
with subsection (4) of section 28 of Trade Marks Ordinance, 2001
[Ordinance XIX of 2001], reproduced hereinabove.

56. In the aforesaid facts/circumstances, arguments advanced and case-

laws cited at bar by the learned counsel for the plaintiff, I have reached the
conclusion that the plaintiff is entitled for a decree against the defendant in
terms of para 27.1(a)(b)(f) and para 27.2(i) of the prayers made in the plaint.
Accordingly the suit is decreed. C.M.A. No.8513 of 2009 also granted and
consequently interim order of 11-9-2009 stands confirmed.

SAK/V-1/K
Suit decreed.