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Petitioner: MESSRS BURNEY'S INDUSTRIAL AND COMMERCIAL Co. LTD. VS Respondent: MESSRS REHMAN JUDGMENT
Court Name: Sindh High Court Judge(s): Nasir Aslam Zahid Title:MESSRS BURNEY'S INDUSTRIAL AND COMMERCIAL Co. LTD. vs MESSRS REHMAN
JUDGMENT
Reported As: PLD 1983 Karachi 357 Result: Suit decreed Judgment JUDGMENT ' This suit has been filed by the plaintiff against the defendant for permanent injunction against infringement of trade mark, passing off, damages and for accounts of profits. Plaintiff is the registered proprietor of Trade Marks Nos. 55341 and 60474 in Class 34 in respect of safety matches. According to the plaintiff, who claim to be leading manufacturers of wax matches in Pakistan with very large sales, they have since 1971 used their trade mark consisting of the &vice of a cancel with the word "Shama" with its "particular get up, design, colour scheme and reverse panel with black and white stripes, so it has become distinctive........... ", and that their mark has become well-known in the market. Haintiff alleges that the defendant started manufacturing and selling wax matches of substandad quality its boxes bearing device of candles and black and white stripes which is "almost identical to the plaintiff's registered trade mark" and that the use of a similar and deceptive mark by the defendant in respect of the same description of goods is calculated or likely to cause confusion or deception in the market and "in the minds of the dealers, buyers and consumers most of whom are illiterate." 2. Apart from the fact that the mark of the plaintiff was registered, the defendant in their written statements denied the various allegations made in the plaint taking the stand that the mark being used by the defendant bad no resemblance with the registered mark of the plaintiff. The defendant further pleaded that they had applied for the registration of their own mark and they were awaiting its registration. An additional defence has been taken by the defendant in para. 12 of their written statement, which paragraph is reproduced here :-
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"12. The plaintiff's trade mark is a composite mark and it has no exclusive right in any part thereof separately. His right is limited to the mark as it appears on its label. It has not obtained any registration of any part thereof separately as required by section 11 of the Trade Marks Act, 1940." 3. On 30-3-1981, this suit was fixed before the Court for hearing of the temporary injunction application filed by the plaintiff, when the two learned counsel agreed that no oral evidence was necessary and that the entire suit could be decided on the basis of documentary evidence and affidavits already on record. In the circumstances, after framing the following issues, this suit was fixed for arguments : Issu es (1) Whether the suit is not properly valued and maintainable in law? (2) Whether the defendants have infringed the trade marks of the plaintiff? (3) Whether the defendants are guilty of passing off? (4) Relief. ' It may be mentioned here that Mr. Muzaffar Hassan, learned counsel for the defendant, did not press issue No, 1 and as such by consent issue No, 1 was dropped. 4. I have heard at length the arguments of Mr. I. M. Patel, for the plaintiff and Mr. Muzaffar Hassan for the defendant. The two registered marks of the plaintiff are Nos. 55341 and 60479. Both are in class 34 relating to wax matches and registered under the Trade Marks Act, 1940. Trade Mark No, 55341 is registered with effect from 24-4-1971. Trade Mark No, 60479 is registered with effect from 8-4-1974 and it is associated with Mark No, 55341 with the condition that the mark is limited to colour as shown in the representation on the form of the application. In fact both marks relate to the same label of the plaintiff. The mark of the plaintiff may now be described. Label on the top portion of the box of matches has two main colours-yellow and red. About four-fifth of the label is yellow and lower one-fifth portion is red. There is a device of one candle in white with a flame coupled with wax dripping from the candle. The candle is white with black lines drawn vertically from the top to the base of the candle. Dripping wax in black appears on one side of the candle. The candle rests on a red lamp-a traditional lamp like Aladin's lamp. The word "SHAMA" appears in bold capital letters in the middle of the label in red colour with borders. The candle, the lamp 'and the word "Shama" are printed on the top yellow portion of the label. ' The defendant's mark is not registered, but, as observed earlier, it has been averred by them that their application No, 70405 is awaiting registration. The mark of the defendant which has been challenged in this suit may now be described. In their label also the top bigger portion is yellow in colour and the bottom small portion is red. The word "CHANDA" appears in yellow colour on the small red part of the label. Then there are two candles in white with black lines drawn vertically on the two candles. On both the side of the two candles dripping wax is shown in white. The two candles rest on holders which are in red colour. The holders rest on black stands. There is a crescent in red on the top left portion of the yellow part of the label with the lower part of the crescent going behind the top portion of the left hand side candle. All these figures are on the top yellow portion of the label. 5. Before dealing with the issues in this case I may here refer to the reported judgments relied upon by the learned counsel for the parties in support of their respective contentions. Mr. I. M. Patel relied upon the following cases :- (i) Rexona Proprietary Ltd. v. Majid Soap Works PLD 1956 Sind L (ii) A & F Pears Ltd. v. Ghulam Haider PLD 1959 Kar. 154. (iii) Insaf Soap Factory v. Lever Brothers Port Sunlight Limited PLD 1959 Lah. 381. (iv) Bandenawaz Ltd. v. Registrar of Trade Marks, Karachi PLD 1967 Kar.
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492. (v) Pakistan Battery Manufacturing v. Muhammad Hussain PLD 1970 Kar. 92. (vi) Abdul Jabar v. Ahmad Jan PLD 1973 Kar. 289. (vii) In the matter of Turney & Sons Trade Mark 11 R P C 37. (viii) Brvand & May Ltd. v. United Match Industries Limited 50 R P C 12. (ix) De Cordova v. Vick Chemical Co. 68 R P C 103. (x) Taw Manufacturing Co. Ltd. v. Notek Engineering Co. Ltd. 68 R P C 271. (xi) Colgate Palmolive Ltd. v. Pattron 1978 R P C 635. ' Mr. Muzaffar Hassan, learned counsel for the defendant referred to the following judgments :- (Xi) Coca Cola Co. v. Pepsi Cola Co. AIR 1942 P C 40. (xii) Ram Kumar JaLAN v. R. J. Wood & Co, AIR 1942 Lab, 262. (1) PLD 1956 Sind 1 is a Division Bench Judgment of the Chief Court. This judgment decided on application for interim injunction in a case of infringement of tiade mark and accordingly it is, strictly speaking, not a precedent for the points in issue in the instant case. However, learned counsel cited this authority for the following passage from the judgment written by Constantine, C. J. :- "It is common ground that the trade mark of the appellant was registered in 1943 and that this registration was advertised. It is common ground that the appellant's Soap widely sold in Pakistan and in particular Karachi. The appellant as filed alongwith the appeal its own wrapper and that used by the defendant. Both are coloured green, though not exactly the same shade of green. On the upper face of the wrapper when it is wrapped round the soap appear the name in cursive script, below that a horizontal bar in black with white lettering and below a circle with white and black in it. On the other sides appear on each wrapper the name in cursive script. The learned Judge held that the difference between the two names was obvious and that the colour was not exactly the same, and hence he thought that there was not sufficient resemblance as to be likely to deceive the purchaser or cause confusion. We respectively but firmly disagree with this conclusion. Lord Lindley in Lever v. Goodwin (XXXVI C. D. 1) stated at page 8:- "Of course, in all these cases there are differences as well as resemblances, and the question, so far as the packages are concerned, must always be decided by contrasting the striking resemblances with the striking differences. Now, the only difference which strikes me at all is this : that Goodwin has substituted the word "Goodwin." in large letters, for "Sunlight." That is the whole differences which catches the eye. Then look at the resemblances ; look at the paper ; look at the printing ; look at the blank space, and the catch words ; look at the whole thing ; and it is impossible not to arrive at the conclusion not only that one was intended to pass for the other, but that intention has been realised. I say that apart from the evidence." In this case it might equally be said, look at the printing look at the horizontal bar with the white lines, and look at the circla below, look at the proportions and relative distribution of these features on the face of the green wrapper and equally it may be said that the whole get up shows that the defendant represented to the public that his goods were the goods of the plaintiff." ' It is, we think, significant that in the -counter-affidavit of the defendant it was stated in paragraph 14 : "That there are others who are wrapping soaps in wrappers 'quite similar to Rexona, as shown in Annexure 'C', but nothing is being done by the plaintiff's against them," And during the course of arguments before us the defendant's Advocate handed up a wrapper showing similar wrapper entitled "Raisina" soap. The grievance in this paragraph appears to be that the plaintiffs have done an injustice to the defendants by picking on them instead of other persons who have infringed their trade marks.
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' The next point that arises in this appeal is that it was said that there is no evidence that any one has in fact been deceived. The authorities are plain that where the get up is so similar, it is not necessary there should be evidence that any one has in fact been deceived. It is enough if the plaintiff satisfied the Court that the defendant sells his goods marked in manner so as to lead purchasers to believe or to create a probability of so believing that they are buying the goods of plaintiff. The learned Advocate for the respondent relied upon AIR 1938 Cal. 458. But there the learned Judge himself described the case as a border line case and hence this was one of the factors namely, the absence of proof of actual deception, that led the Judge to refuse an injunction. Iii) PLD 1959 Kar. 154 is a Single Bench judgment of Qadeeruddin, ad learned counsel for the plaintiff had drawn my attention to following passage from this reported case :-- "It is important to draw distinction between the confusion which arises in connection with the sale of goods and the confusion which arises on account of the use of a trade mark which is the property of another person. A mark vouches for the goods which bear it. If another person borrows it, then he borrows the reputation of the other too. 'unfair competition may exist not only in the sale of goods of the same character but in the unfair appropriation and use of the trade mark of another. There can be innocent use of the trade mark of another and even then it is objectionable, but in a case like the present one where the reputation and goodwill of the appellants is widespread, the chances of the respondent, to be benefited from it lead me to the conclusion that the appropriation of the mark of the appellants by using mark of confusion sound and look is not as innocent as it may appear." (iii) Great reliance was placed by Mr. I. M. Patel on the Division Bench authority (Yaqub Ali and Change; JJ.) reported in PLD 1959 Lah. 381. In this judgment, which was written by Yaqub Ali, J. AIR 1941 Lah. 262 was approved, AIR 1943 Lah. 196 (Modi Sugar Mills v. Tata Oil Mills) was dissented from and the Privy Council decision reported in I L R 1940 All. 466 was distinguished. Yaqub Ali, J. Disagreed with the judgment of Tek Chand, J. In AIR 1943 Lah. 196, observing as follows :- "With utmost respect to the profound learning of Tek Chand, J. And the weight to which his view is entitled, we find ourselves nimble to agree with the view that "in judging the probability of deception the test is not whether the ignorant, the thoughtless, or the incautious, purchaser is likely to be misled and that we have to consider the average purchaser buying with ordinary caution." Paras. 8 to 12 of the judgment reported in PLD 1959 Lah. 381 are reproduced here :- "8. A careful examination of the judgment of their Lordships in Thomas Bear & Sons v. Prayag Narain and another would disclose that whatever has been said in it is referable to cases of widely dissimilar goods and it was in this context that Niamatullah, J. Observed- "The standard to be borne in mind is neither that of a person who is devoid of all sense of discrimination nor of persons who are very careful observers of things around them. It is of an average man-exercising ordinary caution." It is again in respect of this class of goods that their Lordships observed :- "There are many trade marks and passing-off cases which cannot be decided by a visual comparison of the rival marks or names and must depend on the evidence of witnesses." 8. In Mod Sugar Mills v. Tata Oil Mills, Tek Chand, J. Has interpreted the observations of their Lordships in Thomas Bear's case as applicable to all classes of goods, howsoever, similar in nature and use. At p. 202 of the report is observed : "In some cases decided in this country the former' view had been expressed but it is not necessary to discuss them in view of the recent authoritative pronouncements of their Lordships of the Privy Council in Thomas Bear & Sons v. Prayag Narain and another where it was held that it was not sufficient to prove that some ignorant or indiscriminating person might be deceived but it must be shown that persons exercising ordinary caution would be likely, to assume that the article sold by the defendants was that manufactured by the plaintiff." It
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was thus assumed that the view expressed by the various High Courts of the sub-continent including this Court, e.g. In Ram Kumar Jalan v. R. J. Wood & Co. (1) that the test in cases of infringement of trade mark is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trade mark as the goods of the owner of the trade mark had been overruled or dissented from In the light of the above analysis of the judgment in Thomas Bear's case the assumption is not correct and the test laid down in case before Mod; Sugar Mill's case continues to hold good. {{FOOT NOTE}} (1) AIR 1941 Lah. 262 {{FOOT NOTE}} 10. Lever v. Goodwill (1) a case in which the present plaintiff was the aggrieved party, Cotton, L. J., while dealing with the issue whether the defendant's soap was represented as manufactured by the plaintiffs, observed as follows :- "That being so, can we come to any other conclusion, than this-that the use of this paper and the use of this particular printing was intended to represent these goods as the goods of the plaintiffs, which had become known in the market, and would, in my opinion, induce people who do not when they buy an article look carefully to see what the particular mark or name upon it is, to consider when they got handed down to them one of the tablets of the defendants in this new dress, that they were getting the same soap as they had been accustomed to buy in this kind of packet." ' The criterion laid down in this case was thus that of customers who do not when they but an article look carefully to see what the particular mark or name upon it is" and not that of "the average purchaser buying with ordinary caution. ' 11. In his well-known book on Trade Mark, Kerley, at pp. 617 and 618 has made the following observation which is based upon the dictum of their house of Lords in Lever v. Goodwin referred to above :- "It must not be assumed that a very careful or intelligent examination of the mark will be made, and if it were shown that the class of persons who bought the goods were illiterate, that would be a material fact in cases where printing entered into the marks." ' This is followed by the following quotations from Lever v. Goodwin :- "The poorer classes, who buy this class of goods, do not seem to distinguish the goods by the label, but by the general appearance which the articles present." 12. It is needless to stress that in Pakistan nearly 80% citizens are illiterate and that the soaps in question are generally used by them for washing and laundry. As regards the decided cases in England and in this subcontinent, it will be useful to recall the observations of their Lordships in Thomas Bear & Sons v. Prayag Na rain and another "that conditions peculiar to India must be borne in mind in applying any doctrine of English Law, and 'that English decisions which turn or partly turn on questions of fact-as do most cases of common law trade marks and passing off can only be applied with care and circumspection." We are thus of the opinion that the criterion laid down by this High Court in Ram Kumar Jalan v. R. J. Wood & Co., that in cases of infringement of trade mark the test is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trade mark as the goods of the owner of the trade mark still holds good. Not much weight can, therefore, be attached to the few points of dissimilarity between the plaintiff's and defendant's wrappers to which our attention has been drawn by learned counsel for the appellant because the points of similarity in them are so great that an unwary purchaser is likely to be deceived in purchasing the defendant's goods so that of the plaintiff." (v) PLD 1967 Kar. 492 is a judgment of Noorul Arfin, J. In this case respondent No, 2's mark depicting the device of a deer in 'standing position with curling horns and facing to the left was registered. The appellant sought registration of a mark which consisted of a deer in rampant
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{{FOOT NOTE}} (1) (1887) 36 Ch, D 1 {{FOOT NOTE}} position with straight horns and facing to the right. The learned Single Judge dismissed the appeal filed by the appellant against the decision of the Registrar of Trade Marks rejecting the application for registration of the mark by the appellant. Paras. 4, 5 and 6 of the judgment of Noorul Arfin, J. Read as follows :- "4. The two devices which have been held by the Registrar to bear close resemblance are in connection with the same goods, i,e, lubricating oils and greases, with this difference, that the Shell Company's trade mark covers, in addition, kerosene, motor spirit and petroleum. The question is whether there is such close resemblance between the two marks as to be likely to deceive or cause confusion. The Shell Company's mark consists of the device of a Deer with the words "Deer Brand" written above it. The deer appears in a standing position, and faces to the left and has curly horns. The deer in the appellant's device is in rampant position with face to the right and with straight horns, and with the words "Bandenawaz" written across it. The learned counsel for the appellants, Mr. J. H. Rahimtoola, reasoned that the two devices, when compared side by side, will be found to contain so many dissimilarities as to constitute distinct and different marks altogether. I am afraid this is not a correct approach to the question. As held in Sandoz Ltd's appeal (1940) 31 P C 196 for purposes of resemblance the two marks should not be compared side by side and the question in cases of allied conflict between two devices always is whether a person will be deceived when he sees one trade mark in the absence of the other mark. 5. The consideration which has to be kept in mind is whether a member of the public buying the products of the appellants was likely to be deceived into believing that he was buying the products of the Shell Company. In Aristoc Ltd. v. Rysta Ltd. (1940) 62 R P C 65 the House of Lords, while considering the resemblance between Aristoc and Rysta stated the principle to be applied in such cases as follows "The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938 (which corresponds to section 10), must nearly always depend on first impression for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived of or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher for elocution. The Court must be careful to make allowance for imperfect recollection and effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants. The tendency to slur a word beginning with 'A' is generally speaking, very common, and the similarity between `Rysta' and 'Ristoc' would, I think, be fairly obvious. It would not be surprising to learn that a person asking for 'Aristos' stockings from a shop assistant who only knew of `Rysta' stockings had been supplied with the latter and vice versa. 6. In the light of the above pronouncements, it has to be decided whether there is any resemblance between the two devices before me. The resemblance may be visual or phonetic. The basic device in the two marks is the same, i,e, a Deer. Notwithstanding the dissimilarities with regard to the shapes of the deers, the two devices shall in all probability be known in the market as Deer marks or Deer Brands. The goods of the Shell Company of Pakistan. I am, therefore, of the opinion that there is such resemblance between the two devices that the registration of the appellant's trade mark will result in causing deception or confusion in the public. I may here refer to cases where the comparison between the leading features of the two marks led the Courts to conclude that
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notwithstanding the points of difference, the two marks bore such resemblance as was likely to cause deception and confusion. In Northington's Trade Mark (14 Ch. D 8, 13, C A) a triangle with a double line with the name of the brewery inscribed inside it and having conspicuously thereon a figure of a church was held to be similar to a plain triangle coloured red. In Pamril Ltd.'s Application (1901) 18 R P C 181 the device of the side of an apple cut vertically into half with the word "Pomril" across it and a registered trade mark consisting of the representation of an apple with the words "Apple Brand", both marks being for cider, were declared similar. The picture of a girl in dancing dress sitting upon a bed and pulling up her stockings, with the words "Cabret Girl", and the picture of a lady in ballet dress with a wreath of flowers in her hands and the word "Carnival" or "Columbine" underneath were held to bear close resemblance to each other in the Distributing Corporation (London) Ltd.'s Application (1927) 44 R P C 225." (v) The facts of and principles laid down in PLD 1970 Kar. 92, a Single Bench judgment of Feroze Nana' Ghulamally, J. Are manifest from the following passages at p. 96 of the report "There is no doubt in my mind as would be crystal clear even on a cursory glance at these two marks that the defendant's mark "5-Stars" is a colourable limitation of the plaintiffs' registered trade mark "3-Stars." It appears to me that the defendants have exerted every possible effort to make out a resemblance between the mark that they are using and the, trade mark registered in favour of the plaintiffs. The get up, design and colour are all identical. The only difference which it has pleased the defendants to make that they branded their mark "5-Stars" instead of "3-Stars" of the plaintiffs. It is consequential keeping these two designs, marks, etc. Side by side, that they are bound to cause confusion in the market to the customer in general and amounting to a flagrant infringement of the plaintiffs' registered trade mark definitely deceiving a purchaser of a firm acquainted with the plaintiffs' get up and leading him to purchasing the defendants' products as that of the plaintiffs', My findings accordingly on these issues. 11. Issue No, 7.-The plaintiff's have led no reliable evidence on any actual damages suffered by them on account of the infringement of their registered trade mark. In consequence they are not entitled to any damages as claimed in their plaint, the amount claimed in paragraph 11 on this point being Rs, 25,000. The plaintiffs are only…
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