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Petitioner: SAMSONITE IP HOLDINGS S.a.r.1. through Attorney and another VS Respondent: FAMOUS BRANDS (PVT.) LIMITED
Court Name: Sindh High Court Judge(s): Muhammad Junaid Ghaffar Title:SAMSONITE IP HOLDINGS S.a.r.1. through Attorney and another vs FAMOUS
BRANDS (PVT.) LIMITED Case No.: Suit No. 2040 of 2017 Date of Judgment:2018-07-24 Reported As: 2020 P C T L R 1419, 2019 CLD 1060 Result: Order accordingly Judgment ORDER MUHAMMAD JUNAID GHAFF AR, J.---All three listed applications are being dealt with and decided through this common order . Application at serial Nos, 1 and 2 have been filed on behalf of the Defendant under Order VII, Rules 10 and 11, Civil Procedure Code ("C.P.C."), whereas, application at serial No, 3 is under Order XXXIX, Rules 1 and 2, C.P .C. filed on behalf of the Plaintif f seeking an injunction against the Defendant. 2. This is a Suit for Declaration, Permanent Injunction and Damages being sought against the Defendant for allegedly infringing their trademark as well as passing-of f the same by selling such goods as a licensed vendor under the name and style of Plaintif f's trademark. This Suit has been filed on behalf of two Plaintif fs, and Plaintif f No,1 is a company governed and registered under the laws of Luxembourg, whereas, Plaintif f No,2 is a company incorporated under the laws of United Arab Emirates. It is claimed that Plaintif fs jointly own and are authorized to the exclusive use of the registered trademarks of their companies under the name and style of "SAMSONITE " Group for trademarks which includes but are not limited to, 'SAMSONITE ' 'AMERICAN TOURISTER' and 'HIGH SIERRA' (relevant for the present purposes), in addition to various other trademarks as well. It is their claim that Samsonite brands are known as the world's largest and most recognizable brands of luggage, bags and other related items. 3. Learned Counsel for the Plaintif f has contended that admittedly the trademarks being claimed by the Plaintif fs are well known marks in most jurisdiction of the world; including but not limited to European Union, United States of America, Japan, Australia and South Korea, whereas, these trademarks are regis tered worldwide and in Pakistan the registration of such marks was procured or is being procured in the name of Plaintif f No, 2 and or through permission as provided under the Tradem ark Ordinance, 2001 read with Tradema rk Rules, 2004 and has referred to Para 4 of the plaint, wherein, the details of registration of all these trademarks is mentioned. Per learned
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Counsel, the trademarks of the Plaintif fs in question undoubtedly are the most well-known and recognizable names in the luggage industry , whereas, the Plaintif fs group is the world's largest travel luggage company established more than 100 years ago. According to him no exception can be drawn to the fact that under the law, Plaintif fs trademarks are well known marks, not only outside Pakistan, but so also within Pakistan. Learned Counsel has further submitted that until 2016 the Defendant was engaged by Plaintif f No,2 as an authorized distributor for Samsonite products in Pakistan and was accorded permission to use the Plain tiffs trademark(s) in Pakistan in relation to authorized genuine products procured from Plaintif f No,2, and during such period the Defendant was acting as a reseller of Plaintif fs brands in Pakistan. According to the learned Counsel there was no written agreement between Plaintif f No,2 and the Defendant, in respect of such permission to use the trademarks; nor in respect of Defendant being an authorized distributor , and further , the Defendant was never registered with the trademark registry as a registered user of the trademarks in Pakistan, and accordingly the Defendant never acquired any right in respect of such trademarks and could continue using the said trademarks only at the will of the Plaintif fs. Per learned Counsel due to disputes and the unhappy and poor performance of the Defendant as its authorized distributor , in August 2016, the Defendant was informed that a new distributor is being appointed and was requested to settle the modalities in respect of the stocks already available. According to the learned Counsel the dispute in respect of the severance of relationship between the Plaintif fs and Defendant is not before this Court; but the Court having jurisdiction in Lahore. For the present purposes, according to the learned Counsel, it is the case of the Plaintif fs that despite severance of the relationship, the Defendant is still selling Samsonite brands in their retail stores with complete display and use of signage pretending to be still working as authorized resellers. Per learned Counsel this amounts to infringement of the Plaintif fs trademarks and is also a case of passing-of f, in the alternative. According to the learned counsel the Defendant on its letterhead as well as the display boards in and outside the shops, is still using the logo of Samsonite for which they are no more authorized. Learned Counsel has referred to the correspondence placed on record as well as the photographs placed through statement before the Court and has contended that the Defendant despite giving an undertaking before the Court on 27.09.2017 is still using the Plaintif fs trademarks and signage to promote its business which amounts to infringement of the Plaintif fs trademark and must be restra ined. According to the learned Counse l the Plaintif fs trademarks are registered worldwide, whereas, in Pakistan they are registered in some classes/categories and pending in some, whereas, assignment applications are also pending before the trademark registry due to change in name and or mergers of Plaintif fs Nos,1 and 2 worldwide. Per learned Counsel, pendency of the assignment deeds per-se cannot be construed as an impediment in grant of an injunctive relief as contended on behalf of the defendant, as it is merely a procedural delay and none has objected to ...such assignments, nor could do so in the given facts. As to the applications filed on behalf of Defendant under Order VII, Rules 10 and 11, C.P.C. learned counsel has contended that both these applications are misconceived as the Defendant had initially filed two Civil Suits in the Lahore jurisdiction in respect of the understanding between Plaintif fs and Defendant and has failed to get any injunction, Whereas, the appeal against such order also stands dismissed. Per learned Counsel it is settled law that a party cannot press upon two applications simultaneously under Order VII, Rule 10 (for return of plaint) and 11 (for rejection of plaint) C.P.C. and this amount to submitting to the jurisdiction of this Court. He has further contended that the cause of action in respect of the present Suit is distinguishable from the proceedings which were initiated in the Lahore jurisdiction, as this is a Suit in respect of infringement and passi ng-of f, under the Trade Marks Ordinance, 2001, and admittedly the Defe ndant has infringed the Plaintif fs tradem ark through its shops in Karachi and therefore, the application under Orde r VII, Rule 10, C.P.C. is liable to be dism issed, whereas, a proper cause of action is available to the Plaintif fs; hence, the application under Order VII, Rule 11, C.P.C. is also liable to be dismissed. In support he has relied upon Pioneer Cement Limited v. Fecto Cement Limited and 3 others (PLD 2013 Lahore 110), Lucky Enterprises, Goods Forwarding Agency v. Messrs Zeal Pak Cement Factory Ltd. (PLD 2013 Sindh 277), Pakistan Industrial Credit and Investment Corporation Ltd. Karachi v. Modern Embroidery and Textile Mills Ltd. Lahore and 6 others (PLD 1976 Karachi 249), Kota Sreeramulu v. Kota Sreeramulu (AIR 1922 Madras 304), Javed Akhtar Chauhan v. Mumtaz Ali and 2 others (2016 CLD 1706 ), Bayer AG and another v. Bayhealth Care (Pvt.) Limited and another (2013 CLD 2087 ), Telebrands
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Corporation v. Telebrands Pakistan (Pvt.) Limited (2006 CLD 580), Ramrichpal Singh v. Dayanand Sarup (AIR 1955 Allahabad 309), Mrs. Farzana v. Muhammad Mateen Khan (2011 CLC 1371 ), Ahmed Nawaz Jagirani v. Sindh Industrial Trading Estate Ltd. (2017 CLC 40), Asif Islam v. Muhammad Asif (PLD 2001 SC 499) and Jewan and 7 others v . Federation of Pakistan and 2 others (1994 SCMR 826 ). 4. On the other hand, learned counsel for the Defendant while arguing the two applications filed on behalf of the Defendant has contended that the Defen dant is not using any signage or name of the Plaintif fs trademark in its shops within the jurisdiction of this Court; hence plaint be returned under Order VII, Rule 10, C.P.C. She has further contended that Defendant's head office is at Lahore and all negotiations between the Plaintif fs and Defendant always used to take place at Lahore; therefore, the Suit is not competent before this Court. As to the application under Order VII, Rule 11, C.P.C. she has contended that Plaintif f No,1 has no cause of action as to the present Suit, as according to her, Plaintif f No,1 is not a registered owner/proprietor of the trademarks in question; hence cannot seek protection under sections 40 and 46 of the Trade Marks Ordinance, 2001. As to the assignment in question she has submitted that those have not been recorded or registered and therefore, no case for infringement is maintainable; but at the most, only a claim for passing-of f can be pressed upon; however , for that the plaintif fs must lead evidence at trial. As to the injunction application she has contended that the Defendant admittedly was appointed as a distributor and for such purposes various shop s were established throughout Pakistan and during the entire period in question, the goods under various brands of the Plaintif fs were being sold with due and implied permission. Accordi ng to her, the Defendant is no more using any signage and or brands of the Plaintif fs marks as alleged for promotion of its business, and is only selling various brands of luggage, including the brands of the Plaintif fs company , which have been procured either directly from Plaintif f No,2 during subsistence of the agreement, or subsequently from the International Market readily available, and for that there is no restriction under the law. She has referred to the undertaking given in this regard before the Court on 27.09.2017. According to the learned Counsel despite repeated requests and efforts, the Plaintif fs failed to lift the unsold stock, and now selling of such goods which have been lawfully permitted, the Defendant cannot be restrained as this is not a case of infringement. Per learned counsel the Defendant is selling the original goods and not counterfeit; hence no case of infringement is maintainable. According to her the Plaintif fs have failed to meet any of the conditions for obtaining an injunction as they have failed to make out any prima facie case, nor balance of convenience or causing of any irreparable loss. As to the claim of well-known marks she has contended that the same applies only for obtaining registration and is only for convenience, whereas, in the present case the issue of well-known mark is not relevant; hence the Plaintif fs are not entitled for any protection in this regard. She has further contended that no confusion is being created or caused, whereas, the Plaintif fs have now open their own retail stores and they are selling the goods under their own trademark whereas, the defendant is selling the goods under its own trade name i,e, "International House of Luggage" hence no confusion has been caused. In support she has relied upon the case reported as Khalid Mehmood v . Shabir Ahmed (2017 MLD 1497 ). 5. I have heard both the learned Counsel and perused the record. Facts have been briefly stated hereinabove and it appears that the Plaintif fs claim and hold Intellectual Property Rights of various trademarks such as `SAMSONITE"AMERICAN TOURISTER' and 'HIGH SIERRA' which are relevant for the present dispute. The Plaintif f No, 1 is presently the company which owns the entire business of the Samsonite group including various trademarks worldwide. To that effect trademark registration certificates of various brands in International Jurisdiction under Class 18 and 35 of the Trade Mark Classification of Goods and Services have been placed on record and do not appear to be in dispute. As to the registration of such marks within Pakistan details have been mentioned in Para 4 of the plaint and it would be advantageous to reproduce the details of such trademarks of the Plaintif fs for which relevant applications have been filed and or are granted by the trademarks registry at Karachi:- MarksClassStatusApplication # AMERICAN TOURISTER Word 018 Registered 81872 AMERICAN TOURISTER Word 035 Pending 389279
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AMERICAN TOURISTER Logo 018 Pending 358897 AMERICAN TOURISTER since 1933 Logo035 Pending 389278 HIGH SIERRA Logo 018 Pending 450584 Swirl Logo 018 Pending 271551 Swirl Logo 035 Pending 383070 SAMSONITE Word 018 Published 247820 SAMSONITE Word 035 Pending 383071 SAMSONITE Logo 018 Published 258674 SAMSONITE Logo 035 Pending 383069 6. Before proceeding further on merits of the injunction application, firstly I would like to deal with the two applications of the Defendant under Order VII, Rules 10 and 11, C.P.C. Both these applications have been filed simultaneously seeking return and or rejection of the Plaint. The precise ground taken in the application under Order VII, Rule 10, C.P.C. is to the effect that the relationship and or terms and conditions between the parties were being handled at Lahore, whereas, the head office of the Defendant is also in Lahore, therefore, this Court has no jurisdiction. It has been further stated that various litigations are already pending in the Lahore Jurisdiction and therefore, on this ground also this Court has no jurisdiction. However , I may observe that Defendant is admittedly operating an office in Karachi as well as retail shops within Karachi and the present dispute and cause of action so stated on behalf of the Plaintif fs is to the effect that after termination of the relationship, the Defendant is still using and pretending to be an authorized reseller by displaying the logo of Samsonite on the signboards in and outside its shops. Hence, in view of such position, I am of the view that this is a separate and independent cause of 'action and the alleged cause falls within the jurisdiction of this Court; hence, the plaint cannot be returned merely on this ground. As to the application under Order VII, Rule 11, C.P.C. the ground taken is to the effect that the trademarks are not registered in the name of Plaint iff No,1, hence, there is no cause of action. Again to this effect, I may observe that firstly there are some marks which are registered and or advertised, and secondly , the Plaintif fs have also sought protection under well-known trademark and have also alleged passing-of f and for that it is not necessary that a trademark be registered. This in fact is not a valid ground for rejecting the plaint summarily without evidence, at this stage of the proceedings. Notwithstanding this, at the very outset, I had also confronted the learned Counsel for the Defendant as to how both these applications under Order VII, Rules 10 and 11, C.P.C. are maintainable simultaneously , to which the learned Counsel for the Defendant failed to respond satisfactorily . It needs to be appreciated that an application under Order VII, Rule 11, C.P.C. can only be entertained by a Court of competent jurisdiction. It is settled law that a plaint can only be rejected by a Court which otherwise has jurisdiction to entertain the Suit/plaint and decide the entire /is on its merits, and if during such proceedings, an application has been filed by the Defendant for rejection of the plaint on the grounds so mentio ned under Order VII, Rule 11, C.P.C., the Court having such jurisdiction can decide the application either way. However , once it is pleaded on behalf of the Defendant that the Court has no jurisdiction and plaint be returned under Order VII, Rule 10, C.P.C., then perhaps, this Court is of the view that no application can be filed and entert ained under Order VII, Rule 11, C.P.C. by the same Court. By filing such application the Defendant submits to the jurisdiction of the Court and waives the objections to that effect, and therefore, cannot press upon an application under Order VII, Rule 10, C.P.C. for return of the plaint. In view of these observations, I am of the view that both these applications do not merit any consideration at the present moment and are liable to be dismissed and it is so ordered accordingly . 7. Insofar as the injunction application bearing C.M.A. No,12935/2017 is concerne d, the Plaintif f's case primarily is that after termination of the relationship with the Defendant, whereby , the Defendant was permitted to act as a distributor and reseller , the Defendant is no more authorized to sell goods bearing the Plaintif fs trademarks. The ground for such prayer is based on the premise that firstly , the trademarks in question belonging to the Plaintif fs are
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well known marks as defined in the Paris Convention as well as under sections 85 and 86 of the Trade Marks Ordinance, 2001. Secondly , the contention is that certain marks are already registered and are protected under section 40 of the Ordinance ibid, whereas, the remaining marks have already been applied for and in some cases the assignment deeds are pending, but notwithstanding the pendency of the assignment deeds, these marks belong to the Plaintif fs and the act of Defendant tantamount to infringement as defined under section 40 of the Ordinance, 2001. It is also the case of the Plaintif f's that such act of the Defendant also amounts to passing-of f the Plaintif fs goods. For the purposes of injunction, it is the case of the plaintif fs that the defendant is using the "Samsonite" signage on its retail shops. In order to appreciate the contention raised on behalf of the Plaintif fs, it would be advantageous first to refer to the relevant provisions of the Paris Convention which reads as under:- "Article 6bis Marks: W ell-Known Marks
(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party , to refuse or to cancel the regis tration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark const itutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. (2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested. (3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith." 8. The need to protect well-known marks was discussed amongst member countries of the Paris Convention in 1920, which resulted in the aforesaid Article. This Article places all member states under obligation either to reject/cancel the registration, or prohibit the use, of trademarks which are confusingly similar to a well-known mark. This protection was originally available only for trademarks relating to goods, not services. However , countries belonging to Paris Convention were not prevented from extending the protection to services. This Article at times was noted and considered to be extremely insuf ficient, and since 1995 World Intellectual Property Organization ("WIPO ") had been advocating for a separate treaty for its protection in more clear terms. Thereafter in the Agreement on Trade-Related Aspects of Intellectual Property Rights (more commonly known as "TRIPS - agreement"), Article 6 of the Paris Convention has been improved to a great extent, by incorporating Article 16 in the following terms; Well-known trademarks are to be protected for services as well as products. The protection extends beyond just similarity to situations where use of the trademark would indicate a connection between the product/service and the owner of the well-known trademark, and could cause detriment to the trademark owner . Account must be taken of knowledge of the relevant sector of the public i,e, the mark needs to be famous in relation to the goods and services where its use is likely to cause confusion. The relationship between TRIPs and Paris Convention is regulated in Article-2 of TRIPs which incorporates all substantive provisions of the Paris Convention, and makes these binding on contracting parties who are not members of the Paris Convention. The idea and consensus appears to be to give protection to well-known marks worldwide, notwithstanding its non-registration individually in a country , where, allegedly it is being infringed. Now the question is, what is a well-known mark? And despite stressing so much for protection of a well-known mark internationally , neither in the Paris Convention nor in the TRIPs Agreement, member countries have been able to particularly and specifically define a well-k nown mark. The interpretation of whether a trademark can be considered well-known is to be done independently on a national scale of each individual coun try. Of course for doing so there is always help from the judicial pronouncement amongst the member countries including extensive research and
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assistance by WIPO as well. In the case of McDonalds Corporation v Joburger , the South African Supreme Court has been pleased to hold that "the term well-known should be tested by reference to whether sufficient people knew the .mark well enough to entitle it to protection against deception or confusion; a degree of knowledge similar to that protected by the law of passing off." In the case reported as The Commissioners of Inland Revenue v. Muller & Co's Margarine Ltd. [1901 1 AC 217 (HL) at 223-4 Lord Macnaghten has defined goodwill as: "It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start. The goodwill of a business must emanate from a particular Centre or source. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates ... For my part, I think that if there is one attribute common to all cases of goodwill it is the attribute of locality . For goodwill has no independent existence. It cannot subsist by itself. It must be attached to a business. Destroy the business, and the goodwill perishes with it, though elements remain which may perhaps be gathered up and be revived again." The WIPO joint recommendation concerning provisions on the protection of Well-known Marks has observed the following guidelines; (1) The degree of knowledge or recognition of the mark in a ' relevant sector of the public. (2) The duration, extent and geographical area of any use of the mark. (3) The duration, extent and geographica l area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies. (4) The duration and the geographical area of any registrations, and/or any applications of the mark, to the extent that they reflect use or recognition of the mark. (5) The record of successful enforcement of rights in the mark, in particular , the extent to which the mark was recognized as well known by competent authorities. (6) The value associated with the mark 9. The more clear and easy definition of a well-known mark has been arrived at by the following the guidelines which determine the action of passing-of f. But not in its entirety , as this protection only pertains to infringement and not for damages. Resultantly , it is less burdening I may say. In an action for passing off, the onus is much higher and difficult, as against seeking infringement of a well-known mark. Kerly's Law of Trade Marks and Trade Names (15th Edition ), has defined the well-known marks at various places as follows; 14-136 Protection is given in respect of marks which are shown by the proprietor to be "well-known". No guidance is given in the Paris Convention as to what this means. TRIPS , on the other hand, provides that in…
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