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Petitioner: MAAZA INTERNATIONAL COMPANY L. L. C. VS Respondent: POPULAR FOOD INDUSTRIES LTD. and another
Court Name: Sindh High Court Judge(s): Shabbir Ahmed Title:MAAZA INTERNATIONAL COMPANY L. L. C. vs POPULAR FOOD INDUSTRIES LTD.
and another Case No.: Suit No,637 of 2003 Date of Judgment:2003-06-16 Reported As: 2004 CLD 171 Result: Application allowed Judgment ORDER ' This order shall dispose of above applications (C.M.A. No,3339 of 2003) filed by the plaintiffs for injunction, restraining the defendants from infringing the plaintiffs' trade mark `MAAZA' registered under No,142298 in Class 32 in respect of 'beverages, juices, soft drinks' by the use of identical trade mark `MAAZA'. The second (C.M.A. No,3441 of 2003) for recall of order dated 30-5-2003, whereby the defendant was restrained from infringing the said trade mark of the plaintiff. ' Briefly, the facts giving rise to the present applications are that plaintiffs filed a suit for perpetual injunction to restrain infringement of registered Trade Mark `MAAZA', passing off, for account of profits and/or damages. The case of the plaintiff is that they are a company organized and existing under the laws of the United Arab Emirates and engaged in the manufacture and sale of beverages, juices and soft drinks for the last six years and their products are being marketed and sold under the Trade Mark `MAAZA' in the Middle East, North Africa and South Asia and the goods of the plaintiff are recognized as the goods of the plaintiff of high quality. The Trade Mark `MAAZA' was originally created/adopted by the plaintiff's predecessor-ininterest, namely Parle Exports Company Limited, Bombay, India prior to 1974. The plaintiffs acquired the said trade mark by way of assignment vide agreement dated 8-10-1997, prior to the assignment, the sister concern of the plaintiff namely, Union Beverages Factory was granted Franchise in 1974 as the sole Bottlers of Juices under the brand name `MAAZA' by Maaza Beverage Inc., New York, in cooperation with Parle Exports Company Limited, Mumbai, India. It was further case of the plaintiff that during 1980 Trade Mark `MAAZA' gained great popularity and recognition in the Gulf and the Far East and in other countries of the world. The international
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recognized status of the trade mark was the result of the unique, distinct and high quality products manufactured under the brand name `MAAZA'. Thus they have directly or indirectly rendered great efforts to acquire international recognition of the products sold under the brand name `MAAZA' . The registration of Trade Mark `MAAZA' have been secured in the following countries:-- COUNTRY REGISTRATION No. DATE CLASS United Arab Emirates6340 29-1-1997 32 Saudi Arabia 369/10 1-1-1416(Hijra) 32 Jordan 43173 11-4-1996 32 Kenya 41538 3-10-1997 32 Kuwait 30038 15-10-1998 32 India 3092628 21-10-1995 32 Tanzania 24578 8-4-199732 Japan 4268381 4-11-1999 32 Yemen 7252 18-6-199732 Lebnon 69747 12-8-1996 32 U.S.A. 1114647 6-3-1979 32 ' It is further case of the plaintiffs that they have granted Franchises to several Business Entrepreneurs in Jordan, Kuwait, Ukraine, Tanzania, Kenya and Syria to manufacture and distribute juices under the brand name `MAAZA'. On account of an increased demand of the plaintiff's products compelled the plaintiffs to establish their own factory in Pakistan for production to concentrate and other inputs in the Juice Industry. The plaintiffs have purchased a factory in Pakistan and named `MAAZA' Pakistan (Pvt.) Limited and shortly the plaintiffs would be launching `MAAZA' Juices in Pakistan, including the city of Karachi. In order to introduce the products `MAAZA' in Pakistan and to protect their proprietary rights in the Trade Mark `MAAZA', they have secured registration of Trade Mark `MAAZA' under Trade Mark Application No,1442298 in Class-32 for 'Beverages, Juices, Soft Drinks', which is valid and subsisting. It is also case of the plaintiffs that their products have been marketed and sold internationally under the Trade Mark `MAAZA' and their products have been extensively advertised and published in international magazines, periodicals, journals, newspapers and on electronic media throughout the world by incurring expenses in the range of US $ 134,451.45 and the value of sale for the last five years in the different countries in the sum of US$ 48,444,445.11. It is also their case that by virtue of long, continuous and extensive use of Trade Mark `MAAZA', the plaintiffs have acquired valuable reputation and goodwill and the Trade Mark `MAAZA' connotes and denotes the products of the plaintiffs exclusively and none else and the product is recognized by general public and customers as the goods of the plaintiffs and none else. The fact came to their knowledge on or 8-3-2003 that the defendant 1 are engaged in manufacture and sale of juices in tetra-pack under identical Trade Mark `MAAZA' which is an imitation and copy of the plaintiffs' registered trade mark. They have adopted identical trade mark, colour scheme, lettering, positioning of the plaintiffs' trade mark with the sole intention to ride upon the reputation and goodwill of the plaintiffs and to make wrongful gains and likely to be purchased in the mistaken belief they are the products of the plaintiffs. It was further their case that defendant 1 have adopted the Trade Mark `MAAZA' fraudulently with mala fide intention to deceive and mislead the customers into believing that the products of defendant 1 are the manufacture of the plaintiffs. Thus the defendants have made and/or are likely to make wrongful profits and thus they are liable to render Accounts of profit made to the plaintiffs and pay the same to the plaintiffs as
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damages. The defendants were approached to desist forthwith from committing infringement of registered trade mark of the plaintiffs and/or passing off, but the defendants failed to do so. Hence the present suit. ' C. M. A. No,3339 of 2003 under Order 39, rules 1 and 2, C.P.C. Was also filed alongwith the plaint with supporting affidavit, wherein the averments of the plaint were reiterated with further assertion that the plaintiffs have prima facie case and balance of convenience in their favour and if the accompanying application is not granted, the plaintiffs shall continue to suffer irreparable loss which cannot be measured in terms of money. ' On 30-5-2003 ad interim order in the following terms was passed with notice to defendant:-- "It is, inter alia, contended by learned counsel for the plaintiffs that the plaintiffs are the holder of registered mark `MAAZA' for the fruit juice. According to the learned counsel, it is registered Internationally in various parts of the world as detailed in para.4 of the plaint. It is further contended by the learned counsel that the defendants have adopted the said trade mark as is reflected from Annexure A/ 14 which is available at page 79 on the Court's record thereby infringing and depriving the rights of the plaintiff to use exclusively in terms of section 21 of the Trade Marks Act. Let, notices be issued to the defendants for the next date of hearing. Till the next date of hearing, the defendants are restrained from infringing the mark to the plaintiff `MAAZA'." ' The defendant 1 on service of the order filed C.M.A. No,3441 of 2003 for recall of the ex parte order. ' The defendants resisted the application, inter alia, on the grounds that till date the plaintiffs' products `MAAZA' has not been marketed, imported or used within Pakistan, as such, the question of associating `MAAZA' with the plaintiff does not arise. The defendant 1 has been uninterruptedly and exclusively using the Mark `MAAZA' for its fruit drinks since February, 1997 and such mark is exclusively recognized and associated with the defendant 1 which has nearly 30% of the total market share and has generated a goodwill with the mark `MAAZA' for the last six years, hence the entire action is aimed at usurping the defendant 1's goodwill, which has been acquired after very huge investments both in terms of capital and labour. The registration of Trade Mark `MAAZA' in Pakistan has been illegal and tainted with fraud and misrepresentation. The plea of laches and limitation in bringing the cause was also taken. ' Rejoinder to the counter-affidavit was also filed by the plaintiff, wherein they have specifically denied that the product of the `MAAZA' of the plaintiffs have not been used within Pakistan and it was also maintained that the large segment of the public and businessmen in Pakistan are well aware of the products of the plaintiffs sold under the Trade Mark `MAAZA' and also by virtue of media coverage, travel to foreign countries or working and having family living abroad and particularly in Dubai and other Middle East countries. The Pakistani business community operating in the same field as the plaintiffs frequently visit Middle East countries in connection with business and they are well aware of plaintiffs' products under the Trade Mark `MAAZA'. The products sold under the Trade Mark `MAAZA' are exclusively associated with the plaintiffs. It was also maintained that the application for registration of Trade Mark `MAAZA' was filed on 1-7-1997 with the Registrar of the Trade Mark thus on 30-10-2000 the application of the plaintiff was pending for registration of trade mark. The defendant 1 being fully aware of the international reputation of the plaintiffs' Mark `MAAZA' mala fidely adopted to ride upon the reputation and goodwill of the plaintiffs to make wrongful gains. It was also denied that the defendant 1 is a prior user and/or under section 25 of the Trade Marks Act has superior rights. The defendant 1 is a usurper and has misappropriated the proprietary rights of the plaintiffs in the registered Trade Mark `MAAZA', as such the defendant I cannot claim benefit of section 25 of the Act. The adoption of the Trade Mark `MAAZA' by the defendant 1 is not honest, bona fide, as such cannot be claimed ownership in the Trade Mark `MAAZA'.
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' I have heard Mr. Munawwar Ghani, learned counsel for the plaintiffs and Dr. Farogh Naseem, learned counsel for the defendant 1. ' The well-settled principles for the grant or refusal of temporary injunction are; firstly, whether the plaintiff has prima facie good case; secondly, whether the balance of convenience lies in favour of grant of injunction; and lastly whether the plaintiff would suffer irreparable loss, if the injunction is refused. These principles are to be applied on the basis of facts and circumstances of the case. ' The case as set out by the plaintiff is based on section 21 of the Trade Marks Act, which is in the following terms:- "21. Right conferred by registration.---(1) Subject to the provisions of sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing provision, that shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either-- (a) as being used as a trade mark; (b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade. [(2) A person registered in any Acceding State or non-Acceding State to which section 82-A for the time being applies, as proprietor of a trade mark shall have the same rights in respect thereof as are conferred by this section on a person registered under this Act as proprietor of a trade mark.] ' A perusal of section 21 of the Act shows that it provides a remedy to the owner of a trade mark if it is infringed by any person by use of a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade, in relation to any goods in respect of which it is registered and in such manner as to render the use of the mark likely to be taken either-- (a) as being used as a trade mark; (b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such person as aforesaid is connected in the course of trade. ' A party seeking to enforce his right to a trade mark has to show:-- (1) Trading in his own name with the mark. (2) A certain amount of popularity which would persuade someone to this advantage of its good reputation or popularity. (3) That another person uses a mark. (4) Identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to goods in respect of which it is registered. (5) In such manner as to render the use of that mark likely to be taken to import a reference to the proprietor of the mark or import a reference to goods with which a proprietor is connected in the course of a trade. ' There is no controversy that plaintiff is a registered proprietor of Trade Mark `MAAZA' by virtue of Registration No,1442298 in Class 32 for Beverages, Juices and Soft Drinks. The dominant feature of the defendant's mark is also same word `MAAZA'. ' Mr. Munawwar Ghani, learned counsel for the plaintiff on the basis of above pleadings maintained that plaintiff is a proprietor of the said trade mark which was originally created and adopted by Parle Exports Company Limited, Mumbai, its sister concern, Union Beverages Factory was granted Franchises in the year 1974 as a sole Bottlers of Juices under the brand name `MAAZA' by Maaza
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Beverages Inc., New York in cooperation with Parle Exports Company Limited, Mumbai in the year 1974. The plaintiff acquired the said mark by way of assignment dated 8-10-1997 and they have also secured the registration of the mark in various countries including in Pakistan. Thus the plaintiffs are the proprietor of the Mark `MAAZA'. It was contended by him that large quantity of products have been marketed and sold internationally under the Trade Mark `MAAZA' by the plaintiffs by incurring expenses in advertisement and publicity through magazines, periodicals, journals, newspapers and on electronic media. As a result thereof, they have acquired the valuable reputation and goodwill and the Trade Mark `MAAZA' connotes and denotes the products of the plaintiffs exclusively and the defendant's act in manufacturing and selling the juices in tetra-pack under identical Trade Mark `MAAZA' is an imitation and copy of the plaintiff's registered trade mark. During the course of the arguments, learned counsel referred Annexure A-13 plaintiff's mark and Annexure A-14, the defendant's mark and contended that there is similarity phonetically and visually of the two trade marks, therefore, the defendants by using identical mark have infringed the proprietary right of the plaintiff and maintained that the registration of the mark in favour of the plaintiff is evidence of proprietary right, a prima facie case for grant of injunction in favour of the plaintiff and to support such contention he referred the case of Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant 1987 SCMR 1090; Mars Incorporated v. Pakistan Mineral Water Bottling Plant (Pvt.) Ltd. 2001 MLD 39 wherein the Single Judge of this Court while following the view expressed in Mian Taj Din and another v. Tahir Shabbir 1988 MLD 460 had granted the injunction in favour of the plaintiff. ' Mr. Manawwar Ghani's further contention was that factum of phonetic and visual similarity between the two trade marks is existence of a strong prima facie case in favour of the plaintiff for grant of injunction. To support this contention, he referred the case of National Detergents Limited v. MOD and International (Pvt.) Ltd. 1993 MLD 590, involving the Trade Marks 'Flair' and 'Flare', wherein learned Judge of this Court granted the injunction with the observations that 'there is a phonetic and visual similarity between the words 'Flair' and `Flare' as the trade mark used by the defendant was identical with the trade mark of the plaintiff. ' He contended that in view of the terms 'likely to deceive or cause confusion' used in section 21 of the Act, actual deception or confusion is not a condition precedent for the grant of injunction and to support his contention, he referred the case of Rexona Proprietary Ltd. v. Majid Soap Works PLD 1956 Sindh 1, wherein the following observations was made:-- "It is not necessary that there should be evidence that anyone has in fact been deceived. It is enough if the plaintiff satisfied the Court that the defendant sells his goods marked in the manner so as to lead the purchaser to believe or to create a probability of so believing that they are buying the goods of the plaintiff." ' He pointed out that the purpose of the registration is not merely for the benefit of the traders but also for the benefit of the public at large and its main object is to secure free enjoyment of the right of the manufacturer and marketing of one's product under own registered trade mark and also to save the general public from being deceived by the act of the unscrupulous manufacturer and sellers of the goods bearing the fake trade mark of the others and for maintaining the purity of the trade mark, by referring the observation of Abaidullah, J. In Irshad Sewing Machine Company v. Registrar of Trade Marks 1990 ALD 438 (2). ' His further submission was that a party could claim exclusive use of a trade mark on two grounds. One being a registered proprietor of the mark and two, being user for a long time and for said reason that there was a stamp of 'territoriality' which is based on protectionism. However, in the recent past in global scenario due to communication implosion it has now become possible for multinational business houses to project their goods through television, satellite and now even through internet to the remotest corners of the world. They are, therefore, able to acquire a
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reputation and goodwill in their mark amongst people who probably have never even seen their goods and even before they begin to trade in those countries. Such crack in the edifice of 'territoriality' that had been built round the law of trade marks has been judicially recognized and approved by this Court through the concept of Trans Border Reputation', based on spell over advertisement, in Dabur India Ltd. v. Hilal Confectionary (Pvt.) Ltd. PLD 2000 Karachi 139, by adopting the view expressed in Kamal Trading Company v. Gillette U.K. Ltd. 1988 IPLR 135 that famous and well-known marks could acquire a reputation in India even though they were not sold in the country, based on concept of spill over advertisement that is to say, no direct advertisement but one that finds its way amongst people in different lands through media. ' The learned Judge adopted the concept of the Trans Border Reputation based on spill over advertising and extensive travel. He was of the view that there is no reason why this concept should not be accepted in Pakistan as well. It was further observed that the Pakistanis are more avid travellers than the Indians. In any case in the modern day and age one cannot ignore the fact that worldwise advertising campaign has a tremendous impact on the minds of the people... It has begun to be accepted that reputation can take root even through impression that the individuals carry in their minds. It is true that reputation has always been an incorporeal objection but the fact that now it is the impression in the minds of people that counts, it has become all the more incorporeal. ' On the above analogy, Mr. Munawar Ghani maintained that the concept or Trans Border Reputation was applied in Dabur case (supra) for the grant of injunction. ' Mr. Munawar Ghani's contention was that the defendant 1 have not claimed to be the inventor of the Trade Mark `MAAZA' but they have adopted it which mark is foreign. Such adoption of foreign trade mark was viewed as a dishonest adoption in Mars Incorporated case (supra). ' Mr. Munawwar Ghani's further contention was that the plaintiff has obtained the registration and they have also established the factory and also got the company incorporated with purpose to start business for marketing their product in Pakistan under the Trade name `MAAZA', thus they have demonstrated their intention to use the mark `MAAZA' and his further contention was that the actual use of the mark is not necessary nor the same could be a ground for refusal of the injunction and to support his contention, he referred the following cases:-- ' Cooper's Incorporated v. Pakistan General Stores and another 1981 SCMR 1039 and Unilever Plc. v. Al-Alameen Industries 2003 CLD 623. In above cases, the plea was raised that the product of the plaintiff is not being imported or sold in Pakistan does not entitle the defendant to copy the plaintiff's trade mark. ' Conversely, Mr. Farogh Naseem, learned counsel for the defendant 1 has raised, inter alia, following contentions:- ' That the plaintiff's goods are not being marketed in Pakistan, therefore, the plaintiff has no cause of action to file the suit for infringement in absence of any infringement. This contention has already been set at naught by the apex Court in Cooper's Incorporated (supra) in the following words:- ' Now, although the appellant has not been selling its products in Pakistan because of import restrictions, this does not entitle the respondent to copy the appellant's trade mark, because by doing so, it is deceiving the public into thinking that its products are the products of the appellant.' ' The above view was followed by the Division Bench of this Court in Unilever Plc. v. Al-Alameen Industries (2003 CLD 623). I am bound by the view taken by the apex Court and the Division Bench, even otherwise, I have no reason to take a contrary view. ' Second contention raised on behalf of the defendant was that the defendant 1 is prior user without objection from any quarters and his right is protected under section 25 of the Act. Mr. Farogh Naseem's contention was that the defendant 1 is prior user of the mark and referred the challan
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regarding payment of Excise Duty by the defendant dated 20-3-1997, 22-3-1997, 29-6-1998, 30-6- 1998 and Sales Tax Advices dated 19-4-2002, 20-4-2002, 30-4-2002, 22-4-2002, 10-5-2003, 16-5- 2003 and 17-5-2003. His further contention was that the defendant after obtaining search, they have applied for the registration on 20-11-2001 which has been accepted for advertisement. On the basis of above documents, it was vehemently contended by him that the defendants are prior user and in spite of the registration of the trade mark of the plaintiff, the defendant's right is protected and the proprietary right of the plaintiffs is subservient to the right of the defendant in terms of section 25 and his further contention was that the defendant is also concurrent user in terms of section 10(2) of the Act. Section 25 of the Act reads as follows:-- "25. Saving for vested rights.---Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor- in-title of his trade mark has continuously used that trade mark from a date prior-- (a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor of a predecessor-in-title of his; or (b) to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor-in-title of his; ' whichever is the earlier, or to object (on such use being proved) to registration of that identical or nearly resembling trade mark in respect of those goods under Subsection (2) of section 10." ' To support his contention, he referred the cases of Messrs Abdul Wasim v. Messrs Haico 2002 CLD 1623 and Messrs Fura Foam (Pvt.) v. Messrs Vohra Enterprises (Pvt.) Ltd. 2002 CLD 1639. In former case, the learned Single Judge of this Court concluded that exclusive rights to use trade mark by virtue of registration is conferred on a proprietor, in terms of section 21 of the Act are subservient to exception as provided under sections 22, 25 and 26 of the Trade Marks Act. Exclusively to use mark recognized under section 21; however, does not affect the right of a prior user, may, it be unregistered. It; therefore, follows that right in a trade mark created by prior user despite…
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