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Petitioner: TRI-STAR INDUSTRIES (PVT.) LTD. through Director VS Respondent: SAYYED ENGINEERS (PVT.) LTD. through Chief Executive Director/Manager
Court Name: Sindh High Court Judge(s): Maqbool Baqar, Syed Zawwar Hussain Jaffery Title:TRI-STAR INDUSTRIES (PVT.) LTD. through Director vs SAYYED ENGINEERS
(PVT.) LTD. through Chief Executive Director/Manager Case No.: High Court Appeal No.1190 of 2001 Date of Judgment:2006-02-28 Reported As: 2007 CLD 802 Result: Appeal allowed Judgment ORDER The appellant, through the present appeal, have assailed the order, dated 10-4-2001 passed in Suit No.42 of 2000, by a learned Single Judge of this Court, restraining the appellant from using, during the .Pendency of the suit, the word 'Crystal' in connection with a ball pen manufactured and marketed by the appellant. The brief facts of the respondent's case are that the respondent company is a pioneer in the business of manufacturing good quality writing instruments in Pakistan, which are sold under well known trade marks, such as, 'Piano'. 'Allegro', Tempo' and 'Piano Crystal' etc. And have since long been popular amongst a wide circle of customers, such as, student, office worker, executive and professionals. It is claimed that 'Piano Crystal' is amongst the most popular and reputed ball pens manufactured and sold by the plaintiff, with a distinctive shape design and getup and is being widely advertised and marketed throughout Pakistan and aboard. As a consequence of such wide sales and publicity the respondent's Trade Mark 'Piano Crystal', and its shape, design and getup, has come to be associated, by the trade and the general public, exclusively with the products manufactured and sold by the respondents. The respondents have also applied for registration of its Trade Mark 'Piano Crystal' which is pending with the Trade Marks Registry, Government of Pakistan. It is alleged that in or about December, 1999 the respondent came to know that the appellant had commenced sale of a ball point pen by the name of 'Image', not only the shape, design and getup whereof are almost, identical with that of 'Piano Crystal' but the packets containing the ball pen 'Image' bear the word 'Crystal'. The respondent immediately wrote to the appellant calling upon them not to market the ball pen, which was a ditto copy, both in getup and
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shape, of the respondent's ball pen 'Piano Crystal', as the same would result in passing off. In response, the appellant, through letter, dated 17-12-1999 denied the respondents' claim and refused to abide by their request. It was submitted that the Trade Mark 'Crystal' and the shape, design and getup in question are the valuable property of the respondents who are the originator and first user of the Trade Mark 'Crystal' and of the shape, design and getup in question since, 1989. The appellants through their counter affidavit to the respondents' injunction application denied the various allegations of the respondent. It was denied that the plaintiff has the exclusive right to use the word 'Crystal'. It was contended that the appellant cannot be denied the user of the word 'Crystal' as 'Crystal' is a descriptive word, and is common to trade. It was claimed that the word/mark 'Crystal' was registered in Pakistan way back in the year 1966 by a well known international company. "Biro Swan" for their ball pens and in the year 1968, the word was registered in favour of a Japanese Company 'BIC'. It was pointed out that though the plaintiff claims to the exclusive user of the Trade Mark 'Piano Crystal' since 1989 but has applied for registration of the said mark as late as on 7-12-1999, whereas, defendant's application for registration of their Trade Mark 'Image' is pending before the Registrar of Trade Marks since March, 1999 and it was in fact a reaction to the appellant's application that the respondents moved for registration of the mark 'Piano Crystal'. .It was denied that the respondent have ever attempted to copy the shape/ design/getup/or the mark of the respondent or intended to cause any confusion or deception. It was contended that neither is there any phonetical similarity in the two names, nor are the plaintiff the only manufacturer of crystal body ball pens and that such pens are being produced/manufactured by "BIC", "Pilot" and "Uni" or Japan and that there is no possibility of anyone being deceived or confused into buying the ball pen 'Image' for the ball pen 'Piano Crystal' as the word 'Crystal' does not appear anywhere on the appellant's Pen, which only bears its name 'Image', which is printed on the clip of its cap and it is only to describe the transparent body of the pen that the word the 'Crystal' has been printed on its boxes, which boxes are different in colour from the respondents boxes. The two pens, it is claimed, are clearly distinguishable as unlike the respondent ball pen the appellant pen does not contain a coloured ball inside the top of it cap, indicating the colour of the ink in the pen. The other distinguishing features are the nib/cone of the two pens, the appellants being of blue and black colour and the respondents being neutral in colour. In their rejoinder, the respondent submitted that on the basis of long and extensive use of the Trade Mark 'Piano Crystal' without any let or hindrance since, 1989 the said trade mark and the shape of the said ball pen have become distinctive of the goods of the plaintiff, as there was no other similar ball pen in the market bearing the Trade Mark 'Crystal', as such, the plaintiff has acquired the right to use the Trade Mark 'Crystal' and the shape, getup and appearance of the ball pen 'Piano Crystal', whereas, the appellant on its own showing has decided in January, 1999 to adopt the name 'Image' and applied to register it on 2-3-1999. It was submitted that prior to the registration of the Mark 'Crystal' in favour of Biro Swan in 1968, a company known as Jhon Dickenson and Co. Ltd. Also registered the said mark in the same class, however both these registrations were not renewed. It was claimed that deception and confusion is likely to arise Between the plaintiffs and the defendant's products and there is sufficient documentary proof in support of the same. However, no such proof was filed or produced before the Court. We have heard the learned counsel and also perused the record of the case. The respondents have alleged passing-off on the grounds, firstly, that the shape, design and getup of the appellant's pen 'Image' is almost identical with that of their pen 'Piano Crystal' and secondly, that the appellants have printed the word 'Crystal' on the boxes of their pen 'Image'. In an action for passing off the central question has always been as to whether the name or description given by the defendant to his goods is such as to create a likelihood that a substantial section of the purchasing public will be misled into believing that his goods are the goods of the plaintiff and that
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the defendant is selling his goods under the pretence that they are those of the plaintiff. The representation must be such as to cause confusion in the public mind between the defendant's goods and the plaintiffs goods. The impugned mark should be identical with the plaintiffs mark or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade in relation to the goods in respect of which it is used and the impugned mark is being used in such a 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 the goods to which the proprietor is connected in the course of a trade. Keeping in view the above well-established principles laid down by. The Judicial Pronouncements, we would proceed to examine the case in hand. No doubt, there is some similarity in the design of the two ball pens, inasmuch as both are barrel shaped, with round toped caps and both have transparent bodies and caps. However, the ball pen 'Piano Crystal' is clearly distinguishable from the ball pen 'Image' as the former contains a coloured ball inserted inside the top of its cap, indicating the colour of its ink. The other distinguishing feature is that the tip of the ball pen `Piano Crystal' is of yellow/golden colour, whereas, that of `Image' is of the colour of its ink i.e. Blue or black. Moreove, the pen 'Image' does not carry the word 'Crystal' and only its name `Image' is printed thereon, whereas the other pen prominently bears its name `Piano Crystal' on its body. Even otherwise, there is no novelty in the shape or design of 'Piano Crystal' as the barrel shaped pens are the commonest of all the pens. So far as the use of word 'Crystal' is concerned, in the first place, as noted above, the word is admittedly not being impressed upon the appellants' pen, secondly, the same being a descriptive word cannot be allowed to be monopolised by the respondent, more so for the reason that the respondents also are using the word to characterize the transparent bodied, version of their most famous yellow ball point pen `Piano'. This has been stated by the respondents in their brochure (Annexure-C/60 to the plaint), in the following words:- "Piano Crystal Article No.808 Piano Crystal characterizes the qualities of Piano, the most famous yellow ballpoint pen in Pakistan, with two exceptions, it's body is crystal clear and it has a 0.8 mm fine tip." We have also compared the boxes containing `Piano Crystal' and `Image' ballpoint pens and found them to be clearly distinguishable as the former is of back colour. It bears on its top/upper side, images of a peacock feather, a broach like figure, and of the 'Piano Crystal' pen, carrying its name. The words 'Piano Crystal', are also printed on the right side of the top in bold letters. One side of the box bears the name 'Piano' in large letter and the word 'Crystal' in small white letter, and also the name of the respondent company, with the text of their guarantee. The other side bears the same words and -text in Urdu, whereas, the box of the ballpoint pen 'Image' is blue in colour with coil shaped circular line printed all over. The name Image' is printed in bold letters on the left side of its top as well as on its sides under which name, is printed the word 'Crystal' in smaller fonte over a red strip. The lower right side of the top bears the words '10 ballpoint pens'. The top/upper side also bears an image of the ball point pen 'Image', whereas one side of this box bears the name 'Image' and the word 'Crystal': which word is printed on a red strip and the other side, in addition to the name 'Image' and the word 'Crytal' over a red strip, also bears the name of the appellant. It can thus be seen that there is absolutely no element of any confusion or probability of the buyers being deceived into buying the ball pen 'Image' for the ball pen 'Piano Crystal' or as a product of respondents. We have perused the following judgments relied upon by Mr. Khawaja Mansoor. Though we respectfully agree with the judicial principles enunciated/reiterated therein, but as the following review would reveal, the said cases are dearly distinguishable from the instant. In the case of Zakauddin v. Muhammad Zahid and 2 others (PLD 1993 Karachi 766), where the appellant
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was, since 1985, selling shampoo under his registered Trade Mark 'BioAmla' in black colour bottles, with a label, design, layout, colour scheme and getup in a particular style, registered under the Copyright Act. The bottle also bore the appellant's registered house Mark 'Forvil'. However, respondent No.1 who was the real brother of the appellant had started manufacturing, selling and offering for sale his shampoo under the brand name 'Super Amla Shampoo' in an identical bottle. It was found that the respondent had virtually adopted the appellant's labels and that the phonetical difference between the two words 'New Forvil' and 'Farvil' used by the plaintiff and defendant respectively is imperceptible. In the case of The Sanitas Company Limited v. Condy (RPC 4 1987 530). In 1876, a partnership firm, trading as the Sanitas Company, begun to apply to antiseptics and disinfectant; in which they dealt, the word 'Snaitas' and in 1877 they registered, as a trade mark for chemical substance used for sanitary purposes, a device consisting of a fir tree within a garter, on which were inscribed the words 'Sanitas Sanitatis Omina Sanites". In 1878, the Sanitas Company (limited) was formed, for the purpose of taking over, and did in fact took over, the business, patent, and trade mark of the said partnership firm. The said company continued to apply the name 'Sanias' to all articles of its manufactures. In 1883, the company adopted and registered for deodorants, disinfectants, and antiseptics, a ' trade mark, consisting of a device of a eucalyptus tree surmounting the words `Sanitas', On the first of January, 1884, the company registered the word Sanitas' alone as trade mark for its aforesaid product. The plaintiff became aware in 1885 that the defendant was trading under the style of 'The G. Condy's Santitants Co., and was offering for sale George Condy's Liquid Sanitant, the bottle having trade mark of a sun in a slpendour with a circle, on which were the words 'Omnia Condi-Sanitants' printed. In 1886, the plaintiff discovered that the defendant was largely ~ advertising a new disinfectant under the title of 'Condi Sanitas'. In 1886, the company commenced an action against George Condy, trading as The G. Condi Sanitas'. In The company commenced an action against George Condy, trading as The G. Condy's Sanitants Co.' and The Condisanitas Co., and moved for an injunction to restrain the defendant from infringing their registered Trade Mark 'Sanitas', or any other registered trade marks of the plaintiffs and from selling or advertising any disinfectant or antiseptic preparation under the name of 'Sanitas' or 'Sanitant', either alone or in combination with any other words. The defendant's counsel did not call any witnesses, but argued that it was proved by the cross-examination of the plaintiffs witnesses that the defendant's disinfectant was different in colour and composition from that of the plaintiffs goods and were offered for sale in a manner totally different from that in which the plaintiffs' goods were offered for safe, and that no actual deception or probability of deception had been shown. Mr. Justice Kekewide of the Chancery Division, having come to the conclusion that:-- "it is either admitted or proved that the plaintiff company has a trade mark registered in different forms, but substantially 'Sanitas', and that by means of that word, with or without certain additional words and figures, the plaintiff company has established a considerable business; has, in fact, to use the phrase which will be found in many cases, established a vendible article in the market", held that "That being so, the plaintiffs are entitled to have the trade mark protected; and, farther than that, they are entitled to have their business protected to this extent, that if any person has used the words which they employ so as to pass off, or so as to tend to pass off, the goods of that other person as the goods of the plaintiffs, then the plaintiffs are entitled, apart from their trade mark, to insist that should be restrained". The learned Judge whilst referring to a quotation from the case of Lever v. Goodwin, in the following words:--"there may be no monopoly at all in the individual things, but if they are so combined by the defendants as to pass off the defendant's goods as the plaintiff, then the defendants have brought themselves within the old common law doctrine, in respect of which
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equity will give to the aggrieved party an injunction in order to restrain the defendants from passing off their goods as those of the plaintiffs." Further held that "Now in this particular case there is one of the individual things which belongs to the plaintiffs, the word 'Sanitas' and those goods which are advertised as `Sanitas'. That remark does not apply to 'Sanitant', and those goods which are advertised as 'Sanitant', but it does not 'Condi Sanitas'. Therefore, as regards Condi Sanitas. I have a case stronger than that pointed out by the Lord Justice, because, not only have I a combination, but I have in that combination one individual thing which is a monopoly of the plaintiffs'. It was further held that 'it is quite open to the defendant to sell a disinfectant or deodorant, and to manufacture it, and if he can produce precisely the same article he is perfectly at liberty to do that; and he may call it by any name he likes which is his own, but having not only the English language before him. But every language, living or dead, to choose were he pleases, he will take up the Latin word `Sanitas'; and to my mind the very choice is a distinct indication of fraud. He is perfectly aware, and I must take him to be aware, that 'Sanitas' was appropriated by the plaintiffs; and why on earth he should not have taken some Greek, French, Italian or any other word, and called his mixture or compound by that other word, unless he desired to pass his goods off as those of the plaintiffs, it is beyond my ingenuity to conceive." "To my mind whether it is `Condi Sanitas,' or `Sanitanf, it being a compound intended for the same purpose. I must come to the conclusion, and I think any ordinary juryman would come to the conclusion, that he has gone as near as he thought he safely could, with the intention of cutting out the plaintiffs, and cutting them out dishonestly that is passing off his goods as their. That is my distinct conclusion on the evidence: and to say that he has put his name and has not used a yellow label, only goes to show that his impudence was not so great as some fraudulent persons sometimes exhibit. I have not the slightest hesitation in granting to the plaintiffs the injunction which they claim', and, of course, with costs." In the case of Messrs K.S. Sulemanji Esmailji and Sons v. Messrs M. Sulemanji and Company Ltd. (1986 CLC 775), the plaintiff and defendant were in the business of manufacturing and marketing Macaroni, Spagheti and Vermicelli etc. The. Plaintiff was manufacturing and exporting Macaroni. The grievance of the plaintiff was that thdefendant recently started using packets and cartons with marks including getup and colour scheme of the plaintiffs packets or cartons of registered Trade Mark 'Cock-Macaroni' by making alteration in their packet of Mark `Crispo Macaroni' by replacing the earlier device of 'Corn Spike' with the device of 'Cock' on their label and exported large .Quantities in such cartons to Saudi Arabia. It was contended that the adoption of the plaintiffs mark, getup, colour scheme and device or figure of 'Cock' by the defendants is dishonest and intended to cash on the goodwill and reputation of plaintiffs trade mark. The controversy was dealt by a learned Single Judge of this Court in the following words:-- "The question that has got to be answered is whether the printing of 'cock' by defendants on the carton though in different colour and different position, would be tolerable in the situation of the case? The answer was offered by the learned counsel himself when I put to him the following question:- Suppose a housewife in the Gulf State sends some one to the market to buy for her the 'Cock' brand Macaroni. How the servant would address the shopkeeper for the purchase of this stuff?' The answer of the learned counsel was plain and to the point and it was the messenger would say to the shopkeeper give me Cock Macaroni. Once the packet is handed over to the buyer with the figure of 'Cock', it is difficult to visualize that this purchaser would enter into arguments with the shopkeeper that he wants the other brand and not the one which has been handed over to him. Moreover the unwary purchaser or consumer for that matter would usually go by the description of the goods rather than meticulous details of each packet particularly in a situation' when the colour scheme,
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the get up and printing on the sides of the packet are so identical and they are so close in resemblance that a man possessing ordinary intellect would hardly be able to distinguish between the two. The packets are usually stocked in the stores in such a position that only sides of the rectangular box are visible to a customer. When these two sides are compared, one can see the placement of 'Cock' right on the right hand side of the packet in the white background within a circle. The words 'Cock' and 'Crispo' are in red ink and below these words in 'Macaroni' in green ink. This itself shows that at the first glance the customer would point his finger to the box and ask for the stuff without being conscious that he is taking away. One stuff and paying for another. I am deliberately avoiding comparison of the colour scheme, the getup, the size, the print of the words, the three colours employed on the packets, the descriptions of the goods in small letters on the packets of each party. But I cannot avoid examining and commenting upon dominating appearance of 'Cock' in a white circle not only in figurative position but also in description contained in a rectangle with the word 'Cock' appearing in red and 'Macronf in green ink. Now looking to the packet of the defendants we find that the position of the 'Cock' is in the circle in the white background, the word 'Crispo' is in red and `Macronf is in green. These two words are set in a diamond shape .Instead of a rectangle as in the case of the plaintiffs. When placed in juxtaposition the two boxes would look like twins bearing close similarity with each other. Piracy of a design or a trade mark is possible in a number of ways. In some cases it may be by visual representation. In others by employing expression which when pronounced sounds in the same tones. Still in others some sign, symbol or mark may become a pass word and the goods carrying this device may be described by mere mention of such devoice. 'Quaker Oats' carrying figure of a maid on the tin or; a 'Robin' on a packet of blue or camel on a cake of soap, or a white horse on a bottle of whisky, are some of such examples where goods are demanded by the customers by the description of these marks and a customer of an average intelligence when offered the merchandise with the imprint of these marks closely resembling those, hardly investigates other writings or descriptions printed on the packets. Indeed there may be customers who are not even literate and they would only depend on the popular name under which the goods are sold with a causal look on the packings answering those names. In this view of the matter if a customer in Saudi Arabia or in the Gulf no fully familiar with the English language simply asks for 'Cock' brand Macaroni and is handed over the 'Cock' brand of the defendants instead of the 'Cock' brand of the plaintiffs, it is possible hat he would quietly walk off after paying the money little realizing that the 'Cock' ( ) on one packet is different from the othei." The learned Judge referring a judgment reported in 1981 CLC 1519 further held that:-- "In the present case also dissimilarity in the two boxes of `Macaroni is too- insignificant as compared to large number of similarities including colour scheme, size, colour and sizes of the letters of descriptions and the last but not the least the figure and word 'Cock' printed on the packets." In, the case of Muhammad Fazil v. Messrs Ashfaq Brothers, Karachi (1981 CLC 1519) where the plaintiff was manufacturing and marketing 'threads' under the Trade Mark 'Everredy' and numerals '999' with a certain design, layout, getup and colour scheme, registered under No.64794 since 28th October, 1976. The defendants applied for registration of a trade mark comprising 'Everlife' and numerals '990'. The plaintiff filed a suit, opposing registration of the trade mark applied for by the defendant and the trial Court granted interim injunction on the ground that in that case number zero and the word Life in the trade mark label of defendants in the suit are not the only dominant features but also the getup, colour, shade and phrases used in Urdu and Sindhi as well as monogram, which are similar to the Trade Mark of plaintiffs in the suit, providing close resemblance
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between two which makes likely deception and confusion in the mind of unwary purchasers. The learned single Judge of this Court in an appeal filed against the said order held as follows:-- "I have carefully examined and compared the two labels in dispute marked A and B on this file. The size of both is same. Both the box covers to carry 12 spools. Colour scheme is same i.e. Red on top, yellow in the middle, then green and blue at the bottom. Designing, printing and the sizes thereof are almost same. Words and letters are of the same size. 'Everready' and Everlife' are printed in white…
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