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Petitioner: MUHAMMAD SALEEM WARIND VS Respondent: MAZIIAR and 2 others
Court Name: Sindh High Court Judge(s): Syed Saeeduddin Nasir Title: MUHAMMAD SALEEM WARIND vs MAZIIAR and 2 others Case No.: Suit No. 851 of 2014 Date of Judgment:2014-07-21 Reported As: 2015 CLD 655 Result: Application allowed
Judgment ORDER ' SYED SAEED-UD-DIN NASIR, J.---By this order I intend to dispose of C.M.A. 7020 of 2014, which is an application under Order XXXIX, Rules 1 and 2, read with section 151, C.P.C., wherein the plaintiff has sought restraining order against the defendants, their salesmen, dealers, agents, distributors, wholesalers, retailers and stockiest from selling or offering for sale, oil and fuel filters and brake oil under identical trade mark/copy right "SAKURA" and from infringing the plaintiff's registered Trade Mark "SAKURA" or by using of any deceptive and confusingly similar Trade Mark or otherwise from passing off or enabling others to pass off their goods/products under the said Trade Mark without clearly distinguishing their products/goods from those of the plaintiff by use of trade Mark "SAKURA" or by use of any Trade Mark or colorable imitation which closely resembles the plaintiff's Trade Mark "SAKURA" and "SAKURA" plus flower device (label), during the pendency of the suit. ' Mr. Munawar Ali, learned counsel appearing for the plaintiff has argued that:-- ' The plaintiff is proprietor of Asia Motor Co. Having its Business at G-32 Ruby Plaza, Preedy Street, Saddar, Karachi and operates through its affiliates and stockists all over Pakistan. The plaintiff does business with the name "Asia Motor Co." and the plaintiff is registered Taxpayer. ' Plaintiff is the proprietor in Pakistan and kingdom of Thailand of Registered Trade Mark/Copy Right by the brand name of "SAKURA" under various numbers in Class 7 in respect of goods like Air Filter, Oil Filter, Fuel Filter and Radiator for cooling the engine and all these goods as referred to the Motor Parts Labeled with the Trade Mark of "SAKURA" being the proprietor of the same. ' That the defendants are persons doing business in auto market and they are not only close relatives of each other but also doing business in a connected manner and all three defendants
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have joined hands and violating the registered Trade Mark Rights of the plaintiff in respect of trademark "SAKURA" Device of a flower (label). ' Mr. Munawwar Ali Advocate, learned counsel for the plaintiff further submitted that in order to promote sale of oil, air and fuel filters, silicon and gaskets and to distinguish the same from the products of others, the plaintiff adopted and got approved from the concerned authority copy right and trademark consisting of word "SAKURA" and "SAKURA" label of flower in special calligraphy in the year 1989 and obtained registered Trade Mark, "SAKURA" in Pakistan under Trade Mark No.116186 in 1992 in respect of, "Oil, air and fuel filters and radiators for codling engine being class 7, and "SAKURA" label device of flower under Trade Mark No.1223294 in 1993 in Class 7 under the then Trade Marks Act, 1940. ' Before applying for registration of Trade Mark/Copy Right "SAKURA" in Pakistan, the plaintiff carried out thorough search in the local market to find out whether goods under the Trade Mark "SAKURA" were available in the market and also the plaintiff carried out search in the records of Trade Marks Registry and finding that no identical or similar Trade Mark is available in local market nor registered in the name of any person available in market with the Trade Marks Registry, the plaintiff applied for the registration of the said Trade 'Mark "SAKURA" and' "SAKURA" label device of flower in class seven as aforesaid. 'The learned counsel for the plaintiff further submits that as proprietor of Trade Mark "SAKURA" the plaintiff acquired a substantial amount of goodwill under the said Trade Mark "SAKURA" and its products under the plaintiffs "SAKURA" Trade Mark have been sold in substantial Quantity and have been widely advertised throughout Pakistan by means of posters, pamphlets, sign boards, personal canvassing and advertisement. By virtue of that long and extensive use of the Trade Mark "SAKURA" throughout Pakistan, the plaintiff and its affiliates acquired and enjoyed very valuable reputation and goodwill all over Pakistan in respect of Trade, Mark, "SAKURA". Registration of plaintiff Trade Mark "SAKURA" and "SAKURA" label device of flower under Trade Mark No.116186 (1992) in Clash 7 and Trade Mark No. 122294 (1993) in Class 7 are valid and subsisting and have been renewed for further period of fifteen years. ' The said Trade Mark "SAKURA" in Pakistan is associated exclusively with plaintiff or its affiliates by the general purchasing public and the trade/Traders who recognize and distinguish the said goods by the said Trade Mark "SAKURA" of the plaintiff. The Trade Mark "SAKURA" has gained wide publicity and its filters are known for their quality and standard and people approach retailers for purchasing the filters of "SAKURA" brand, reposing trust and confidence in their quality. ' The goods bearing the Trade Mark "SAKURA" and "SAKURA" label device of flower of the plaintiff have at all-time been and continue' to remain available in the market all over the country for sale to the general public, stockiest, dealers and traders. The products of the plaintiff under the Trade Mark "SAKURA" and "SAKURA" label device of flower are stored and displayed for sale by stockist and displayed for sale by stockist and retailers of auto spare parts all the markets of Pakistan and the general public recognize the goods of the plaintiff with reference to this popular Trade Mark "SAKURA". ' The products of the plaintiff labeled under the Trade Mark, "SAKURA" are marketed throughout the country in a distinctive packing comprising carton or packing of distinctive get-up, colour scheme, letterings and designs. ' The products of the plaintiff under the Trade Mark "SAKURA" have been sold in substantial quantity and have been widely advertised throughout Pakistan. By virtue of superior quality of products and long and extensive use of the Trade Mark, "SAKURA" and SAKURA" label device of flower throughout Pakistan, the plaintiff has earned and enjoys valuable reputation and goodwill all over Pakistan in respect of the said Trade Marks. Such reputation and goodwill is at all relevant times subsisted in
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Pakistan and the goods of the plaintiff under the said trademarks remained always available for sale to the general public, including traders, dealers in auto spare parts. ' Due to long extensive use of Trade Mark "SAKURA" and "SAKURA" flower device in the respect of oil, air and fuel filters and brake oil and also due to superior quality of products the plaintiff has acquired valuable reputation and goodwill in respect thereof. By virtue of superior quality of product and distinctive features of the Trade Mark, the goods under the Trade Mark "SAKURA" denotes and connect the goods of the plaintiff exclusively and none else. ' Not only in Pakistan but the "SAKURA" filter is also registered as brand of plaintiff in other Countries such as Thailand and Korea. Mr. Munawar Ali learned counsel for the plaintiff further submits that on 4-1-2014 the plaintiff discovered that the defendants have commenced marketing and selling oil, air and fuel filters and brake oil etc. Under identical Trade Mark "SAKURA" with mala fide intention to ride upon the reputation and goodwill of the plaintiff in order to make wrongful gains by deceiving and misleading the general public into believing that the goods of the defendants are the goods of the plaintiff or the goods of the defendants emanate from the plaintiff or to convey an impression to the traders, dealers, retailers, customers that the defendants have some business affiliation and/or the goods have been produced and manufactured in accordance with the prescribed standards and specifications and under supervision of the plaintiff. The defendants have intentionally and malafidely adopted identical Trade Mark to create confusion and deception in the course of Trade. The defendants have thus committed infringement of Trade Mark of the plaintiff. The plaintiff purchased some products of Air filter from the defendant No.1 through his representative and the fact was confirmed to the plaintiff that the defendants were using the trade mark "SAKURA" which is registered in the plaintiff's name and thus not only, misleading the general public but also causing huge financial loss to the plaintiff due to the violation of the trade mark rights of the plaintiff. A packing of the Air filter purchased by the plaintiff through his representative from the defendant No.1 's shop along with challan/Bill/receipt dated 21-3-2014 issued by the defendant No.1 are annexed to the plaint as Annexures F to F/1 appearing at Pages 81 and 83 of the suit file. ' The packing of the Air filter purchased from defendants shop clearly demonstrates that the calligraphy, design, wording/ inscription/letterings, colour scheme, distinctive getup of the said packing is same as of the plaintiff's registered trade mark, thus the defendants, though well aware of the factum of plaintiff being owner of registered trade mark, "SAKURA", are continuously violating the trade mark rights of the plaintiff for which defendant are liable to account and stop sale of products of plaintiff's Trade Mark. ' The defendants have also fixed sign boards on their shops showing the "SAKURA" brand name and offering the potential customers the products of "SAKURA" filters. Plaintiff has also taken photographs showing that the goods of "SAKURA" brand are lying in the shops of the defendants meant for sale to general public. ' The learned counsel for the plaintiff further submits that the plaintiff personally approached the defendants and request them to stop the illegal sale of "SAKURA" Air filters the defendants at first assured the plaintiff that they would no more violate the trade mark rights of the plaintiff, however, subsequently they refused to honor their commitment and continue to violate the registered trade mark right of the plaintiff. ' In order to substantiate his arguments, the learned counsel for the plaintiff has relied upon section 40(1) of the Trade Marks Ordinance, 2001, which is reproduced as under:- "Section 40 Infringement of registered trade mark (1) "A person shall infringe a registered trade mark if such person uses in the course of trade a mark, which identical with the trade mark in relation to goods and services which are identical with those for which it is registered."
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' The learned counsel for the plaintiff further submits that the trademark of the plaintiff consisting of word "SAKURA" and "SAKURA" + device of flower (label) are registered under Trade Mark registration No.116186 and 122894 in Class 7 under the then Trade Marks Act, 1940 and that since July 1992 and October 1993 respectively, and that the said two trademark registrations are still valid and subsisting the name of the plaintiff till today and renewed for a further period of 15 years. The plaintiff is .The sole proprietor of the aforesaid two trademarks in Pakistan to the exclusion of anyone including the defendants. The learned counsel for the plaintiff submits that in order to give legal cover to their act of infringement the defendant's principal PT SALAMAT SAMPURNA tbk Indonesia have applied on 14-4-2014 for registration of trademark "SAKURA" + Flower device (label) in Class 7 in Pakistan in respect of the goods identical with those of the plaintiff. ' The learned counsel for the plaintiff submitted that PT SELAMAT SEMPURA tbk, Indonesia, of which the defendants claim to be dealers and distributors had applied for the registration of trade mark "SAKURA" under No.144461 in Class-7 in Pakistan on 20-10-1997 in respect of Air Oil and fuel filters, which was published in the Trade Marks Journal, (No.588) January 1, 2000 for inviting opposition, if any, and upon plaintiff's filing opposition to the same, the said "PTSELAMAT SEMPURA Tbk Indonesia, abandoned the aforesaid application and did not contest the opposition. ' The learned counsel for the plaintiff further argued that no opposition was filed either by the defendants or PT SELAMAT SEMPURA Tbk, Indonesia of which the defendants claim to be sole dealers, to the registration of the aforesaid trademarks of the plaintiff when the same were published in the Trade Marks Journal and no opposition having been received on the advertisement as aforesaid, the Trade Marks Registry, IPO Govt. Of Pakistan registered the marks in class 7 and issued the certificates of registration to the plaintiff. The learned counsel for the plaintiff submitted that now in order to give legal cover to their acts of infringement and passing off the defendants have convinced PT SELAMAT SEMPURA Tbk Indonesia to file yet other trademark applications in Pakistan for registration of trademark "SAKURA" Device (Label) in classes of 7 and 12, which appear at Annexures D/B and D-14 to the counter affidavit filed by the defendants. The learned counsel for the plaintiff further submits that on 23rd May, 2014, the said PT SELAMAT SEMPURA Tbk, has applied for the Rectification of Trade Marks SAKURA No. 163352 in class 12, SAKURA No. 122294 in Class 7 on Form TM-26 at the Trade Marks Registry, belonging to the plaintiff. ' The learned counsel for the plaintiff has relied upon the following judgments to substantiate his case for the grant and confirmation of temporary injunction, the relevant portions of which are reproduced as under:-- ' 2004 CLD 315 (Naseem Ahmed v. Samuddin Remzan Khan and 2 others) (a) Trade Marks Act (V of 1940)---Registration of trade mark---Right conferred by registration---Scope and extent-- principles---Application for registration, in the present case, was apparently examined by the Trade Mark Registry to ensure that the same meet the requirements of registration and that its registration was not prohibited under Ss. 8 and 10, Trade Marks Act, 1940--- ---User on the said registration, acquired the exclusive right to use the registered trade mark in Class 16 in relation to the goods specified, thereby prohibiting and restraining every and all persons from using registered trade mark S.21 Trade Marks Act, 1940 further declared that the said right shall be deemed to be infringed by any other person who, without the authority of the registered user, used any mark identical with it or so resembling it which was likely to deceive or cause confusion in the course of trade in relation to the goods in respect of which registered user's trade mark was registered--- ---Registration certificate of the trade mark; was a prima facie evidence, in all legal proceedings relating to the relevant trade mark, to the effect that the registration was valid and after the expiration of the seven years from the date of registration shall be taken to be valid and conclusive in all respects unless such registration was obtained by fraud or the trade mark
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offended against the provision of S.8, Trade Marks Act, 1940---Held, after the registration of the trade mark of the applicant, by virtue of the Registration certificate and its renewal the registration of the trade mark became valid and conclusive in all respects unless it was proved to have been obtained by fraud or offended against S.8.... ' 1986 MLD 886 Ghulam Muhammad Dossal & Co. v. Vulcan Company Ltd. And another ----Civil Procedure Code, 0. XXXIX, Rr. 1, 2, 5.151---Infringement of registered trade mark---Grant of injunction against the person infringing said trade mark---Registered user of said trade nark had the right to obtain an injunction against the person who infringed his registered trade mark in the manner prescribed, merely, on production of the Registration Certificate under S. 75, Trade Marks, Act, 1940--- ---Civil Procedure Code, 0. XXXIX, Rr. 1 & 2---Registration of trade mark---Saving of vested right of registered, user---Grant of interim injunction to the registered user---Case put up by the objector to the registration of trade mark was that the trade mark in question did not originally belong to the registered user as the same as first used by a Foreign concern who got the same registered in its name in Taiwan in 1976 and in 1977 and that the registered user in Pakistan had been importing the goods bearing the said trade mark from the said concern of foreign country which the latter produced under its own, registration and that the registered user obtained the registration of the said trade mark in his name in Pakistan fraudulently---Validity--Registered user in the present case, admittedly, was the proprietor or trade mark in Pakistan Class 6 and in view of registration of the trade mark in his name and its renewal after seven years, was entitled to the protection provided to him under the Act as long as his mark remained on the Register with the exception that any other person, who, might have been using the mark prior to the registration of the mark in favour of the registered user, had the right to continue to do so---If the objector was aggrieved by the registration of the mark in favour of the registered user he could have filed an application for rectification of the Register as provided in S.46, Trade Marks Act, 1940--- ---Objector had not produced any single documents to show that goods bearing the trade mark consisting the registered word printed on a circular loop had been imported by him or anyone else in Pakistan prior to its registration in favour of the registered user---Neither the trade mark registered in Pakistan was an internationally well-known mark, nor the objector had produced any evidence to show that goods bearing the trade mark imported by him enjoyed worldwide reputation and were recognized by the general public to be the product of the manufacturing concern abroad except two registrations in China in 1976 and in USA 1-977---Export of the goods by the said foreign manufacturer to other countries of the world did not confer any right on the objector to import the goods which infringed the registered trade mark in Pakistan---Registered user, in circumstances, would continues to enjoy the right to use the registered trade mark exclusively until the renewal expiry subject to further renewal for another 15 years thereafter unless the mark was cancelled or varied under S.46 of the Act. ' The learned counsel for the plaintiff submits that the defendant's principal Messrs PT SALAMAT SAMPURNA tbk Indonesia has filed trade mark application on 14th April, 2014. Messrs PT Salamat filed an earlier application on 20-10-1997 in Pakistan, but when published was opposed by the plaintiff and was abandoned by PT Salamat SAMPURNA tbk Indonesia and thereafter no further steps were taken by them to secure registration of Trade Mark "SAKURA" + flower device (label) in Pakistan, however, the plaintiff on the other hand enjoyed all along the exclusive proprietorship of the said mark in Pakistan along with its user. The registrations in favour of the plaintiff are still valid and subsisting and renewed for a further period of 15 years. ' The next case-law cited by the learned counsel for the plaintiff is 2003 CLD 26 (Karachi) M. Sikandar Sultan v. Masih Ahmed Shaikh. O.XXXIX. Rr. 1 & 2---Suit against infringement of registered trade mark---Temporary injunction, grant of---Held, in deciding question of prima fade case, it
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had to be shown that plaintiff's case was primarily based on infringement of registered trade mark. ----Ss. 10 & 21---Infringement of registered trade mark Registration of a person in register of proprietor of a trade mark in respect of any goods would give to that person exclusive right to use that trade mark in relation to those goods---Such right would be deemed to be infringed when other person would use a mark identical to registered trade mark or nearly resembling said registered trade mark so as to deceive or cause confusion in course of trade in relation to any goods in respect of which trade mark was registered. ----Ss. 10, 21 .& 73---Infringement of registered trade mark---Suit for---Consideration which had to be kept in mind with regard to infringement of registered trade mark was whether a member of public buying products of defendant was likely to be deceived into believing that he was buying goods of plaintiff (p/33). ----Ss. 7, 10, 21 & 73---Infringement of registered trade mark---Suit for---Colourable imitation Trade Mark "AALI SHAN" was a colorable imitation of plaintiff's registered Trade Mark "SHAN"---Get up, design and colour scheme of both trade marks were identical which could cause confusion in market to the consumer in general and amounting to a. Flagrant infringement of plaintiff's registered trade ,nark---Such colourable limitation of plaintiff's registered trade mark, would constitute its infringement. ----Very strong prima facie case having been made out by plaintiff, defendant could not say that he ought to be allowed to continue to take advantage of his own wrong---Pendency of defendant's application, for registration of his trade mark with Registrar of Trade Marks, would not disentitle plaintiff who was proprietor of a registered trade mark, to obtain injunction restraining infringement of his registered trade mark merely because person against whom injunction was sought had applied for registration of his trade mark---Interim injunction earlier granted, was confirmed. ' In this case also injunction was confirmed on the basis of registered trade mark of plaintiff. ' Next case is 2000 YLR 1376 (Karachi) The Wellcome Foundation Limited v. Karachi Chemical Industries (Private) Limited ----Ss. 21 & 73---Civil Procedure Code (V of 1908), 0.XXXIX, Rr.1 & 2---Trade mark, infringement of and passing off---Interim injunction, grant of---Exclusive right of user registered trade mark-- Exceptions---Scope---Registration of a trademark had given for the person an exclusive right to use the mark and such right was to be deemed to be infringed by any person who, not being the proprietor of that trade mark or registered user thereof, used a mark identical with the same or so nearly resembling it as it was likely to deceive or cause confusion in the course of trade in relation to any goods in respect of which such mark was registered---Provision of S. 21, Trade Marks Act, 1940 pointed out two exceptions against the exclusive right of user---One exception was in favour of the proprietor of that trade mark which the other in respect of a registered user using such mark by way of permitted use---Defendant had failed to set any such case--- ---Under section 21 of the Trade Marks Act, 1940 the registration of person in the register of proprietor of a trade mark in respect of any goods shall give to the person the exclusive rights to the use of the trade mark in relation to those goods and that right 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 resembles it as to likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered. ' I have already indicated hereinabove that while the plaintiff's trade mark is registered, the trade mark of the defendants is not registered. This registration given to the plaintiffs exclusive right to
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use the trade mark and that right is to be deemed to be infringed by any person who not being the proprietor of the trade mark or registered fuser thereof 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 view of the above, prima facie, the defendants seem to be guilty both of infringement of the trade mark and passing off. The consensus of the authorities appears to in favour of restraining the defendants from using the trade mark which is deceptively similar to the plaintiff's trade mark once the plaintiffs have made out a prima facie case in their favour. I have already held above that the plaintiffs have made out a prima facie case in their favour. The plaintiffs are, therefore, entitled to the interim injunction prayed for. ' There is yet another case cited by the learned counsel for the plaintiff in which the Court confirmed temporary injunction recognizing the exclusive right of user by the proprietor of the registered trade mark. ' The next case-law cited by the learned counsel for the plaintiff in which also injunction was confirmed on the basis of registered trade mark is 2010 CLD 890 (Karachi) Messrs Exide Pakistan Limited v. Pakistan Accumulators (Pvt.) Limited and 2 others. ---Ss. 5(2), 39(2), 40(1), 46 & 53---Infringement of registered trade mark---Suit for permanent…
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