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Official Citation: 2015 CLD 528
Court / Jurisdiction: Sindh High Court
Year of Decision: 2014
Decision Date: 2014-09-16
Parties: Messrs SHIELD CORPORATION LTD vs DALDA FOODS (PVT) LTD
This judicial decision was delivered by the Sindh High Court on 2014-09-16. The matter involves proceedings between Messrs SHIELD CORPORATION LTD and DALDA FOODS (PVT) LTD, officially reported as 2015 CLD 528. The court reviewed applicable Pakistani statutes, procedural requirements, and governing case-law authorities. The full text below contains the complete facts, arguments, and legal reasoning rendered by the honorable bench.
Case cited as 2015 CLD 528
Court Name: Sindh High Court Judge(s): Syed Saeeduddin Nasir Title: Messrs SHIELD CORPORATION LTD vs DALDA FOODS (PVT) LTD Case No.: Suit No, 752 of 2014 Date of Judgment:2014-09-16 Reported As: 2015 CLD 528 Result: Application allowed
Judgment ORDER ' SYED SAEEDUDDIN NASIR, J.---This order will dispose of C.M.A. No,6141 of 2014 which is an application under Order XXXIX, Rules 1 and 2, read with section 151, C.P.C. ' The plaintiffs contend that they are one of the leading and well known manufacturers and merchants, importers and Exporter of Personal care products in Pakistan, doing business of Manufacturing and Marketing of tooth brushes, tooth paste, baby feeding accessories, etc... And several other goods for more than 3 decades and enjoy high reputation and goodwill in Pakistan as well as in international market in respect of trademark SHIELD + DEVICE OF SHIELD. ' The learned counsel for the plaintiff Mr. Shahid Qadeer at the very outset of his arguments submitted that the plaintiff is registered owner and proprietor of Hundreds of Trade Marks with the dominant feature SHIELD + DEVICE OF SHIELD for goods being goods included but not limited to classes 03,05,10,21 but several such trademarks are pending registration and are likely to be registered in due course of time and the plaintiff had been using the said Trade marks on the goods mentioned above continuously and extensively since long. That due to substantial sales and tremendous quality of the products, extensive and wide publicity, the said Trade Marks SHIELD + DEVICE OF SHIELD connotes and denotes to the traders and consumers in Pakistan as well as in foreign markets as the products of our Clients exclusively. Learned counsel for the plaintiffs further submitted that the plaintiff is the registered Copyrights holders of these brands, logo's and monograms and also the Artistic work and label designs of the packaging and are free and in full force to use these brands on their products under the protection provided to them by the copyrights Ordinance 1962 by virtue of their registrations of copyrights. That plaintiffs have never given permission/license to any other person(s), Companies, firms, retailers and dealers in any
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manner to use these trademarks, brands, logo's and monograms, color schemes, getup, trade dress on their inferior quality goods/products plaintiff is only entered to enjoy every right of usage of these trademarks/brands under protection provided to them by the Trade Mark and Copy right Laws. It is further submitted by the learned counsel for the plaintiffs that in order to distinguish plaintiffs' products from other similar or identical manufacturers, the plaintiff adopted the trade mark consisting of the word SHIELD AND DEVICE OF SHIELD in respect of various kinds of products. It is stated that the plaintiffs are the original adopter, developer and prior user of trade mark "SHIELD" with device of SHIELD since 1974, as such proprietor, the plaintiff applied for the registration of such trade mark and got the same registered in different classes as stated above. The said registrations are in full force and valid till now. Before registration the said trade marks were duly advertised in the Trade Marks Journal by the Trade Marks Registry for inviting Oppositions by any person or persons. Since no Oppositions were filed by any person, the marks were proceeded to registration. The other pending marks of Trade Marks "SHIELD" are likely to be registered in due course of time. The said trademarks have been continuously and extensively been used throughout Pakistan by the plaintiffs. By virtue of long and extensive use the said trademarks "SHIELD" have acquired sufficient goodwill and reputation in respect of all kinds of Soaps, and is associated with traders, consumers and general public as a product of the plaintiffs exclusively. ' The learned counsel for the plaintiffs next contends that the Trade Mark "SHIELD'with DEVICE OF "SHIELD" stands as a symbol of quality, dependability and reliability of the products upon which it is used and enjoy tremendous reputation and goodwill in favour of the plaintiffs. ' The products bearing the Trade Marks SHIELD have been sold in substantial quantities and since long been known to trade and public. By reasons of such sale and excellent quality of the products the plaintiffs have acquired and enjoyed a considerable and wide reputation and a valuable goodwill in respect of said products sold under the plaintiffs "SHIELD" trademarks. Goods bearing the plaintiffs said trademarks are recognized as the plaintiffs goods by the trade and the persons connected in the course of trade who associate the said trademarks with the plaintiffs and the said trademarks. Serve to distinguish with the plaintiffs goods from the goods of other similar manufacturers. ' The plaintiffs' counsel next contended that trademarks "SHILED" products have been widely advertised throughout Pakistan through various media such as Television, Newspapers, magazines, Hoardings, boarding, Stickers and stand boards, displayed at conspicuous places of various cities and Towns of Pakistan. All of these advertisements have prominently carried or mentioned the plaintiffs trade mark "SHIELD" with device of SHIELD. ' Due to the popularity of the products of the plaintiffs under the Trade Mark "SHIELD" imitations were attracted to make some unlawful gains at the instance of the good name of the plaintiffs and the Trade Mark used by the plaintiffs and the plaintiffs were able to track down such impostors and some of such imitators were reprimanded but it is not possible for plaintiffs to eliminate the imitators totally. ' The learned counsel for the plaintiffs further submitted that due to superior quality of goods, sale promotion and continuous use since 1974 of the Trade Mark SHIELD it has become distinctive of the goods of the plaintiffs and none else. The Trade Mark SHILED with its prominent distinctive features is associated in the minds of trade and purchasing public as a house-mark for high quality products of the plaintiffs. By virtue of these circumstances, extensive user and sales promotion the plaintiffs had acquired a valuable reputation and goodwill in the said business. ' Referring from the pleadings and the documents produced from the record Mr. Shahid Qadeer, the learned counsel for the plaintiffs states that it is unbelievable that the defendants would be unaware of the plaintiffs trade mark SHIELD with the DEVICE OF SHIELD which is being used since 1974 on such a large scale and receiving publicity in different media, it also cannot be a
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coincidence that the defendants have independently hit such a closely resembling mark "HEALTH SHIELD" and it is quite clear that they have copied an exactly ditto mark as of the plaintiffs mark i,e, word SHIELD. Thus the circumstances of this case shows that the defendants were aware of the plaintiffs famous and distinctive mark, when they adopted the Trade Mark HEALTH SHIELD AND DEVICE OF SHIELD which is dishonest and they cannot claim to be its proprietor thereof whereas the defendants have neither filed any Application nor their Trade Mark is Registered in the name of HEALTH SHIELD AND DEVICE OF SHIELD, hence they have no right to use it. ' The plaintiff alleges that defendants have dishonestly copied the plaintiffs said registered and pending marks to come and get ready markets for the said Counterfeit products/services at the costs of our well established goodwill and reputation in said mark with full knowledge that the same is in our continuous use since 1974 and due to very extensive sales and publicity have acquired proprietary rights and great popularity for the same in Pakistan and hence adoption of confusingly similar mark by the defendants is mala fide and dishonest. ' The learned counsel for the plaintiffs further submitted that the main and dominant part of the plaintiffs Trade Marks is SHIELD. The word "SHIELD" is main feature and dominant part of the plaintiffs Trade Marks which is already in use and registered in favour of the plaintiffs since 1974 and have earned goodwill and good reputation in the eyes of public at large. There is likelihood of confusion on account of visual and phonetic between the respective Trademarks. The Trade Mark "HEALTH SHIELD" of defendant's would be likely to deceive or cause confusion in pronouncement and sound by an ordinary main considering level of education of common purchases in Pakistan. The goods of plaintiffs and defendants are the same and are of same description and pass through the same channel and are to be sold through the same shops and the Purchaser by the same class of customers who cannot differentiate the world SHIELD and HEALTH SHIELD. ' The plaintiff further alleges that the adoption of identical or closely similar mark "SHILED" by the defendants is dishonest adoption and mala fide and is an attempt to trade unfairly upon the goodwill and reputation of plaintiffs well known distinctive trade marks SHIELD, in respect of same and/or the same description of goods/services and to deceive the purchasing public into believing that the goods/services emanate from the plaintiffs or from persons having business connection with the plaintiffs. Therefore the defendants mark is disentitled to protection in a court of Justice within the meaning of sections 14(3)(a), 17 and 40 of the Trade Marks Ordinance, 2001. ' The likelihood of deception and confusion as to trade origin or trade connection is more serious because the goods/services of the plaintiffs and those of the defendants are the same and are sold through the same trade channels and used and purchased by the same class of purchasers which include both literate and illiterate persons and as such confusion and deception as to source of origin of goods/services is most likely to occur upon the use of the "SHIELD" trade mark by the defendants on the goods/services of which registration is sought for as the general public is aware that trade mark "SHIELD" with other features of the marks belongs to the plaintiffs, therefore they are likely to take and consider the goods/services of the defendants under "SHIELD" trade mark to be originating from the same source and as such deception and confusion cannot be inevitably avoided. The adoption of the impugned trade mark by the defendants is mala fide and dishonest and they cannot claim to be the Proprietors of impugned trade mark within the meanings of section 14 of the Trade Marks Ordinance, 2001. ' The learned counsel for the plaintiffs further submitted that the defendants are using the trade mark in HEALTH SHIELD DEVICE OF SHIELD in class 29 in their product of DALDA GHEE in the markets of Pakistan. However, it will also not confer any title upon the defendants to obtain registration of said confusingly similar mark in their favour to the detriment of the plaintiffs; the defendants cannot escape from the knowledge of the plaintiffs trademarks SHIELD circulating in the markets of Pakistan since the year 1974. The plaintiffs trademarks are registered, pending and are used since
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1974 and their goods are famous for their quality, if the defendants mark is allowed to be used or registered, their inferior quality goods/services will bring disrepute and thus reputation and goodwill of the plaintiffs would be adversely affected. The plaintiff's Trade Mark SHIELD + DEVICE OF SHIELD is even otherwise protected under section 40(4)(b) which makes dilution of the Trade Mark by use of it in relation to goods or services which are not similar to those for which the Trade Mark is registered infringement. ' The defendant started advertisement in the name and style of HEALTH SHIELD AND DEVICE OF SHIELD in the electronic media just like in TV, Print Media, Internet, Website etc, when the plaintiff saw the advertisement on the T.V., the plaintiff immediately issued a legal notice Dated: 21-3-2014 to the defendant for the unauthorized adoption and passing of Trade Mark SHIELD and DEVICE OF SHIELD which was duly received by the defendant and was replied on 4-4-2014 denying allegation made by the plaintiff in their legal notice. While perusal of page 3 of reply of defendant, one can easily compare that both the Trade Marks of plaintiff and defendant, which are designed and sketched by the defendant on this page are similar and Identical and seems to be the products of the plaintiff, which is sufficient proof of imitation being conducted deliberately by the defendant. ' That furthermore the plaintiff has also got registered Trade Mark in the name of "SHIELD CORPORATION LTD" vide various Applications in almost 1 to 45 Classes with different Trade Marks with "SHIELD" being the dominant feature therein. ' The learned counsel for the plaintiff lastly submitted that the aforesaid illegitimate trade and business activity and infringement of Trade Mark on the part of the defendants have already caused substantial Damage to the goodwill and reputation of the plaintiffs which is irreparable in nature hence, is liable to be restrained under the law. Likewise the aforesaid part of the defendants have already caused substantial loss of business to the plaintiffs and same is likely to cause more loss in future which is liable to be compensated. However, at this juncture the plaintiffs roughly estimates their loss to the tune of Three Hundred Million and said loss and injury is a most likely to multiply many fold times unless defendants is not restrained under the law. Therefore, the plaintiffs to vindicate their position claim Rupees Three Hundred Million as a token of compensation for the said loss of business from the defendants. ' Learned counsel for the plaintiff has referred to paragraph 5 to 10 of the plaint, wherein the plaintiff has given details of pending and registered Trademarks of the plaintiff, which are Annexures E-1 to E-52 to paragraph 5 of the plaint, F-1 to F-41 to paragraph 6 of the plaint, G-1 to G-72 to paragraph 7 of plaint, H-1 to H-33 in paragraph 8 of the plaint, I-1 to 1-14 to paragraph 9 of the plaint, J-1 to J- 63 to paragraph 10 of the plaint in the name of Shield Corporation Limited. The dominant features of which are word SHIELD DEVICE OF SHIELD. It is pertinent to mention here that trademark Shield word label of the plaintiff also registered under class 29 in 1652, in Class 30 in 189653. Learned counsel for the plaintiff further submits that the plaintiff also got registered the trademark Shield Corporation Limited vide various application in almost all the classes i,e, 1-45, copies of Annexures K-1 to K-68 to plaint. In support of his arguments the learned counsel for the plaintiff has placed reliance upon Messrs Dewan Sugar Mills (Pvt.) Ltd. v. M.B. Abbasi and others, 2007 YLR 2672, wherein it is held that "if trademark is registered the same cannot be used by any other person in the face of the provision of section 40(4) read with section 17 of the Trademarks Ordinance." Injunction application was allowed. ' The next case cited by learned counsel for the plaintiff was J.No, Nichols (Vimto) PLCA A Company Incorporated in the United Kingdom v. Mehran Bottlers (Private) Limited Karachi PLD 2000 Karachi 192, wherein this Court has held that trademark registration of prima facie evidence of validity. Registered trademark can be exclusively used by its proprietor till the registration continues. Registration of a trademark is prima facie evidence of validity. Test of infringement of trade mark is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person
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infringing the trademark as the goods of the proprietor of the trademark. The interim injunction was confirmed by the High Court in circumstances. ' The next case relied upon by the learned counsel for the plaintiff was Muhammad Saeed Mughal and 3 others v. Messrs National Aviation Services (Pvt.) Limited through Malik Talat Mehmood, 2001 YLR 2004. In this matter the High Court Balochistan held that "unregistered trade mark of the defendant was "YESGAS" whereas the plaintiff's trade mark was "NESGAS" which was registered since 1978. Appellate Court has upheld the interim injunction in favour of the plaintiff, granted by the trial Court, restraining the defendant from using their mark. The Hon'ble Court also held that the plaintiff had proprietary right to use trademark in their favour by the competent authority and the defendants had no right to challenge the same or to bring any trademark which seem to resemble or was likely and identical to that of plaintiff's trademark, where the plaintiff had made good prima facie case showing that if the defendants were not restrained, the plaintiff would suffer irreparable loss, injury and damage to their goodwill and reputation and business by creating confusion and deception in the minds of the consumers/purchasers. High Court declined to interfere with the injunction order passed by the trial Court. ' The next case relied upon by the learned counsel for the plaintiff was Muhammad Fazil v. Messrs Ashfaq Brothers, Karachi, 1981 CLC 1519. In this case this High Court held "size of both disputed marks as well as their colour, get up, design and print almost same. Words and letters printed thereon having same size and labels very closely similar and liable to cause confusion and deception in the minds of unwary purchaser. Trial Court, held, rightly granted interim injunction, in circumstances. ' Thereafter, learned counsel for the plaintiff relied upon Messrs Chas A. Mendoza v. Syed Tausif Ahmed Zaidi and 2 others, PLD 1993 Karachi 790. In this case court held that "plaintiff's trademark for dental cream was being counter-feited by the defendant by using mark 'Medicare' which did cause confusion and deception in respect of plaintiff's product, therefore interim injunction was granted in this case. ' Turning now to the arguments of the learned counsel for the defendants Mr. Shoib Mansoor has firstly contended that the defendant is the successor of the business carried on formerly by Lever Brothers Pakistan Limited and now Unilever Pakistan Limited (hereinafter referred to as the (Predecessors) with regard to the manufacture and sale of vegetable ghee, cooking oil and banaspati products under the various well-known trademarks such as DALDA, PLANTA and MANPASAND (hereinafter referred to as said products). As such for over seventy years defendant's name is synonymous with quality. Defendant's Brands are vegetable ghee, cooking oil and banaspati products in Pakistan which are, trans-fat free and meet the most stringent of international quality standards and the said products preserve the natural goodness of vegetable oils and are enriched with extra vitamins. The defendant continues to remain committed to quality, care for environment and social responsibility is evident from the fact that it is the only edible oil and fats/ghee company in Pakistan which has the following four ISO certifications:-- ' ISO 9001-2008 for Quality Management System ' ISO 22000-2005 for food Safety Management System ' ISO 14001-2004 for Environment Management System ' OHSAS 18001-2007 for Occupational Health and Safety Management System ' The learned counsel for the defendant next contended that the defendant is one of the few companies in Pakistan which has a sales and distribution network covering the length and breadth of the whole country. The defendant maintains 11 distribution centres and a network of over 400 distributors all over Pakistan. ' That the general public is aware of the goodwill and the well established reputation of the defendant and its related products and the defendants has become a nationwide household
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brand and in order to maintain its reputation the defendant continues to strive to introduce better technology for processing and refining its products in order to make them fit for human consumption. ' The learned counsel for the defendant next contended that this suit has been filed in order to mislead this honourable Court and to create a false impression that the defendant has malafidely used the trade mark HEALTH SHIELD DEVICE whereas in fact the defendant's mark is different from that of the plaintiff and is being used by the defendant to indicate the health benefits that the product of the defendant contains. That the present suit has been filed with mala fide intention in order to deprive the defendant from reaping the benefits of its widely acclaimed. DALDA HEALTH SHIELD Campaign and to unlawfully hinder the defendant from carrying on with its rightful and regular activities in relation to the said Campaign and in fact the defendant reserves the right to initiate legal proceedings and/or make counter-claims against the plaintiff under the law and specifically under section 52 of the Trade Marks Ordinance, 2001 inter alia for groundless threats of infringement in the circumstances that the plaintiff has illegally and fraudulently obtained registration of the SHIELD word and device in class 29 when it had no intention of making any bona fide use of the said trade mark. ' The learned counsel for the defendant explicitly denied that the defendant is infringing the mark of the plaintiff and/or is using the mark of the plaintiff to pass off its goods as that of the plaintiff. In this regard, it is humbly submitted that the defendant itself is a well-known and reputed company and does not need to ride on the alleged reputation of the plaintiff in order to sell its goods as that of the plaintiff and/or establish any form of association with the plaintiff. The alleged reputation and good will of the plaintiff is not relevant to this case. It is specifically denied that the plaintiff has been in use of its mark on the goods in all classes of the Classification of Goods and Services produced in the Trade Marks Rules, 2004 and that the plaintiff has made such claims only to mislead this Hon'ble Court into believing that the plaintiff is involved in all kinds of business and that its products fall within all the classes of goods and services provided in the Trade Marks Rules, 2004 including the business of edible oil. It is submitted that plaintiff has no nexus to the business of edible oil and as provided by the plaintiff itself in paragraph 4 of the affidavit that the plaintiff's business is in relation to "personal care products", plaintiff's claim that it has been in use of the marks for the goods in all classes is misleading. The learned counsel further submitted that it is the principle of trademarks law that the trademarks should be compared in the entirety and when so compared the defendant's SHIELD mark and device is different to that of the plaintiff's alleged shield mark. Further it is submitted by the learned counsel for the defendant that the Defendant's shield device is stylised not only from the bottom but from the top as well as from the sides and as such stylisation is unique to the defendant. Additionally, at present the defendant is using the shield device that contains that words vitamins A&D etc., along with the other distinctive or non- distinctive words such as 'health', 'SHIELD' and as such the shield device is used in conjunction/combination with the defendant's registered trade mark `DALDA' only to indicate that the products of the defendant have health benefits and therefore such use by the defendant is not in any way dishonest. Moreover, it is submitted that the defendant has filed the attached applications and any claims made by the plaintiff with regard to the non-filing of the applications by the defendant is vehemently denied, it is candidly admitted by the learned counsel for the defendant that the said applications for the registration of trade mark HEALTH SHIELD DEVICE (in series) in class 29 are filed and DALDA SUN FLOWER OIL with shield device labelled in series in Class 29 on 8th April, 2014 i,e, after being served with the legal notice of the plaintiff dated 21-3-2014. The use of the shield and/or device thereof has been in existence for centuries and so the plaintiff cannot alleged to claim to be the creator of shield and/or the device of shield and/or allege that the defendant has copied shield and/or the device of shield of the plaintiff.
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' The learned counsel for the defendants admitted that "defendants are using the trade mark HEALTH SHIELD in class 29 in their product DALDA GHEE in the markets of Pakistan" since January, 2014. However (i) the defendant's mark is different to the plaintiff's mark; the business of the plaintiff is different to that of the defendant; defendant seeks to register its mark HEALTH SHIELD in class 29 only and that too for edible oil which is distinct to the defendant and has no nexus with the business of the plaintiff and (iv) there are other traders in the market that are…
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