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Petitioner: INDEPENDENT MEDIA CORPORATION (PRIVATE) LIMITED through Authorized Signatory VS Respondent: SHOAIB AHMED SHEIKH and 9 others
Court Name: Sindh High Court Judge(s): Munib Akhtar Title:INDEPENDENT MEDIA CORPORATION (PRIVATE) LIMITED through Authorized
Signatory vs SHOAIB AHMED SHEIKH and 9 others Case No.: Suit Nos.1461 and 1584 of 2013 Date of Judgment:2015-01-19 Reported As: 2015 CLD 1448 Result: Order accordingly. Judgment ORDER ' MUNIB AKHTAR, J.---As will shortly emerge, these two suits are counter suits in which the principal contesting parties are Independent Media Corporation (Pvt.) Ltd. ("IMC") and Axact (Pvt.) Ltd. ("Axact"). In Suit 1461 of 2013 IMC is the plaintiff and Axact is the defendant No. 8. In Suit 1584 of 2013, Axact is the plaintiff and IMC is the defendant No. 3. In the latter suit the Director General of the Intellectual Property Organization of Pakistan ("IPO", a statutory body created by and under Act XXII of 2012) and the Registrar of Trade Marks (who of course is appointed and acts under the Trade Marks Ordinance, 2001) are the defendants Nos. 1 and 2. In each suit the plaintiff has filed an application for interim injunctive relief, being, respectively, C.M.A. 12775 of 2013 and C.M.A. 13905 of 2013. Since the issues raised are at least overlapping (if not common) the two applications were heard together. 2. IMC and Axact represent two large business houses, the former being part of the well known Jang/Geo group while the latter (on its own showing) is engaged in the information technology (IT) business and now intends to move into the multi-media world of broadcast by way of television, print and digital media and entertainment. As presently relevant, the tussle between the two is over the use of the word "Bol" as a registered trademark in classes 38 and 41, although Axact seeks also to have it registered in respect of several other classes. IMC would use the word on a standalone basis (as transliterated into English) whereas Axact seeks to use it in like manner and also in association with other words. Classes 38 and 41 relate to services, the former encompassing telecommunication services while the latter relates to "education, providing of training, entertainment, sporting and cultural activities". IMC claims to be the proprietor of "Bol" as a
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registered trademark in class 41. Its case is that it was entered on the Register of Trade Marks as the proprietor of the mark on or about 7-11-2013 on its application No. 238904, which was filed on 11-6- 2007. It claims to have another application No. 195773 pending for registration of "Bol" as a trademark in class 38. That application appears to have been filed on or about 15-5-2004. There is apparently another application, 342080, that IMC has pending for registration of "Bol" in class 38, though this application was filed many years later (on or about 19-6-2013). Be that as it may, IMC's grievance is that Axact intends to use and/or has started using "Bol" in a manner that infringes its registered trademark (in terms of the aforementioned -application No. 238904). Suit 1461 of 2013 is therefore essentially a straightforward suit for trademark infringement. C.M.A. 12775 of 2013 has been filed therein to restrain Axact from infringing the aforesaid trademark. The suit was filed on 19- 11-2013 and the said application came up before me on the same day, when I made an ad interim order. That order continues to remain in the field. 3. Axact strongly contests IMC's claim. Its case is that it is entitled to have "Bol" registered as a trademark in terms as stated above, for which it has as many as 156 applications pending in various classes. These applications were made on various dates from March to November 2013. As already noted the present dispute enters on classes 38 and 41 and, more specifically, on the latter since it is only in respect of that class that IMC claims to have "Bol" as its registered trademark. Axact's case is that there is in fact no such registration and that IMC has forged, fabricated and manipulated the official record to claim a right which it does not have and to which it is not entitled. More precisely, its case is that application No. 238904 on the basis of which IMC claims its registered trademark was not made in relation to "Bol" at all but rather in respect of an altogether different mark. However, subsequently the record was manipulated and fabricated to show that IMC had a registered trademark. By its Suit 1584 of 2013 Axact seeks declaratory relief to the effect, inter alia, that IMC has no right or entitlement to the registration of "Bol" as its trademark and that it is Axact that is so entitled on the basis of its pending applications. Axact filed its suit on 13-12-2013 and moved two miscellaneous applications. One is C.M.A. 13905 of 2013, which now falls for determination. By this application, Axact seeks interim injunctive relief to restrain IMC from claiming to be the "owner/proprietor/applicant" for registration of "Bol" and for it to be restrained from pursuing the three applications mentioned above, i.e., application Nos. 238904, 195773 and 342080. The second application filed by Axact was C.M.A. 13904 of 2013. By this application Axact sought an order that the Nazir of the Court take the entire record in relation to application Nos. 238904 and 195773 in his custody. The said application was allowed by a learned single Judge on 13-12-2013. The Nazir now has custody of the aforesaid record, although a copy of the same was placed before me in the file of Suit 1461 of 2013 and copious reference made thereto by learned counsel for Axact and (by way of response) by learned counsel for IMC. 4. Before proceeding further two points may be made. Firstly, I understand that IMC's application No. 195773 was advertised in the Trade Marks Journal ("Journal") and Axact has filed an opposition to the same. Consideration of that opposition by the Registrar is pending. Application No. 342080 appears to be still at the stage of examination at the Trade Marks Registry, and if it is eventually advertised in the Journal, Axact will presumably file an opposition to it as well. Since these two applications will be dealt with under the provisions of the Trade Marks Ordinance, 2001 ("2001 Ordinance") relating to acceptance/opposition and registration, it is not necessary for me to deal with them here. Accordingly, I will focus only on application No. 238904, which according to IMC has resulted in a registered trademark, a claim strongly contested by Axact. Secondly, at the conclusion of the hearing, I had permitted learned counsel to file written synopses, which were filed by both sides along with case-law relied upon. The submissions of learned counsel noted below are therefore an amalgam of what was said at the hearing and points taken in the synopses.
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5. Learned counsel for IMC submitted that it had filed application No.238904 on 11-6-2007. Thereafter, the matter could not or did not proceed for one reason or another, but eventually, the application was advertised in the July, 2013 issue (No. 750) of the Journal, which was published on 26-8-2013. As advertised, the application was for registration of "Bol" as IMC's trademark in class 41. The two month period within which notice of opposition had to be filed (or extension in time sought for filing such opposition), as stipulated by section 28(2) of the 2001 Ordinance, expired on 26-10- 2013. No opposition was filed nor extension sought, whether by Axact or anyone else. Thereafter, on or about 7-11-2013 IMC was entered in the Register of Trade Marks (more precisely the computerized record that constitutes said Registrar) and a certificate in this regard issued to IMC in the prescribed manner on or about 13-11-2013. Learned counsel submitted that IMC was clearly the proprietor of the registered trademark. Axact and its associated companies (of whom two, being defendants Nos. 5 and 6 in Suit 1461 of 2013, are named BOL News (Pvt.) Ltd. And BOL Enterprises (Pvt.) Ltd.) were acting in flagrant breach of IMC's trademark rights. Learned counsel relied on sections 39 and 40 of the 2001 Ordinance in this regard. Learned counsel submitted that the activities (actual and proposed) of Axact and/or its associated companies were of the same description as IMC, being in respect of the same class of service, and thus clearly in infringement of the latter's trademark. A case for interim relief was fully made out. Along with the written synopsis learned counsel also filed a number of decisions that he relied upon, which applied to various aspects of trademark infringement. As noted above, Suit 1461 of 2013 is essentially a straightforward case of trademark infringement and learned counsel tailored his submissions accordingly, presenting his primary case with commendable brevity. 6. Learned counsel for Axact strongly contested the claim that "Bol" was IMC's registered trademark. As noted above, the DG, IPO and the Registrar of Trade Marks are defendants in Suit 1584 of 2013 (herein after referred to as the "official defendants"). These defendants filed their written statement in the suit on or about 7-2-2014 ("Written Statement"). Learned counsel referred to para 18 of the Written Statement, which is as follows (emphasis supplied): 18. That the contents of Para 18 of the [plaint] are admitted to the extent that application Nos. 195773 and 238904 were advertised in the Trade Marks Journal. Furthermore application No. 342080 is pending for registration. It is worth pointing out that for the above mentioned applications the [Defendant] No. 2 has not issued a certificate duly signed and stamped by the competent authority." ' Learned counsel relied in particular on the part emphasized as also a letter earlier issued to Axact (by the Assistant Registrar of Trade Marks on 6-12-2013 and specifically mentioned in the Written Statement) to the same effect (i.e., that no certificate had been issued to IMC) to contend that this clearly established that the certificate of registration of "Bol" as IMC's trademark was a fabricated and manipulated document. IMC had deliberately misled the Court and obtained an ad interim order on false pretences. Learned counsel submitted that since issuance of a certificate of registration was a ministerial act to be performed in the prescribed manner under section 33(4) once a trademark had been registered, and no such certificate had ever been issued, this meant that in fact there was no registration at all of "Bol" as IMC's trademark. Thus the entire basis on which IMC had made its claim was effectively demolished by what had been stated by the official defendants. 7. Elaborating Axact's assertion that the official record has been fabricated and manipulated, learned counsel drew attention to the statement made in the Written Statement (see para 22) to contend that the files relating to IMC's applications mysteriously disappeared from the Trade Marks Registry but were subsequently traced out. In fact, learned counsel submitted, the said files had somehow been "reconstituted" and it was the record so kept at the Registry that was taken into custody by the Nazir. Learned counsel submitted that this cast a shadow over the entire claim put
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forward by IMC. Referring to the record as available, learned counsel submitted that application No. 238904 as originally filed (on 11-6-2007) had not related to the "Bol" mark at all. Rather, the application had been in relation to the mark "PAKISTANI IDOL TO PAKISTAN IDOL". On 7-8-2008 a show cause notice had been issued by the Trade Mark Registry. The matter had thereafter remained pending at that stage for several years when suddenly, on 7-6-2013, IMC had sought an amendment of its pending application, such that it became an application for registration of the "Bol" mark. In support of these submissions learned counsel referred to various documents available on the record as taken into custody by the Nazir. Learned counsel also drew attention to the fact (which, I may note, has been specifically disclosed in the plaint) that prior to its present Suit 1461 of 2013 in this Court, IMC had already filed a suit for trademark infringement in the court of the District Judge, Lahore seeking essentially the same relief against Axact and certain other defendants. Learned counsel referred to the record of and in the Lahore suit and Suit 1461 of 2013 (as filed by IMC) and submitted that a comparison showed that the contents of what purported to be application No. 238904 differed considerably one from the other, as also from the record as taken into custody by the Nazir. Differences were also to be found in the application for amendment filed in 2013. Learned counsel highlighted these differences in the written synopsis filed by him and submitted that these clearly showed that the record had been manipulated and fabricated to suit IMC's purposes and create the wholly false claim that it was the proprietor of the registered trademark. The real position was to the contrary. Learned counsel referred to section 27(7) of the 2001 Ordinance in terms of which an application for registration of a mark can be amended. The first proviso to this subsection prohibits any amendment "which substantially affects the identity of the trade mark". Learned counsel contended that the "amendment" of the application from "PAKISTANI IDOL" (or "PAKISTAN IDOL") to "Bol" was, on the face of it, a substantial change in the identity of the mark and therefore any such "amendment" was impermissible. Hence, on any view of the matter application No. 238904 as eventually advertised and purportedly registered was completely different from that as filed. IMC was not entitled to (and in fact did not have) any such registration in its favor. There had been a gross abuse and misuse of the process of law. Learned counsel submitted that IMC's application for interim injunctive relief therefore merited dismissal. As regards Axact's application, learned counsel submitted that the foregoing facts clearly demonstrated that the record as available at the Trade Marks Registry could not be relied upon and hence further action on, in relation to or on the basis of IMC's three applications should be stayed till the final decision in Suit 1584 of 2013. 8. Responding to Axact's claim that the official record had been fabricated and manipulated, learned counsel for IMC categorically denied all such submissions. It was submitted that there were no discrepancies or differences in the record as variously placed on the record in Suit 1461 of 2013, the Lahore suit and as available in the record at the Registry. Learned counsel submitted that what the record showed was that application No. 238904, as filed, had been for registration of "Pakistani idol BOL" as a mark. Shortly after the application was filed, IMC applied for permission to amend it, which was granted, such that it became an application for registration of "Pakistan BOL" as the mark. To this the Trade Mark Registry took an objection as regards the use of "Pakistan". This led to the eventual amendment to "Bol" and this was the mark that was advertised. Learned counsel submitted that these amendments were well within the scope of section 27(7) and were properly applied for and granted. There was no manipulation or fabrication of the record as wrongly alleged. It was further submitted that the allegation that the record as taken into custody by the Nazir was a "reconstituted" file was also false. What was with the Nazir was the official record in shape, form and terms as properly maintained by and at the Trade Marks Registry. Learned counsel emphasized that the application was properly advertised and since no notice of opposition was made or received at the Registry within the stipulated period, which expired on 24-
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10-2013, the mark was registered in IMC's favor. Although Axact did file an application for extension of time for filing an opposition, this application was made on 19-11-2013, i.e., after the expiry of the stipulated two months period and hence could not be entertained and was rightly dismissed. Learned counsel made a detailed rebuttal in the written synopsis of the various allegations made by Axact. 9. I have heard learned counsel as above, examined the record and seen the case-law relied upon. I begin by referring to sections 11, 33 and 43 of the 2001 Ordinance. These, as presently relevant, are as follows: 11. Evidence of entries in Register and things done by Registrar.---(1) A printed, written or computer generated copy of any entry in the Register, purporting to be certified by the Registrar and sealed with the seal of the Trade Marks Registry, shall be admitted in evidence in all High Courts or District Courts in Pakistan and in all proceeding without further proof or production of the original. (2) A certificate purporting to be issued under the hand of the Registrar as to any entry, matter or thing that he is authorised by this Ordinance or the rules to make or do shall be prima facie evidence of the entry having been made and of the contents thereof, or of the matter or thing having been done or not done. 33. Registration.---(1) Where an application has been accepted and (a) no notice of opposition has been given within the period referred to in subsection (2) of section 28 ... The Registrar shall, within such period as may be prescribed, register the trade mark, unless it appears to him having regard to matters coming to his notice since he accepted the application that it was accepted in error. (4) On the registration of a trade mark the Registrar shall publish the registration in the prescribed manner and issue to the applicant a certificate in the prescribed form of registration, sealed with the seal of the Trade Marks Registry. 43. Registration to be prima facie evidence of validity.---In all legal proceedings relation to a trade mark registered under this Ordinance ... The fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmission thereof. ' The combined effect of these provisions can for present purposes be stated as follows. In relation to a mark whose registration is sought, the Registrar is bound, if no opposition is filed to the mark as advertised within the stipulated period (or no application is made, within the said period, for extension of time) to make an entry on the Register in the prescribed manner (section 33(1)). Such entry is prima facie evidence of the validity of the registration of the mark in favor of the applicant as the proprietor thereof (section 43). Once the entry has been made the Registrar is bound to issue an appropriate certificate to the applicant under the seal of the Trade Marks Registry (section 33(4)). Such certificate is prima facie evidence of the entry having been made and the contents thereof (section 11). In a suit for infringement of a registered trademark when such a certificate is produced, in the normal course it has the effect as just stated. This may be only on a prima there basis but that, after all, is all that is required for an application for interim injunctive relief. The cases cited by learned counsel for IMC for infringement all proceeded, either expressly or by necessary implication, on such basis. In the present case also, in Suit 1461 of 2013 a certificate has been produced by IMC, which purports to be issued in compliance with and under the provisions cited above. The certificate (dated 13-11-2013) has been issued by one Mrs. Nasreen Akhtar, who has signed the certificate "for" the Examiner of Trade. Marks. She has also signed the accompanying letter (dated 13-11-2013) "for" the Registrar of Trade Marks. 10. If the foregoing certificate is proper and valid, then it has the prima facie effect as just stated. This is IMC's position. However, Axact submits that the certificate is a fabricated and manipulated
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document, and relies on the Written Statement filed by the official defendants. The relevant paragraph from the same has been reproduced (see para 6 above). I have considered the rival submissions. In my view, given that the certificate relied upon is not issued by the Registrar himself, the position adopted by the official defendants in the Written Statement must be given primacy. The position there is that no certificate "duly signed and stamped by the competent authority" has been issued. This statement has been repeated in para 28 of the Written Statement, where it is also stated that it is "imperative" to "highlight" this fact. Furthermore, I note that in the Written Statement, the official defendants have avoided stating that, in fact, "Bol" is properly registered as a trademark in favor of IMC in class 41 on the Register. They could easily have done so. This omission therefore seems to be deliberate and this conclusion is strengthened by the fact that it appears from the Written Statement that some sort of internal inquiry is (or was) ongoing at the Registry with regard to IMC's applications and the files in respect thereof. In my view, the stance taken by the official defendants prima facie casts serious doubts on the veracity and integrity of the certificate of registration relied upon by IMC. It is of course possible to read what has been said in paragraph 18 of the Written Statement somewhat differently. It could be that the official defendants are not denying that Mrs. Nasreen Akhtar did, in fact, issue the certificate, but only that she was not the "competent authority" to "duly sign" the certificate. Even as so read, in law the effect would be the same. The certificate must be issued by the Registrar or by an officer of the Registry authorized in terms of section 7(2). Mrs. Nasreen Akhtar was obviously not the Registrar and from what has been said in para 18 of the Written Statement, not authorized to issue the certificate. On any view of the matter therefore, the stance of the official defendants is clear; there is no certificate of or evidencing, registration in the field as has, or can have, legal validity. 11. In my view, it would be unsafe in such circumstances for the Court to draw, even for purposes of an application for interim relief, the (prima facie) conclusions about, and from, the certificate relied upon, as otherwise mandated by sections 11 and 43 of the 2001 Ordinance. Now, the certificate is under normal circumstances the only evidence that is on the record regarding the registration. Indeed, section 11(1) appears to suggest that this is all the evidence that is required. Therefore, if such certificate, as presented by the plaintiff, is categorically denied by the Registrar, then the effect of such denial is clear: there is no prima facie basis on which it can be concluded that the plaintiff is the registered proprietor of the trademark claimed. As is obvious, this has a serious consequence for an application for interim injunctive relief: the plaintiff must be regarded as having failed to make out a prima facie case. I appreciate that the threshold set for making out a prima facie case is rather low and it is relatively rare that the Court will conclude that a plaintiff has been unable to cross the bar. In my view, the present situation is such a case. In a suit for trademark infringement, the plaintiff must make out a prima facie case of being the registered proprietor (or assignee, etc.) thereof. For that, the certificate that is to be issued and to which the plaintiff would be entitled as of right is a (and invariably, the) crucial document. If the certificate as produced is repudiated by the authority empowered by law to issue the same, then clearly is would be unsafe for the Court to conclude that a prima facie case has been made out. That is the situation at hand. I therefore conclude that IMC has failed to establish the first of the three ingredients required for interim injunctive relief. 12. The view that I have just taken makes it unnecessary for me to consider in detail the submissions made by learned counsel for Axact that the record has been manipulated, fabricated or otherwise tampered with. This is all the more so given that, as noted, there appears to be some internal inquiry going on at the Trade Mark Registry. I would not wish to say anything that, even on a tentative basis, might prejudice such inquiry. However, one aspect of Axact's case requires comment, and that is the submission that the original application No. 238904 was for an altogether different trademark and became one for "Bol" by an impermissible and unlawful exercise of the
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power to amend an application, as contained in section 27(7). This is a legal submission and something will be said about it later on. 13. Before proceeding further, there is one aspect arising out of the present proceedings that I must address and highlight even though…
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