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Petitioner: MESSRS PLASTICRAFTERS LTD. KARACHI VS Respondent: MESSRS MANIAR INDUSTRIES LTD.
Court Name: Sindh High Court Judge(s): Ajmal Mian Title: MESSRS PLASTICRAFTERS LTD. KARACHI vs MESSRS MANIAR INDUSTRIES LTD. Case No.: Civil Suit No, 366 of 1979 Date of Judgment:1979-10-26 Reported As: 1980 CLC 812 Result: Order accordingly
Judgment ORDER (I) (a).-This order will dispose of CMA's 18009 and 1802/79 of Suit No, 366/79, C. M. A.'s 1806/79, 1807/79 and 1985/79 of Suit No, 367/79 and CMA's 2632/79, 2633/79 and 2593/79 of Suit No, 525/79. The facts leading to the filing of the above three Suits (in which the plaintiff is the same but the defendants are different) and the applications are as follows :- (b) (i) Suit No, 366/79.-The plaintiffs are manufacturers of Plastic articles including thermic jugs (water coolers) buckets, bottles, and other household articles. The plaintiffs filed an application on 14th June 1978, for the registration of design in Class 3 in respect of water coolers (thermic jugs). The plaintiffs filed another application on 18th June, 1978, in Class 3 in respect of the design to "water tape" of coolers. The Controller of Patents and Designs issued two certificates of registration of designs in respect of the aforesaid two applications according to the plaintiffs in January, 1979. It has been averred by the plaintiffs that the said designs are new and novel and the novelty of the said designs consists in the tap (faucet), border and upper portion as encircled in the registration certificate annexed to the plaint marked "A" and "B". It has been further averred that the plaintiff's goods under the said designs have commanded and still command extensive and ready sale in Karachi and other places in Pakistan and have acquired wide reputation and great popularity among the consumers and the public alike and that in order to deprive of the plaintiffs of the business and goodwill, the defendants in the above suit filed two frivilous applications under section 51-A of the Patents and Designs Act, 1911 (hereinafter referred to as the Act) for cancellation of the registration, viz. (J. M. Nos. 8 and 9 of 1979) which are pending. It has also been averred that the defendants have started manufacturing and selling in the market thermic jug (water coolers) with faucet (tap) in Karachi under the design which is exactly identical and confusingly similar with
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the plaintiffs. It has further been averred that the defendants are passing off and are selling and are attempting to pass off and sell and causing to the pass off and sold large quantity of thermic jugs and are deceiving the public of Pakistan and causing wrongful loss and damage to the plaintiffs. It has further been averred that the cause of action accrued to the plaintiffs for the above suit Suit No, 366/79 on 18th April, 1979, when the plaintiffs' stockists informed the plaintiffs of the infringement, piracy and passing off by the defendants. On the basis of above averments, the plaintiffs have prayed for permanent injunction, mandatory injunction, accounts and damages of Rs, 50,000. The above suit was filed on 26th April, 1979, along with the suit two applications (C.M.A. 1801/79 for injunction and C.M.A. 1802/79 for attachment of the stock) were filed. In pursuance of the above applications, an ex parte ad interim order for restraining the defendants from selling thermic jugs under the registered designs of the plaintiffs was granted on 28th April, 1979. (ii) The defendants have filed a counter affidavit, wherein various allegations contained in the plaint applications and the affidavit in support thereof have been denied. It has been denied that the plaintiffs are the leading manufacturers. It has been averred that the plaintiffs have been advertising and marketing since April 1978 and that the designs do not contain any novelty and that they were neither new nor original at the dates of the applications by the plaintiffs for their registration as the same were published in Pakistan for many years. It has also been averred that the cooler has same appearance as any other cooler and the faucet is similar to those which have been produced for several years prior to the plaintiff's applications. It has been further averred that similar thermic jugs/water coolers with similar faucet (tap) of Japanese origin are being brought into Pakistan for a long time by travellers in general and returning pilgrims from Saudi Arabia in particular, and that such jugs with such faucets attached hereto even otherwise have always been and still are freely manufactured and available in the market of Pakistan and that even local manufacturers have been marketing similar thermic jugs/water coolers with faucet of similar design attached thereto prior to the marketing by the plaintiffs of their said products. It has been denied that the plaintiffs are the intervener and registered proprietor of the registered design. It has been averred that the plaintiffs have obtained by misrepresentation the registration of design for which the defendants have already filed petitions for cancellation. It has further been averred that the defendants' water coolers under the name of Maniac have commanding ready sale in the market new for quite some time and have been advertised on television as early as first week of April 1979, and that on 17th February 1979, the defendants made an application for the registration of the sign to the Controller of Patents and Designs. It has been denied that the defendants water cooler is same as of the plaintiffs. It has been averred that the two water coolers are distinct in many respects, i,e, the cap, the mouth, handle, configuration, colour and size. It has been averred that the plaintiffs and the defendants water coolers carry different trade name and their packing are also totally different. (iii) The Plaintiffs filed a rejoinder in which they have reiterated the facts mentioned by them in the plaint and have denied the defendant's assertions contained in the counter affidavit. It may be pertinent to mention that during the arguments on 15th October, 1919, the defendants filed an additional affidavit along with a photo stat copy of the certificate of registration in respect of the faucet issued by the Controller of Designs and Patent in May, 1979 in favour of the defendants which, according to them, they have received recently. The plaintiffs filed a counter-affidavit to the above further affidavit in which it has been averred that the defendants have obtained the above certificate by misrepresentation/ fraud and the same is not legal. (c) (i) Suit No, 367/79.-The plaintiffs have repeated the facts mentioned by them in the plaint of the aforesaid Suit No, 366/79 inasmuch as that even it has been averred that the cause of action accrued to them on the same date, viz. 18th April, 1979, when the plaintiff's stockiest informed the plaintiffs of the infringement, piracy and passing off by the defendants. In the above suit, the
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plaintiffs have also prayed for the same reliefs. Along with the plaint the plaintiffs also filed two applications. i. e. C.M.A. 1806/79 for injunction and C.M.A. 1807/79 for attachment. In the above case also, an ad interim injunction was granted against the defendants on 28th April, 1979. (ii) The defendants filed a counter affidavit, wherein they have denied the various assertions contained in the plaint, applications and affidavit in support thereof. The defendants have denied that they are manufacturing any thermic jugs, infringing the plaintiffs' designs. The defendants have also raised similar pleas which have been raised by the defendants in the aforesaid first suit. In addition to the above pleas, it ha 'also been averred that the defendant-company had imported samples from JAF-IL Thermos Industrial Company Ltd. Seoul, Korea in the year 1976 which had similer design and faucet. In support of the above assertion, the defendants had filed photostat copies of the literature, bill of entry dated 1st October, 1976, with the stamp of the Customs authorities for the payment of the customs duties and sales taxi etc., a P. I. A. Freight arrival advice dated 12th September, 1976 and the State Bank permission dated 30th September, 1976 (the originals of the above documents were produced by the defendants during the arguments on the injunction application). ' It has been further averred that on the basis of the aforesaid samples so received, M/s. Shahi Enterprises in December, 1977 produced, manufactured and sold "Holiday thermos-power isolated ware" that is, water cooler with a decorated metal body and the faucet which they are now using on their all plastic container water coolers. It has been further averred that it seems that the plaintiffs have copies from the water coolers imported from Korea and Japan and from the products of Shahi Enterprises. It has been denied that Holiday water cooler is a copy of the plaintiffs' water cooler Rahbar. It has been averred that the two water coolers are distinct in many respects, i. e. The cap, mouth, handle, configuration, the containing capacity and colour, It has also been averred that the body dimension of Rahbar cooler is larger than the Holiday water cooler and the faucet of Rahbar is smaller than Holiday water cooler and that both shapes different in body and wheel, etc. (iii) Upon the filing of the counter affidavit by the defendants wherein they had taken the plea that they were not manufacturing any water coolers but M,/s. Shahi Enterprises were manufacturing the same as mentioned hereinabove earlier, the plaintiffs filed an application under Order I, rule 10, C. P. C. (C.M.A. 1985/79) for impleading Shahi Enterprise, Fida Hussain Shekha Road, Karachi. In support of the above application, it has been averred in the affidavit that after reading the counter affidavit of the defendants, the plaintiffs made enquiries from the market and it transpired that the defendants themselves are working under the name of Shahi Enterprises and that it appears that it is their subsidiary, sister or family concern. The defendants filed a counter affidavit to the above application, wherein it has been averred that the plaintiffs had rushed to this Court without making proper enquirie3 or even giving a notice to the defendants. It has been denied that the defendants are working under the name of Shahi Enterprises or that it is a subsidiary or sister concern. It has also been averred that the plaintiffs have, if any, separate cause of action against Messrs Shahi Enterprises which is neither necessary nor proper party to the present suit. It may be observed that Mrs. Yasmin Salim, proprietor of Shahi Enterprises has filed a petition under section 51-A of the Act on 10th May, 1979 (J. M. No, 22/79) for the cancellation of the designs in which identical pleas have been taken which have been raised by the defendants in Suit No, 367/79. (d) (i) Suit No, 525/79.-In the above suit also the Plaintiffs have reiterated the contents of the plaint of their aforesaid two suits except that it has been averred that the cause of action accrued on or about 6th June, 1979 when the plaintiffs' stockists at Karachi informed the plaintiffs of the infringement, piracy and passing off by the defendants. Jn the ahoy; suit, the plaintiffs have claimed the same reliefs which they have claimed in the aforesaid two other suits. Along with the
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plaint the plaintiffs filed two applications, viz. C.M.A. 2632/79 for injunction and C. M. A. 2633/79 for attachment. In the above suit also an ad interim injunction was granted on 18th June, 1979. (ii) Upon the service of the injunction order the defendants instead of filing a counter affidavit filed an application under Order XXXIX, rule 4 read with section 151, C.P.C. For the discharge of the injunction (C.M.A. 2593/79). In the supporting affidavit the defendants have raised more or less identical pleas which have been raised by the defendants in the above two suits. It has been averred that the defendants are also manufacturing and marketing water barrels or coolers as from June, 1975, and of the specimen, same or similar to one shown in Annexure "F" to the plaint. It has also been averred that the Plaintiffs are marketing water barrels or coolers of the specimen "F" annexed to the plaint, that is the water cooler containing the aforesaid two registered designs from about March, 1978. It has been further averred that faucet is a machanical device in the instant case made of plastic and its mode or principle of construction in the material of manufacture is and has to be common or similar and likewise the barrel and that sleekness or glassiness is not a matter of novelty nor the barrel nor its shape and model nor novel nor new and that they are ordinary functional requirements of manufacture and use of material. (iii) The plaintiffs filed a counter affidavit to the defendants' above applications reiterating the contents of the plaint and the applications and denying the assertions contained in the defendants' application and the affidavit. It has been averred that after receiving the registration certificate, the plaintiffs issued a public notice in the various newspapers of Urdu, English, etc. In February and March, 1979 on the dates mentioned in Annexures "I" and "I-I". To the above counter affidavits defendants filed a rejoinder reiterating the facts mentioned by them in their affidavit. It may be pertinent to mention that the defendants have filed a petition under section 51-A of the Act on 2-8-1979 for the cancellation of the plaintiff's designs (J. M. No 31/79) wherein they have raised identical pleas which they have raised in the affidavit in support of their application under Order XIX, rule 4, C. P. C. (2) (a) Messrs J. H. Rahimtoola, Iqbal Kazi and Hyder Ali Pirzada for the defendants in opposition to the ad interim injunction granted by this Court have urged the following points :- (i) That the plaintiff's designs are not new or original and that they were previously published in Pakistan and, therefore, the plaintiffs were not entitled to get the same registered. (ii) That sleekness of the water cooler and the faucet, which involve mechanical process could not have been subject matter of the registration or the design. (iii) That the plaintiffs have no prima facie case for the granting of an ad interim injunction. (b) Whereas Syed Anwar Ali, learned counsel for the plaintiffs has urged that this Court cannot go into the question of the validity of the registration of designs for the purpose of deciding injunction application in the suits and that in any case, the plaintiff's designs are new/original and were not published in Pakistan prior to the registration and, therefore, were qualified for registration. It has also been urged by him that the plaintiffs have a strong prima facie case for the confirmation of the ad interim order. (c) In order to appreciate the respective contentions of the learned counsel for the parties, it may be advantageous to reproduce herein-below section 43 of Act, and the novelty registered under the two registration certificates dated 14-6-78 and 18-6.78 (Annexures A and B to the plaint) in respect of designs No, 5980 and 5981 respectively. Section 43 reads as follows :- S. 43.-(1) The Controller may, on the application of any person claiming to be the proprietor of any or new original designs not previously published in Pakistan, register the design under this part. (2) The application must be made in the prescribed form and must be left at the Patent Office in the prescribed manner and must be accompanied by the prescribed fee.
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(3) The same design may be registered in more than one class, and, in case of doubt as to the class in which a design ought to be registered, the Controller may decide the question. (4) The Controller may, if he thinks fit, refuse to register any design presented to him for registration; but any person aggrieved by any such refusal may appeal to the Government. (5) An application which owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within the prescribed time shall be deemed to be abandoned. (6) A design when registered shall be registered as of the date of the application for registration." ' Novelty registered in respect of design No, 5980 (Annexure A to the plaint) is given at page 2 of the certificate which reads as follows :- "Novelty resides in the portion circled in red the sleek pattern applied to the Water Cooler (Thermic Jug) as illustrated." ' The novelty, registered in respect of design No, 5981 (Annexure B to the plaint) is given at page 2 of the certificate which reads as follows "Novelty resides in the shape and configuration as applied to the FAUCIT (Water Tap of Coolers) as illustrated." ' A perusal of section 43 of the Act indicates that in order to qualify for registration of a design, it is necessary that the design should be new or original and should not have been previously published in Pakistan. (3) (a) Before taking up the contentions of the learned counsel for the defendants; it will be appropriate that I should examine the contention of Syed Anwar Ali, learned counsel for the plaintiffs, that this Court cannot go into the question of the validity of the registration certificate in the present suits. In support of the above contention he has relied upon the case of Silver Cotton Textile Mills Ltd. v. Bawany Violin Textile Mills Ltd. (1) and the case of S. Muhammad Din & Sons v. Sheikh Nabi Bux & Sons (2), whereas the learned counsel for the defendants have relied upon the cases of Karachi Textile Works v. Multan Handloom Factory (3), Qadar Bakhsh v. Ghulam Muhammad (4), Messrs Khurshid Industrial Corporation & others v. Mls. Habib Metal Industries and others (5), Manicka Thevar v. Mls. Sattar Plough Works Melur (6). The Pilot Pen Co. (India) Private Limited v. The Gujrat Industries Private Ltd. (7), Ram Shai v. Angnoo (8), Calico Printers Association Ltd. v. Savani & Co. (9), Smith v. Grigg Ltd. (10), Marshal & The Lace Web Spring Co. Ltd. v. The Crown Bedding Co. Ltd. (11) and Bourjois Ltd. British Home Stores Ltd and another (12). (b) In the above Karachi case of 1963, the facts were that the District Judge, Lahore issued a temporary injunction against the defendants restraining them from using on textile goods the design which was registered on the application of the plaintiffs under section 43 of the Act. However, the learned District Judge did not restrain the defendants from selling the goods lying in the stock, for which it was ordered that the defendants should maintain an account. The defendants filed an appeal against the above order. Raliance was placed by the defendants in the aforesaid case on the case of Karachi Textile Works v. Multan Hand-loom, referred to herein above. While dissenting from the aforesaid 1955 case, Qadeeruddin, J. (as his Lordship then was), was pleased to hold that the common law rule that defence of invalidity of registration can be raised without applying for cancellation or rectification is inapplicable to suits filed in Pakistan. It was further held that the cancellation of the registered design can only be claimed under section 51-A of the Act through a Petition in the High Court or before the Controller. ' It may be observed that the facts of the above case of 1963 Karachi are distinguishable from the facts of the instant cases inasmuch as that in the above Karachi case of 1963 the suit was filed in the District Court which had no jurisdiction under section 51-A of the Act to entertain a petition for the cancellation of the design, whereas in the instant case, the suits have been filed in the High Court which admittedly has the power under section 51-A to order the cancellation of the
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registered design. Qadeeruddin, J. Was mindful of the above distinction and in that context his Lordship has observed as follows :- "And answered it in the negative. I should note that in the case that it before me, the trial Court had no jurisdiction to either (1) PLD 1963 Kan 79 (3) PLD 1955 Sind 351 (5) 1969 D L C 521 (7) AIR 1967 Mad. 215 (9) AIR 1939 Born. 103 (11) 46 R P C 267 (2) PLJ 1974 Lah. 58 (4) AIR 1934 Lah. 709 (6) AIR 1965 Mad. 327 (8) AIR 1922 All. 496 (10) 41 R P C 149 (12) 68 R P C 280 ' Order rectification of the register or to order cancellation of registration, because under section 64 of our Act, the power of rectification is given to the Controller, and under section 51-A, the power of cancellation is conferred on the High Court. The trial Court was thus not competent to give relief by either ordering rectification or cancellation. The English precedents, therefore, in which the defence of invalidity was allowed to be raised without applications for rectification or cancellation are inapplicable to suits which are filed in our country, excepting for and that too in a restricted sense only to these suits which may be filed on the original side of the High Court." ' The second distinguishing feature is that the defendants in the pre sent 2 suits have filed proper petitions under section 51-A of the Act for the cancellation of the design, namely the defendants in Suit No, 366/79 have filed J. Misc. 8/79 and J. Misc. 9/79 on 28th February 1979, a few months prior to the date of the filing of the suit by the Plaintiffs. Mrs. Yasmin Saleem who is the proprietor of Shahi Enterprises and who, according to the defendants in Suit No, 367/79, have been manufacturing the thermic jugs which has allegedly infringed the plaintiffs' registered designs has also filed a petition under section 51-A of the Act on 10th May 1979 for the cancellation of the plaintiffs' designs and whereas the defendants in Suit No, 525/79 have also filed a Petition under section 51-A of the Act on 2nd August 1979 (J. M. 31/79). It may be observed that all the aforesaid J. Misc. Petitions were fixed along with the above suits for hearing with the consent of the learned counsel for the parties, and, therefore, it cannot be urged that the validity of the registration of the two designs in favour of the Plaintiffs is not in issue before this Court or that this Court has no jurisdiction under section 51-A of the Act to order the cancellation of the registration. (c) The Lahore case relied upon, namely, PLJ 1974 was also a case in which the original order was passed by the District Judge and an appeal was filed in the High Court. A perusal of the above Lahore case will show that it was more a case for infringement of a trade mark than of a design. It is true that the question of design was also involved but the main discussion is on the question of trade mark and the use of the name. There is no discussion on the question whether the validity of the registration of the designs can be agitated in a suit in defence in a Court which is also competent to entertain a petition under section 51-A of the Act. Aftab Hussain, J. Followed the aforesaid Karachi case of 1963. (d) Reverting to the case of Karachi Textile Works v. Multan Hand-loom Industry, it may be observed that Inamullah, J. (as his Lordship then was) after discussing the various Indian and English rulings was pleased to hold that in granting a temporary injunction against violation of a design, the same principles should be applied as are applicable in the case of violation of a patent, e. g. That the patent is prima facie valid or it has been enjoyed for many years without dispute and that temporary injunction will not be granted if the registration is recent. In the above case it was also urged that the remedy available for the defendants was under section 51-A of the Act and that the plea of invalidity was not available as a defence in the suit. While repelling the above contention, his Lordship was pleased to observe at page 354 as follows :- "The contention of Mr. Farooqi is that Patents and Designs Act is a complete act. It has provided the machinery as to how the registration of a design can be challenged. This is provided under section 51-A of the Patents and Designs Act. Any person who wants to challenge the registration of a
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design can apply to the High Court or to the Controller on the grounds that have now been taken by the defendant to challenge the validity of the registration. The words 'subject to provisions of this act' in section 47 of the Patents and Designs Act have to be given ordinary meaning and if that is so, the Plaintiff should be held to be the proprietor of the design that has been registered in his favour subject to the challenge that is provided in section 51-A of the Act. On the other hand, it would appear that this argument had been raised in several Indian cases and the view that has been taken by the Judges was that in a suit for infringement of designs, the defendant could take such plea as he has now taken. The…
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