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Petitioner: TILLOTTS PHARMA AG through Authorized Signatory VS Respondent: GETZ PHARMA (PRIVATE) LIMITED through Authorized Officer/Director/Secretary--
Court Name: Sindh High Court Judge(s): Sajjad Ali Shah Title:TILLOTTS PHARMA AG through Authorized Signatory vs GETZ PHARMA
(PRIVATE) LIMITED through Authorized Officer/Director/Secretary-- Case No.: Suits Nos, 1453 and 1468 of 2011 Date of Judgment:2012-07-24 Reported As: 2013 CLD 330 Result: Order accordingly Judgment ORDER ' SAJJAD ALI SHAH, J.---In Suit No,1453 of 2011 plaintiff seeks an order restraining the defendant from using trade mark "MASACOL" on the ground that such mark being colourable or slavish imitation of plaintiff registered trade mark "ASACOL", whereas in Suit No,1468 of 2011 same plaintiff seeks a similar order against the same defendant in respect of trade mark. "ASACOL". Since the parties are same, both the trade marks are/were used in respect of same drug, facts of the case are common, therefore, both the applications (C.M.A. No,12140 of 2011 in . Suit No,1453 of 2011) and (C.M.A. No,12226 of 2011 in Suit No,1468 of 2011) were heard together and are being decided through this common order. ' Briefly, plaintiff claims to be the registered proprietor of trade name "ASACOL" which has been registered in plaintiffs name in various countries including Pakistan vide Registration No,97788 in Class 5 on 13-3-1988. It is claimed that the drug "ASACOL" is used for the treatment of mild to moderate Ulcerative Colitis and inflammatory Bowel and was first marketed by the plaintiff in Pakistan through Messrs Saitex Pharmaceuticals (Pvt.) Ltd. After obtaining drug registration from Ministry of Health. The plaintiff upon acquisition of Messrs Saitex Pharmaceutical (Pvt.) Ltd. By the defendant entered into a Distribution Agreement with the defendant on 1-11-1999 for the import and sale of "ASACOL" and got the drug registration transferred to defendant's name. The defendant thereafter kept the said drug importing from plaintiff and selling it in Pakistan. The defendant in the year 2009 first informed the plaintiff that they have lost the import license and thereafter informed that Ministry of Health has refused to renew the import license in respect of the stated drug and stopped its import. The plaintiff thereafter learnt that the defendant had obtained trade mark
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"ASACOL" in its own name under Registration No,168904 in Class 5 by filing an application on 8-2- 2001 and has further got trade mark "MASACOL" in respect of the same drug registered in its own name on 28-6-2005. The plaintiff further learnt that the defendant got their drug Registration No,009581 of "ASACOL" transferred to its own name and in violation of Distribution Agreement which was otherwise valid upto 14-11-2012 was manufacturing and selling the said drug under trade name "MASACOL". It is asserted that all the stated acts of the defendants were in clear violation of the Distribution Agreement which consequently was terminated by the plaintiff on 16-12-2011. ' On the other hand, the defendants have not denied the Distribution Agreement dated 1-11-1999 whereby the defendants were to import and sell "ASACOL" tablets. The defendants have further admitted the registration of trade name "ASACOL" as well as "MASACOL" in their name on 8-2-2001 and 28-6-2005 respectively. However, the case of the defendants is that right from beginning till year 2008 Ministry of Health was very reluctant to give license for the import of "ASACOL" on the ground that such drug can be locally manufactured. However, the license was finally renewed in December 2008 for 12 months with the condition that no further extension for import will be granted and the defendants thereafter would locally manufacture the drug. It is claimed that the plaintiff through out were kept informed as to concern of Ministry of Health and were communicated the condition of last renewal. The defendants imported the drug during the validity of license and the stock so imported lasted till mid 2010 and thereafter since the drug could not be imported, therefore, the Distribution Agreement stood frustrated. The defendants thereafter started manufacturing the drug locally and selling the same under the trade name "MASACOL". As to the trade name's, it is the case of the defendants that they applied for trade name "ASACOL" in their own rights on 8-2-2001 which was known to the plaintiff as they filed objections in the year 2006 which were subsequently abandoned. As to trade name "MASACOL" it is the case of the defendants that since the Ministry of Health was very reluctant to extend import license for "ASACOL" and was advising the defendants to locally manufacture the drug, therefore, the defendants as abundant caution sought trade mark "MASACOL" in the year 2005 but did not sell their drug "MASACOL" until after mid 2010 when the entire stock of the plaintiff was exhausted and no more import was possible. ' Mr. Moen Qamar, learned counsel appearing on behalf of the plaintiff, has contended that the registration of trademark "ASACOL" by the defendant in its own name and its local manufacturing is in violation of the Distribution Agreement. Per counsel, the adoption of resembling trade mark "MASACOL" by the defendant is totally dishonest and, therefore, the defendants be restrained from selling the drug under the trade name "MASACOL". Reliance has been placed on the judgments of the Hon'ble Supreme Court of Pakistan in the cases of Seven-up Company v. Kohinoor Thread Ball Factory and 3 others (PLD 1990 SC 313), Messrs Alpha Sewing Machine Company v. Registrar of Trade Marks and another (PLD 1990 SC 1074), Kabushiki Kaisha Toshiba (also trading as Toshiba Corporation) v. Ch. Muhammad Altaf (trading as Murad Industries (Regd.) and another (PLD 1991 SC 27) and National Detergents Limited v. Nirma Chemicals Works and another (1992 M LD 2357). ' It was further contended that the defendant has been infringing plaintiffs world reputed registered trade mark "ASACOL" through its imitated trade mark "MASACOL" and further got drugs registration No,009581 of the plaintiff in respect of "ASACOL" transferred to its own imitated trade mark "MASACOL". Counsel in order to plead that such similarity of the trade mark "ASACOL" of the plaintiff and the "MASACOL" of the defendant amount to infringement has placed reliance on Messrs Mehran Ghee Mills (Pvt) Ltd. And others v. Messrs Chiltan Ghee Mill (Pvt.) Ltd and others (2001 SCM R 967); The Wellcome Foundation Limited v. Messrs Karachi Chemical Industries (Private) Limited (2000 YLR 1376); Muhammad Saeed Mughal v. Messrs National Aviation Services (Pvt.) Limited (2001 YLR 2004); MOD International (Pvt.) Ltd. v. National Detergents Ltd. (1993 M LD 605); and National Detergents Ltd. v. MOD International (Pvt.) Ltd. (1993 M LD 590).
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' On the other hand, Mr. Faisal Siddiqui, learned counsel appearing on behalf of the defendant, has contended that the defendant on 8-2-2001 applied for registration of trade mark "ASACOL" and such fact was well within the knowledge of plaintiff, who initially filed objection to the registration, but abandoned such opposition in 2006 and ultimately defendant was granted registration of trade mark "ASACOL" on 12-2-2008 which under section 2(xi) read with section 33(3) of the Trade Marks Ordinance, 2001 is deemed to be registered from the date of application and consequently plaintiff under section 90(4) of the Trade Marks Ordinance, 2001 are barred from seeking injunction against the defendant from using the trade mark "ASACOL". Additionally, to plead acquiescence reliance has been placed on Ashok Kumar Sahu v. Union of India and others (AIR 2006 SC 3324) and Messrs Power Control Appliances and others v. Sumeet Machines Pvt. Ltd. And Sumeet Research and Holdings v. Sumeet Machines and another (1994 (2) Supreme Court Cases 448). It was next contended that plaintiff cannot plead infringement of its trade mark "ASACOL" through defendant's trade mark "MASACOL" as the defendant in their own right hold registration of trade mark "ASACOL" and the plaintiff had already initiated rectification proceeding seeking cancellation of trade mark "ASACOL" from the defendant's name by filing Judicial Miscellaneous Application No,105 of 2011 and unless such application is decided defendant cannot be restrained from using trade mark "MASACOL". It was further contended that defendant infact had applied for registration of trade mark "MASACOL" on' 28-6-2005 and the trade mark was actually registered on 2-3-2010 and the drug under the trade mark "MASACOL" is in the market since after mid 2010, which was well within the knowledge of defendant, but they did not react immediately and moved injunction application on 19-12-2011 i,e, after delay of 18 months, therefore, the plaintiff is not entitled to injunction on account of laches. Reliance has been placed on Al-Karam Textile Mills (Pvt.) Limited v. Mehtah Chawala and 3 others (2007 CLD 966). It was next contended that "ASACOL" can no more be imported for want of import license nor it is in the market since last two years and further it is a pharmaceutical product and always sold on prescription, therefore, defendant cannot argue the similarity or deception to an un-weary purchaser. Reliance was placed on Getz Pharma (Pvt.) Ltd. v. Farooq & Sons (2007 CLD 957), Lipha Lyonnaise Industrielle Pharmaceutique v. Registrar of Trade Marks and another (2009 CLD 1289), Bayer A.G. And another v. Mac ter International (Pvt.) Ltd. (2003 CLD 794), The Welcome Foundation Ltd. v. Khawar (1989 MLD 2516) and Tri-Star Industries (Pvt.) Ltd. v. Sayyed Engineers (Pvt.) Ltd. (2007 CLD 802). It was lastly contended that defendant has not committed any breach of distribution agreement as it stood frustrated in mid 2010 till the imported stock of the "ASACOL" lasted whereafter the defendant introduced their product "MASACOL" and further that since plaintiff himself had quantified the losses, therefore, not entitled to injunction. Reliance was placed on Exide Pakistan Limited, Karachi v. Pakistan Accumulator (Pvt.) Ltd. Islamabad and 3 others (2003 CLD 1117), Bolan Beverages (Pvt.) Limited v. Pepsico Inc. And 4 others (PLD 2004 SC 860) and Tahir Zaman v. Jin Wei (M) SDN BHD and others (2004 CLD 603). ' In response Mr. Moen Qamar contended that the limitation of three years as provided under section 90(4) of the Ordinance, 2001 against the grant of an injunctive order would commence from the actual date of registration of trade mark coupled with continuous use of such trade mark for a period of three years and since the plaintiff has filed rectification petition well within three years of actual date of registration, therefore, the defendant cannot plead bar as provided under section 90(4) of the Ordinance, 2001. . ' I have heard the learned counsel for the respective parties and carefully perused the record of the cases as well as case-laws cited at bar. ' The first question which requires determination is the entitlement of the plaintiff to seek an injunctive order against the use of trade mark "ASACOL" by the defendant keeping in view the bar as contained under section 90(4) of the Trade Marks Ordinance, 2001.
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' The record reflects that the plaintiffs trade mark "ASACOL" was registered in Pakistan on 13-3-1988 and the defendant was importing "ASACOL" from the plaintiff under a distribution agreement. The defendant during the subsistence of such distribution agreement on 8-2-2001 applied for the registration of trade mark "ASACOL" in its own rights which application was given Registration No,168904 in class-5. The record further reflects that the plaintiff in the year 2005 through Messrs United Trade Mark and Patent Services, Lahore (their trade mark agent) filed Opposition No,298 of 2005, against the registration of trade mark "ASACOL" in the name of defendant which subsequently was abandoned and as evident from the certified copy of letter dated 12-10-2006 of the Trade Mark Registry the ' Registrar after necessary intimation to the plaintiff released the application which ultimately was allowed on 12-2-2008. The plaintiffs now after a lapse of six years has initiated rectification proceeding (J.M. No,105 of 2011) pending adjudication before this Court. ' Before deliberating upon the controversy it would be of valuable assistance to reproduce the relevant provisions of Ordinance, 2001, which would require frequent referral. ' Section 2(xi) of the Ordinance, 2001 defines "date of registration" as follows:-- "2(xi) "date of registration", in relation to the registration of a trade mark in respect of particular goods or services, means the day from which the registration of the trade mark in respect of those goods or services is. Taken to have had effect under subsection (3) of section 33;" ' Whereas, section 33(3) of the Ordinance, 2001 reads as follows:-- "33 (3) A trade mark when registered shall be registered as of the date of filing of the application for registration and that date shall be deemed for the purposes of this Ordinance to be the date of registration." ' Section 90 of the Ordinance, 2001 which provides for the consequences in case an importer, or an agent or representative applies for or obtains trade mark of his principal in his own name reads as follows:-- 90. Acts of agent or representative.---(1) Where an application for registration of a trade mark is made by a person who is an importer, or an agent not being an agent under section 128, or a representative of a person whd is the proprietor of the mark in a Convention country, then- (a) if the proprietor opposes the application, registration shall be refused; or (b) if the application, not being so opposed, is granted, the proprietor may (i) apply for the declaration of the invalidity of the registration; or (ii) apply for the rectification of the Register so as to substitute his name as the proprietor of the registered trade mark. (2) The proprietor may notwithstanding the rights conferred by this Ordinance, in relation to a registered trade mark, by injunction restrain any use of the trade mark in Pakistan which is not authorized by him. (3) The provisions of subsection (1) or (2) shall not apply if, or to extent that, the agent or representative justifies his action. (4) An application under clause (a) or (b) of subsection (1) shall be made within three years of the proprietor becoming aware of the registration, and no injunction shall be granted under subsection (2) in respect of a use in which the proprietor has acquiesced for a continuous period of three years or more. ' I would first examine the contention of Mr. Moen Qamar that the time limit of three years prescribed under section 90(4) from the date of awareness of the registration is to commence from the date of actual registration of trade mark which in this case is 12-2-2008 and since the plaintiff has applied for injunction on 21-12-2011, therefore, the defendant cannot take shield of section 90(4) by pleading limitation. ' A bare perusal of section 2(xi) read with section 33(3) of the Ordinance, 2001 leaves no doubt requiring any adjudication regarding the date of registration of a trade mark as section 33(3) in
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clear term provides that "the date of filing of application for registration of mark" shall be deemed for the purposes of Ordinance, 2001 to be the date of registration. Whereas, perusal of section 90(1) of Ordinance, 2001 reflects that in cases where an application for registration of trade mark in its own right is moved by an importer, an agent (excluding an agent appointed for registration of trade mark) or representative of the proprietor of the mark registered in a Convention country then (a) if such application is opposed registration shall be refused (b) if the registration is allowed without an opposition then the proprietor of the mark is left with two options, (i) apply for declaration of the invalidity of the registration (ii) to apply for rectification of the Register seeking substitution of his name as proprietor of the registered trade mark. Whereas, subsection (4) provides time limit of three years for exercising such options "which is to commence from the date, the proprietor becomes aware of the registration". It further places an embargo upon the Court for granting injunction in respect of a use of such trade mark in which the proprietor has acquiesced for a continuous period of three years or more. ' However, minute perusal of first part of section 90(4) which provides that "an application under clause (a) or (b) of subsection (1) shall be made within three years of the proprietor becoming aware of the registration", if read in conjunction with clause (a) of subsection (1) empowering the Registrar to refuse the application of the importer, agent or representative in case opposition is filed by the proprietor, does not permit the interpretation as pleaded by Mr. Moen Qamar. The very fact that the law provides two remedies to the proprietor of a trade mark to rectify the record which could be invoked at two different stages, firstly, under section 90(1)(a), before the application seeking registration of a mark is granted and secondly, under section 90(1)(b) after the grant of application by the Registrar reflects a clear intent of law that the period of limitation of three years would commence once the proprietor becomes aware that his agent, representative or importer has applied to get the registration of his mark. Any other construction would render the provision of section 90(1)(a) redundant. I am, therefore, of the view that once it is established that the proprietor of a trade mark was aware that his agent, representative or importer has filed an application for registration of his mark, be that after filing of application for registration of the trade mark or the actual registration of the trade mark, the period of limitation prescribed under section 90(4) of three years for availing the remedy under section 90(1) would commence. ' As to grant of injunction against the defendant who also now hold trade mark "ASACOL" as registered owner, and has placed on record documentary evidence which from its tentative evaluation reflects that the plaintiff in the year 2005 exercised its right in terms of section 90(1)(a) by filing intent to object against the Grant of Trade Mark "ASACOL" in defendant's favour, but failed to file objection and abandoned the intent in the year 2006. This documentary evidence has been placed on record in support of the argument that since the plaintiffs right to claim rectification of register as provided under section 90 of Ordinance 2001 has become barred by time, therefore, they are not entitled to any restrain order against the defendant. Perusal of section 90 of Ordinance 2001 leads me to the conclusion that the remedy provided under section 90(1) becomes bar after three years of non-action on the part of proprietor despite his awareness that his agent, representative or importer has obtained or has moved the Registrar for the grant of his trade mark, whereas the remedy of injunction becomes barred when the proprietor acquiesce the use of his trade mark by his agent, representative, or importer for a continuous period of three years or where the agent or representative justifies his action. In such situation, the question for consideration perhaps would be that in case the plaintiff fails to get the record rectified, could the defendant still be restrained from using their registered trade mark "ASACOL" on account of non-use for a continuous period of three years specially when the plaintiff has not sought any declaration in the instant suit regarding invalidity of the defendant's trade mark in terms of section 90(1)(b)(ii). In my opinion the anomaly could not be resolved by applying rule of harmonious interpretation, however,
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the record reflects that the plaintiff has filed Judicial Miscellaneous Application No,105 of 2011 seeking rectification of trade mark which is pending adjudication and, therefore, it would not be proper to examine this aspect of case as no finding on the issue of abandoning the opposition can be given while deciding this application and, therefore, I would leave this question to be examined on final hearing of the suit or after the rectification petition is decided. ' Now I will examine the case-law referred to by Mr. Moen Qamar in support of his contention that adoption of the plaintiffs trade mark "ASACOL" by the defendant is totally dishonest and unless restraint would be violative of the test laid down by the Courts in cases of infringement of trade mark i,e, "whether unwary purchaser is likely to be deceived in purchasing goods of the persons infringing trade mark as goods of the owner of the trademark" ' In the case of Kabushiki Kaisha Toshiba (supra) relied by Mr. Moen Qamar, the respondent on 27- 10-1979. Applied for trade mark "TOSHIBA" in respect of (Class 11) electric fans claiming use of mark since 1978. On receipt of application the Registrar's office reported that the mark "TOSHIBA" stood registered in the same class in favour of Tokyo Shibaura Electric Company Limited, Japan. The respondent filed objections and the appellant responded. The Registrar after hearing allowed the application with the condition that the respondent shall always use trade mark "TOSHIBA" in Urdu. An appeal before the High Court did not find favour and the appellant approached the Hoh'ble Supreme Court of Pakistan which held that "the respondent has shown no reason tenable at law to pick up an invented word of foreign firm enjoying inside the country and outside a reputation for electric goods of various descriptions. It was further held that the adoption of the, same trade mark phonetically in respect of electric fans is bound to create likelihood of confusion and deception to the consumers of such goods. Hence, it is against public interest to register such a trade-mark." ' Likewise, in the case of MessRs, Alpha Sewing Machine Company (supra), petitioner sought registration of trade mark "Philip" for its sewing machines manufactured in Pakistan. The application was opposed by Messrs Philips Export on the ground that it was the proprietor, of trade mark Philip which was registered in Pakistan on 21-3-1951 in respect of machines, machine tools and motors (except for vehicle) including magneto electric welding machines, goods belonging to Class 7. It was maintained that such goods were being continuously sold in local market and by virtue of continued and extensive use, its products had become very popular and that the trade mark "Philips" was associated common other than itself. It was pointed out that its trade mark "Philips" was nearly identical with the appellant "Philip", the danger of confusion and deception was also pleaded. The Registrar after -hearing refused to grant such trade mark to the petitioner. The petitioner approached the High Court by filing an appeal which was dismissed by observing that "there is every likelihood of causing deception and confusion with the use of the mark PHILIP by the appellant and in such a case different nature of goods loses relevance". The principle was approved by the Hon'ble Supreme Court while dismissing the appeal. ' In the case of Seven-Up Company (supra) respondent Abdul Aziz Noor Muhammad on 27-3-1963 filed an application for registration of trade mark "7-Up" in respect of Pan Masalah in Class 30, the same was advertised in the Trade Marks Journal. The appellant 7-Up Company filed opposition on the ground that their trade mark "7-Up" stands registered since 25-9-1948 in Class 32 in respect of soft drink, beverages and syrups, flavour and extracts for making soft drink and beverages. It was pleaded that word "7-Up" and design represents their world famous mark and the appellant's product though not similar is likely 'to be associated in the trade or are in some way likely to be connected with their manufacturer and is likely to cause deception and confusion. The Registrar after hearing allowed the application by holding that there was no evidence to show that the two sets of goods were produced by one and the same manufacturer, or sold by the same wholesale houses, therefore, the question of deception is far-fetched. The order further held that there is no
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monopoly of any trade mark, and the same trade mark can be used by different persons in respect of different goods. The appellant filed an appeal before the High Court, which was dismissed by holding that the real difficulty in the way of the appellant is that it did not produce any cogent evidence in support of its plea of the likelihood of confusion, or, deception between the competing goods. No doubt, this was for the very obvious reason that it is not even selling candies; therefore what evidence could it produce to show the possibility even of confusion between soft drinks and Pan Masalah. The matter came up before the apex Court which while…
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