1/25/22, 11:08 AM 2001 M L D 39

2001 M L D 39

[Karachi]

Before Zahid Kurban Alavi, J

MARS INCORPORATED---Plaintiff

versus

PAKISTAN MINERAL WATER BOTTLING

PLANT (PVT.) LTD. through Chief, Executive/ Director/Secretary---Defendant

Suit No.37 and Civil Miscellaneous Application No. 114 of 2000, decided on 26th
June, 2000.

(a) Trade mark----

---- Adoption of foreign trade mark---Dishonest adoption of foreign trade marks by

Pakistani companies or traders deprecated.

(b) Trade mark---

---- Creation of confusion and deception---Adoptation of same trade mark phonetically

is bound to create likelihood of confusion and deception to the consumers of goods.

Beecham Group v. Ahmed Ismail PLD 1987 Kar. 356 rel.

(c) Trade mark----

-------- Passing off'---Connotation---Scope---"Passing off' was an actionable wrong for

a trader so to conduct his business as to lead to the belief that his goods or business
were the goods or business of another---Such wrong was known as "passing off" --
Immaterial whether the false representation as to the goods or business involved in
passing off was made expressly by words or impliedly by use or imitation of a mark,
trade name or get up, with which the goods of another were associated in the minds of
public---In passing off action there was no requirement that the defendant should be
carrying on business which competes with that of the plaintiff or which would compete
with any natural extension of the plaintiff's business.

Tektronix Incorporated v. M. Abdul Mannan PLD 1973 Kar. 14 and Torts by

Lindswell, 11th Edn., p. 17 ref.

(d) Trade Marks Act (V of 1940)----

---Preamble---"Passing off'---Essential characteristics enumerated:

The essential characteristics which must be present in order to create a valid cause of
action for passing off are; misrepresentation made by a person in the Course of Trade
to prospective customers of his or ultimate consumers of goods or services supplied by.
him, which is calculated to injure the business or goodwill of another trade (in the
sense that this is a reasonably seeable consequence) and which causes actual damage to
a business -or goodwill of the trader-by whom the action is brought or a will probably
do so.

Seven-up Company v. Kohinoor Thread Ball Factory PLD 1990 SC 313 ref.
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(e) Trade Marks Act (V of 1940)---

----Ss. 8, 10 & 73---Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 & 2---Interim
injunction, grant of---Passing off---Dishonest adoption of foreign trade mark---
Disputed trade mark "Mars" was owned by the plaintiff which was an international
company and the same was known all over the world-- Defendant adopted the same
trade mark for his products in the similar category and got the same registered in
Pakistan---Validity---Plaintiff's trade mark enjoyed international reputation and if the
injunction was not granted the same would encourage all other types of organizations
to take advantage of the popularity of such internationally known marks---When a
prima facie case was made out of convenience or inconvenience receded into back
ground---Prima facie case in favour of the plaintiff existed---Interim injunction was
granted.

Tabaq Restaurant's case 1987 SCMR 1090; Mian Taj Din and another v. Tahir Shabbir
1988 MLD 460; Vicks Chemical Co. v. 'Hopes Cosmetics and Chemical Works PLD
1957 Lah. 761; Kabushiki Kaisha Toshiba v. Ch. Muhammad Altaf PLD 1991 SC 27;
Cooper's Incorporated v. Pakistan General Stores 1981 SCMR 1039; Alpha Sewing
Machine Co. v. Registrar of Trade Marks PLD 1990 SC 1074; Montgomery Flour
Mills' case PLD 1973 Kar.567; Seven-up Company v. Kohinoor Thread Ball Factory
PLD 1990 SC 313; Beecham Group v. Ahmed Ismail PLD 1987 Kar. 356; PLD 1986
Jour. 353; Unilever Ltd v. Sultan Soap PLD 1991 SC 939; National Detergents, Ltd. v.
Nirma Chemicals Works 1992 MLD 2357; A & F Pears Ltd. v. Ghulam Haider PLD
1959 (W. P.) Kar.154; Muhammad Ismail v. M/s. Soofi Soap Factory PLJ 1973 Lah.
208; Eiora Ind v. Banaras Days AIR 1980 Dehli 254; PLD 1968 Kar. 369; 1986 CLC
1636; PLD 1990 SC 313; PLD 1990 SC 1074; 1990 ALD 378; 1992 MLD 2307; AIR
1969 Born. 24; AIR 1986 Delhi 329; AIR 1994 Delhi 239; AIR 1985 All. 242; AIR
1944 Lah. 386; AIR 1983 Punj. 418; 1992 MLD 2307; 1973 RPC 560; 1983 FSR 155;
1992 RPC 529; 1997 RPC 155 and 15 RPC 105 ref.

Hassan Irfan alongwith Moen Qamar and Abdul Hameed Iqbal for Plaintiffs.

Khalil Kazilbash for Defendant.

ORDER
about petition
By this order I shall dispose of C.M.A. No. 114 of 2000. This is an application filed
under Order 39; Rules 1 and 2, C.P.C., read with section 151, C.P.C. In this application
it has been prayed that this Court may be pleased to grant temporary injunction
restraining the defendant and or its; shareholders, employees, servants, distributors,
agents, stockist, retailers or dealers and all persons claiming through or under them
jointly or severally from manufacturing and/or bottling, selling, advertising, stocking,
importing, exporting, passing off or advertising defendant's drinks/beverages or other
food or drink products using the mark "MARS" in any manner, either alone or with any
other word, device or design, till the decision of the suit.

Alongwith the application they have filed a detailed affidavit and also Annexures.
Against this application a counter-affidavit has been filed by the defendant who has
also filed with the counter-affidavit, photo copies of the documents in support thereof.
An affidavit in re-joinder has also been filed by the plaintiff. Alongwith this rejoinder
once again documents have been attached in support thereof.
about plaintiff
Briefly the facts of the case are that the plaintiff is a registered company incorporated
in the United States of America and carries on business all over the world directly and
through its subsidiaries. It further seems that the plaintiff is involved in the
manufacture of food products including Chocolate, drinks/beverages, Ice creams,
spices, and herbs and confectionaries etc. It has turn over in excess of U.S. 11 billion
 1/25/22, 11:08 AM 2001 M L D 39

dollars and its products are used in over 100 countries. The plaintiff employs 28,000
persons all over.
about MARS
Amongst various products that are manufactured, one of the most popular and world
renowned mark is "MARS". This trade mark is used by them for Chocolate, chocolate
driniks, Ice cream etc. The trade mark "MARS" was first used in England in the year
1932 in relation to chocolates and confectionaries product. Then it was used for
chocolate drinks in the year 1986. In the year 1988 it was used in relation to ice cream.
In Pakistan the trade mark "MARS", was registered in class 30 since 1949 and in class
29 since 1978.
about credibility of MARS
Alongwith the plaint and the injunction application the plaintiff has shown the entire
history of the use of the mark "MARS" internationally and in Pakistan. They have also
shown the amount of money spent for the promotion of the mark and attempt has been
made to show the use of MARS and the products under TM Marks that has been
extensively used by the individuals all over the world, as well as officially, specially in
sports related activities. According to the counsel for the plaintiff since there was a
demand internationally chocolate drink was introduced globally in 1986. They have
also attached with the application promotional material of the MARS drinks and also
shown the amount spent on its promotion.

According to the plaintiff the chocolate bars and chocolate drinks are equally popular
and available throughout Pakistan. It is further stated that the Trade Mark "MARS" is
synonymous to high quality products manufactured by the plaintiff. It would be
appropriate to mention that the corporate name of the plaintiff is also MARS.

With the above background according to the plaintiff lots of small and large
manufacturers have tried to take advantage of the goodwill of the plaintiff's products
and tried to bring into the market their own products under the names of MARS so that
the common average person could be duped into thinking that the products purchased
are the quality products of the plaintiffs. In this respect the plaintiff has urged that the
drink/beverage under the trade marks MARS that the defendant have started selling
should be stopped. The outlet of sale according to the plaintiff is the same and in fact
both the chocolates and the drinks are stored in refrigerated containers. Hence the
chance of the public being mislead into thinking that the defendant's products are in
fact manufactured by the plaintiff is very possible.
classes are different
The defendant whilst arguing the case have insisted that their mark is a registered mark
in Pakistan. According to them they had been using the same since 1997. Their mark
MARS is registered in class 32 for Soft Drink and the mark of the plaintiff is registered
under class 30, hence, there is no question of the mark in class 32 being passed off as a
mark in class 30. Even though detailed counter-affidavit has been filed and the
defendant has also shown figures of user figures relating to sales, figures relating to
publicity that they have conducted over the years creating a distinct market for the
def showedproducts in Pakistan, therefore, the claim of the plaintiff according to the defendant in
various the suit is not tenable under the law. Alongwith the counter affidavit photo copies of
evidences of
their own documentary evidence in support of their contention have been filed. The first

of word contention of the defendant is that in order to protect `their valuable proprietary rights
use and publicity

'"Mars'' the defendants applied for the registration of their mark MARS in respect of Soft

Drinks. This mark was eventually used/marketed all over the Pakistan. In support of
their contentions that it was used the defendants have produced a photo copy of R.T.I.
These forms show the sale of the products from Gadoon Amazai Peshawar. The
defendant has failed to produce any other forms relating to any other area.

The second contentions of the defendant is that after showing their sale figures through
invoices and cash memos. that their products related to beverages, and soft drink has
applied for and was registered with the trade marks registry- on the other hand the
 1/25/22, 11:08 AM 2001 M L D 39

he also claimed that plaintiff registration is latter in time here in Pakistan in case of same class.

mark of the plaintiff was applied for registration much latter in connection with the
same class as the defendant.
def has also sought registration for other classes which has been accepted

Once again the defendants have also brought on record certain applications for
registrations of the mark MARS for other classes which were advertised before
acceptance in the trade mark journal. The defendant in their counter affidavit have
claimed that their bona fide marks have been accepted for registration.

The lengthy counter-affidavit and the equally lengthy re-joinder has gone round and
round in circle but have repeated the same thing. At present juncture since I am seized
of an injunction application I have to see whether prima facie, the case is made out by
the plaintiff, for grant an injunction.
plaintiff accepted his TM is not registered in class 32 where def has registered his TM

The plaintiff in support of his contention, has argued that his mark is incorporated and
used world vide and is considered amongst the 50 leading trade marks in the world.
The defendant may not be using the trade marks MARS for candies but he has
definitely tried to cash in on the tremendous reputation and goodwill of the mark
MARS. Indeed the defendant has. applied for registration of the mark earlier and that
the plaintiff's mark is not registered in class 32 in Pakistan. The controversy is reduced
to whether the goods of the defendant can be used by the defendant without creating a
dent in the minds of the Public that it is a products of the makers of the MARS
chocolates. The plaintiff view points can be reduced as follows:--

(i) What are the principle of passing off and whether defendant's goods can be passed
off as that of the plaintiff?

(ii) Whether adoption of trade marks MARS by the defendant is dishonest?

(iii) Whether chocolates and drinks/beverages are different goods?

As the plaintiffs case is for infringement of trade mark MARS by the defendant,
therefore, reference can be made to a judgment by the Honourable Supreme Court of
Pakistan in the case of TABAQ Restaurant reported in 1987 SCMR 1090. ,

In this judgment, while dealing with the principles of grant of interim injunction in the
case of infringement of trade mark, it has been held that:--

injunction was granted

on the basis of a
"When the question of grant of interim injunction came up before he District
registered Trade Mark Judge, the trade mark of TABAQ Lahore stood registered-for that reason, if for
none else, there was a prima facie case, balance of inconvenience and
likelihood of irreparable injury, all in favour of TABAQ, Lahore.

The interim order passed by the District Judge was eminently a legal, just and proper
order. Hence the appeal (C.A. 65 of 1987) is allowed with costs, the order passed by
the High Court- on 28-1-1987 is set aside and the interim order passed by the District
Judge on 2-12-1986 is restored.

In another case of Mian Taj Din and another v. Tahir Shabbir reported as 1988 MLD
460, it has been held at page 462 that:--
balance of inconvenience should be seen in the shadow of breach of law not independently and in contravention to law

"On the question of balance of convenience or inconvenience, when a prima

facie case is made out, such a balance recedes into the background as was held
in the case of Vicks Chemical Co. v. Hopes Cosmetics and Chemical Works
PLD 1957 Lahore 761. Moreover, I feel that where a case of infringement of
law is involved, the question of balance of convenience or inconvenience must
be judged in the light of policy of law. If there is prima facie infringement, the
Court would lean in favour of prevention of the continuance of that violation.
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It is well settled that Courts have consistently condemned and adoption of foreign trade
marks by Pakistani companies or traders.

Thus, in Kabushiki Kaisha Toshiba v. Ch. Muhammad Altaf reported in PLD 1991 SC
27 at page 34 at was observed as follows:--

why to pick someone's "Applicant had shown no reason tenable at law to pick up invented word of
invented word who has
reputation foreign firm enjoying inside the country and outside a reputation for electric
goods of various descriptions' 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

In this case registration was refused despite Pakistani company's claim of user of trade
mark TOSHIBA since 1979.

In the case of Cooper's Incorporated v. Pakistan General Stores, reported in 1981

SCMR 1039 it was held at pages 1042 and 1045.

even seller not selling "that fact of appellant having not been selling its products in Pakistan because
goods in Pakistan TM
cannot be copied of import restrictions does not entitle respondent to copy appellant's trade mark
since by doing so it deceives public into thinking that its products are products
why Jocky TM was
of appellant. Respondent also not proving use of trade mark 'Jocky' being
adopted it has to justify honestly undertaken and such burden lying on respondent to discharge.
the def
Registrar, held rightly held respondent to have dishonestly copied appellant's
mark and refused respondent's application for registration of such mark."

In Alpha Sewing Machine Co. v. Registrar of Trade Marks reported in PLD 1990 SC
1074 at paged 1076 and 1077 it was observed as follows:

why someone else "The learned counsel for the petitioner obviously remained unable to give any
satisfactory reply as to why in the presence of an attractive mark of their own,
'Alpha Sewing Machine' Company, the petitioners are keen to have Trade Mark
of Respondent No.2...

Observation in Montgomery Flour Mill's case (PLD 1973 Kar.567). With regard, to
dishonest adoption of trade mark by Pakistani company were approved by the
Honourable Supreme Court in the appeal in the case of Seven-up Company v.
Kohonoor Thread Ball Factory, reported as PLD 1990 'SC 313 at page 345 in the
following words:--

"The applicants for this registration mark had a wide and open field to choose
from. They decided upon the trade, name of another which also happens to be
name of the company which has heavily invested in that trade name and`
goodwill appurtenant to it. With that real likelihood of deception and confusing
it w, 3 clearly a case where registration should have been refused:"

In Beecham Group v. Ahmed Ismail reported in PLD 1987 Karachi 356 at page 363 it
was observed as follows:-- . .

"I am, therefore, satisfied that the conduct of the respondent No. l in
appropriating trade mark of the applicant who are foreign owners is not proper.
The respondent No. 1 had not applied for registration with clean hands ....In a
recent conference on Trade Marks and ` Patents Intellectual-property as it was
termed held at Islamabad the necessity of safeguard to the rights of owners of
foreign trade marks and patents was universally accepted. Mr. Justice
Muhammad Haleem Chief Justice of Pakistan in his Presidential Address
 1/25/22, 11:08 AM 2001 M L D 39

comments of Justice Haleem in a conference in Islamabad on protecting foreign Trade Mark

reported in PLD 1986. Jour. 353 has dealt with the subject in a beautiful
manner and has urged the need for protecting such rights and at the same time
he has taken due note of the interests of the developing countries."

In another case entitled Unilever Ltd. v. Sultan Soap reported in PLD 1991- SC 939 at
page 951 while dealing with the question whether a mark will cause confusion or
deception it was observed that:-- protection becomes more vital when someone's popular TM and
its Trade Name are same

"This criteria become more important where proprietor's trade mark arid trade
name are same or any invented word is sought to be imitated. In such
circumstances the applicant for registration of similar or identical mark has to
establish honestly and bona fides of higher decree. " .

It was held in National Detergents Ltd. v. Nirma Chemicals Works reported in 1991
MLD 2357, at pages 2363 and 2364 that:--

how inference can"That appellants have not alleged that the first respondents had abandoned any
be drawn that some
one has abandoned
intention to use their foreign trade mark in Pakistan for the goods and such
his mark when he inference cannot also be drawn in this case as the respondents have themselves
has applied for filed application for registration of their mark and have expressed their
registration intention to use it in Pakistan. The use of the word ,'Nirma' is clearly not bona
fide. No appreciable reasons has been shown by the appellants or their counsel
except with the intention to cause confusion. The conduct of the appellants in
appropriating Trade Mark of foreign owners is not proper. "

The plaintiff's suit, apart from infringement of trade mark MARS by the defendant is
also based on passing off by the defendant of its goods under the imitated trade mark
MARS as that of the plaintiff as it is the plaintiff who exclusively enjoys tremendous
reputation and goodwill throughout the world including Pakistan in its trade mark
MARS.

In Tabaq Restaurant v. Tabaq Restaurant reported in 1987 SCMR 1090 it was stated
approving the statements from Salmond on jurisprudence that:--

salmond on "He who by his skill and labour establishes a business acquires thereby an
passing off interest in the goodwill of it, that is to say, in the established disposition of
customers to resort to him. To this goodwill he has an exclusive right which is
violated by any one who seeks to. make use of it for his own advantages, as by
falsely representing to the public that he is himself carrying on the business in
question.. Special forms of this right of commercial goodwill are right to the
name under which he carries on business or sells his goods, to this extent at
least that no one is at liberty to use that name for the purpose of deceiving the
public and so injuring the owner of it. He has a similar right to the exclusive
use of the marks which he impresses upon his goods and by which they are
known and identified in the market as his."

In the case of Tektronix Incorporated v. M. Abdul Mannan reported in PLD' 1973

Karachi 14 while restraining the defendants, the learned Judge, amongst others, relied
on the following passage at page 990 of Clark and Lindswell on Torts, 11th edition
(page 17, para. 5).

clark and "It is an actionable wrong for a trader so to conduct his business, as to lead the
lindswell on
the concept
belief that his goods or business are the goods or business of another. This
of passing wrong is known as. 'passing off'. It is p immaterial, whether the false
off
representation, as to the goods for business involved in passing off, is made
expressly by word, or impliedly by the use or imitation of a mark, trade name
or get-up, with which the goods of another are associated in the minds of the p
public. "
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In the said case at page 17 para. 5, reliance was also placed on the following passage at
page 690 of Salmons .Law of Torts 13ih edition.

"The true basis of the action is that the passing off injures the rights of property
in the plaintiff, that right of property being his right to the goodwill of his
business. In general the violation of the right to property is actionable, even
though it is innocent and no damage has been proved:"-

In A & F Pears Ltd. v. Ghulam Haider PLD 1959 (W. P.) Kar.154 (at pages 156 and,
157) it was stated.

borrowing mark "A mark vouches for the goods which bear it if another person borrows it, then
means borrowing
reputation he borrows the reputation of the others too. Unfair Competition may exist not
only in the sale of goods of the same character but in the unfair appropriation
and use of the trade mark of another."

law of
"In Muhammad Ismail v. M/s. Soofi Soap Factory PLJ 1973 Lah. 208 (Copy
passing off well enclosed as 10) at page 215 para. 26, the law relating to passing off has been
explained in preposition
stated in a few propositions; (1) -it is unlawful for a trader to pass-off his goods
as the goods of another (2) Even if this is done innocently it will be restrained.
A fortiori, if done designedly, for that is fraud, ,(4) Although the first purchaser
is not deceived, nevertheless if the article is not delivered to him as to be
calculated to deceive a purchaser from him, that is illegal."

The purpose of this law or concept of passing off is well-explained in AIR 1980 Delhi
254; at 256, para. 12 (Eiora Ind. v. Banaras Days).

The purpose of tort of passing off is to protect commercial goodwill, to ensure

that people's business reputations are not exploited. Since business "goodwill" is an
asset, and therefore, species of property the law protects it against encroachment as
such. The tort is based on economic policy, the need to encourage enterprise and to
ensure commercial stability. It secures a reasonable area of monopoly to traders. It is
thus, complimentary to trade marks law which is founded upon statute rather than
common law..

In the famous treatise law of Trade 'Marks and passing-off by Narayanan (Third
Edition), in paragraph 1239-A, while discussing the characteristics of Passing-off, it is
mentioned:--

" 1239-A. Essential characteristics of a passing off action. "

"The essential characteristics which must be present in order to create a valid

cause of action for passing off is stated by Lord Diplock are; (1) MRS
representation (2) Made by a person in the Course of Trade. `(3) to prospective
customer of his or ultimate consumers of goods or services supplied by him, (4)
which is calculated to injure the business or goodwill of another trade (in the
sense that this is a reasonably seeable consequence and (5) which causes actual
damage to a business or goodwill of the trader by whom the action is brought
or a will probably do so. ".

The Principle of passing off has been stated by Lord Langdale M.R. as early as 1842 as
being:--

Definition "A man is not to sell his own goods under the pretence that they are the goods
of another man" (Perry v. Truefitt, 6 Beav, 66= (1842) 49 ER 749).
 1/25/22, 11:08 AM 2001 M L D 39

The defendant is selling drinks and the plaintiff chocolates. The defendant's defence is
that both are different goods and the general principles of passing off shall not apply
for them. Defendant's strongest defence is that its goods, drinks/beverages are different
goods from the goods manufactured and sold by the plaintiff (Chocolates). However,
plaintiff's drinks/beverages marked with its world famous trade mark MARS are
available and offered for sale in various countries of the world including Pakistan.
Plaintiff has also made a case for passing off in which case identity or similarity of the
goods is not necessary. Defendant's goods need not be the same, they may be allied,
of goods cognate or even different. In a passing off action there is no requirement that the
similarity

defendant should be carrying on a business which competes with that of the plaintiff or
not necessary

which would compete with any natural extension of the plaintiff's business. It is
submitted by the plaintiff that the defendant's goods namely, drinks/beverages and the
plaintiff's goods (without prejudice to plaintiff's use of MARS in relation to
drinks/beverages) namely, chocolates are the goods, of the same or similar description,
they are sold through same trade channels, through the same outlets and purchased by
the same class of purchasers, therefore, from the common men point of the view, both
the chocolates and drinks/beverages are Food Products.

(3) in the famous treatise called, Law of Trade Marks and Passing off P.
Narayanan (Fourth Edition), in paragraph No.15.86, with reference to the
criteria to determine whether the goods are of same description, it has been
mentioned:--

" 15.86 Factors to be considered. The various matters to be taken into

consideration for deciding whether the goods are of the same description are:

(a) the nature and composition of the goods;

(b) their respective uses and functions; and

(c) the trade channels through which they are bought and sold.

(3.1)Applying the above criteria to the goods of the plaintiff (chocolates and
goods of the Defendant Drinks/Beverages), it is clear that both are foods
predictors, available at same stores and have a connection in the course of trade
or otherwise, their trade channels are same.

(3.2) In a recent judgment in the case involving famous trade mark LIPTON,
titled Unilever PLC v. R.B. Oil Industries, reported in 1999 MLD 1447, where
the goods of plaintiff were "tea and defendant's goods" were Lipton Banaspati
it was held:--

"it is true that the plaintiff or its subsidiaries are not producing and marketing
Banaspati oil with the Trade Mark Lipton, a glance at the Mark Lipton used by
the defendant for its predictors Lipton Banaspat: clearly tends to show that,
using someone's TM there is a considerable similarity of get-up, colour scheme, shape, style and

goods is not a defencedevice with that of the registered trade mark of the plaintiff who are
at your different

against the breach

undisputedly manufacturing and marketing a number of foods items with this
trade marks since long. Argument advanced on the face of it may sound to be
attractive by reason of non-production of Banaspati oil by the plaintiff
Company under its registered trade mark and strictly speaking there may be no
infringement of their legal right as to the use of their trade mark for this
specific product. The fact, however, remains that by imitating their trade mark
extensively the defendant prima facie if not contravening the trade mark in
respect of the goods produced by the plaintiff is at least apparently wrongly and
unlawfully using their products is in fact produced by the plaintiff Company.
Public at large being fully conversant with and by the extensive use of
plaintiff's products are quite likely to be duped and gather an impression as if
 1/25/22, 11:08 AM 2001 M L D 39

Banaspati Lipton produced and marketed by the defendant is the products of

the plaintiff multinational company who have acquired lawful vested right to
produce and manufacture various food items with their trade name. The label,
color scheme, device style and mark used by the defendant on their product of
Lipton Banaspati tends to give prima facie impression that; notwithstanding it
he mentions of the defendant-Company's name on the tin packs of Banaspati
oil, public at large is most likely to be deceived and form a genuine opinion that
their product is the product of the plaintiff-Company which by any stretch of
reasoning and logic cannot be ignored to the utter detriment and disadvantage
of the plaintiff. After all the defendant has a wide range and open field to
choose another name for its product and in case it insists for its production
under the trade name of the plaintiff, there is hardly any strong and convincing
reason to justify the use of registered trade mark extensively used and enjoyed
by the plaintiff‑Company for over decades."

5. The leading case in this respect' is PLD 1990 SC 313 (7‑Up case 7‑Up was not an
invented word) wherein at page 345 dealing with beverages (Cl.32) and Pan Masala
(C1.30) it has been held that:‑‑

"the fact that the company '7‑Up' is a multinational of international repute for
beverage and for that reason not likely to engage itself in trading in such an
indigenous products may academically be sound for a marketing analyst and
really of no or very little concern to the class of consumers served by these
products. Their sale points and outlet points are quite often the same. The
consumers served are largely of the same category. Both the products though
classified differently for the purpose of trade mark fall, from consumers point
of view, in the same category of light refreshment of Re-preparations. Their
features do make out a case of there being likelihood of confusion or deception
with regard to their source. The applicants for this registration mark have a vide
and open field to choose from. They decided upon the trade name of another
which also happens to be the name of the company which has heavily invested
in the trade name and goodwill appurtenant to it. With that real likelihood of
deception and confusing it was clearly a case where registration should have
been refused."

(4) In the case reported as PLD 1990 Supreme Court 107‑4 at page 1076
(Philips case Philips was not an invented word) the Supreme Court approved
the following finding of the High Court "

(6‑1) It is not uncommon nowadays to find sewing machines being sold at the
same shop where household appliances manufactured by respondent No.2
bearing Trademark Philips are offered for sale...
consumer might think that the goods he is purchasing
is of the company 'phiilps"

"If any purchaser of sewing machine were to be offered for sale a machine
manufacture by the appellant bearing the mark Philips, he would naturally take
it to be a product of respondent No.2 and with the image of quality which he
has in his mind regarding respondent No.2's products he might readily buy it
only to find soon afterwards that he had been duped and cheated. There is every
likelihood of causing of deception and confusion with the use of the mark
Philips by the appellant and in such case different nature of goods loses
relevance.

And then at page 1077 it was observed as follows:‑‑----

"He contended that our law recognizes and also protects trade mark in relation
to goods and not independently of goods. Therefore, if the respondent No.2 is
not manufacturing sewing machines or goods like sewing machines, the
petitioner could legitimately claim and obtain the registration in question. The
1/25/22, 11:08 AM 2001 M L D 39

proposition is not that simple. Even then the question of deception and
confusion could not be ignored as that remains the pivotal point in our law on
the issue involved in this case."

7.In PLD 1991 Supreme Court 27 at page 33 (Toshiba case) paragraph No. 8 the
Honourable Supreme Court held as follows:‑‑

"The view taken by the Registrar of Trade Marks that not only the trade mark
has to be identical/similar but also the goods covered by the trade mark have
also to be identical/similar, is not in accord with law, after the similarity of the
trade mark was established and phonetically it was found to be identical. "

8. In the case of Unilever Ltd. v. Sultan Soap Factory reported as PLD 1991 Supreme
Court 939 at page 951 it has been held as follows:‑‑

"It is now well‑settled that it is not necessary that the goods of both the parties
may be the same. However, in case where goods are different the ultimate
object of finding out confusion and deception is to be judged on consideration
whether the name of the owner of the registered mark is so much associated
with the goods that if same or similar mark is registered, the purchaser will take
the goods under such mark in the normal course, the product of the proprietor
of the registered mark. Therefore, in such case besides identical nature or
similarity of trade mark the governing factor is the association of proprietor's
name with the goods, its reputation and goodwill. The case of 7‑Up PLD 1990
SC 313 and Alpha Sewing Machine's case PLD 1990 SC 1074 illustrate this
conclusion. The criteria become more important where proprietor of trade mark
and trade name are the same or any invented word is sought to be imitated. In
such circumstances the applicant for registration of similar or identical mark
has to establish honesty and bona fide of higher degree.

The counsel have relied on the following case‑law:‑‑

(1) PLD 1968 Kar. 369.

(2) CLC 1986 Kar.1636.
(3) PLD 1990 SC 313.
(4) PLD 1990 SC 1074.
(6) 1992 MLD 2307:
(7) AIR 1969 Bom. 24.
(8) AIR 1986 Delhi 329.
(9) AIR 1994 Delhi 239.
(10) AIR 1985 Allahabad 242
(11) AIR 1944 Lahore 386.
(12) AIR 1983 Punjab 418.
(13) 1992 MLD 2307.
(14) 1973 R P C 560
(15)1983 FSR 155
(16) 1992 RPC 529.
(17) 1997 RPC 155.
(18) 15 RPC 105.

Therefore, in view of the above keeping in mind the fact that the petitioner's mark
enjoys any international reputation and in case, if the injunction application is not
granted then it shall encourage all other types of organizations to take advantage of the
popularity of such internationally known marks and claim that they are either previous
users or their mark is registered vis‑a‑vis the international mark. Since at the present
juncture one is only to appreciate whether prima facie a case is made out or not relying
on the above noted case‑laws and the observations made therein the injunction
application is granted prayed.
1/25/22, 11:08 AM 2001 M L D 39

Q.M.H./M.A.K./M‑86/K Application allowed.

1/25/22, 11:08 AM 2001 M L D 39

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