Trade Mark Cases

Citation Name : 2006 CLD 615 LAHORE-HIGH-COURT-LAHORE
Side Appellant : Hafiz MUHAMMAD RAMZAN through Legal Heirs
Side Opponent : Hafiz HABIB-UR-REHMAN




---Ss. 16, 21, 26, 57, 73 & 76---Registration of Trade Mark --Infringement of registered Trade Mark ---Suit against---Plaintiff, was engaged in manufacture of sweetmeat commonly known as 'Multani Sohan Halva' since before independence of the country and Trade Mark was also registered in his favour---Defendant, a former employee of plaintiff, after leaving service of plaintiff, started manufacturing and selling said product under words 'Hafiz Ka Multani Sohan Halva'---Goods were being sold by defendant in packets which bore same inscription, colour and design as registered design of plaintiff, which act of defendant constituted Infringement of plaintiffs registered Trade Mark /name---Plaintiff in his suit filed against Infringement of his registered Trade Mark , also sought restraining defendant from selling disputed goods in packets and other identical packets inscribed with name 'Hafi.z' design, colour and general get-up resembling in material particulars with said registered Trade Mark ---Trial Court after Comparing name of goods concerned, packet in which same were being sold, inscription, colour and design had arrived at the conclusion that public at large would be confused and misled---Wrapper used by defendant was absolutely similar to wrapper used by plaintiff----Appellate Court agreed with the opinion formed by Trial Court upon a comparison of said two sets of wrappers and tins in which goods were being sold---Word 'Hafiz' was adopted by plaintiff as registered proprietor in the year 1963 and worked thereon since then continuously and without any interruption---Defendant could not come out with the plea that word 'Hafiz' had become 'public juris'---Appeal filed by defendant against judgment of the Trial Court, was dismissed, in circumstances.





















Citation Name : 2006 CLD 580 KARACHI-HIGH-COURT-SINDH
Side Appellant : TELEBRANDS CORPORATION through Attorney
Side Opponent : TELEBRANDS PAKISTAN (PVT.) LIMITED




--Ss. 16, 22 & 73---Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 & 2---Specific Relief Act (I of 1877), Ss.42 & 55---Suit for declaration---Infringement of Trade Mark ---Application for grant of injunction against defendants---Not only the defendants were using the plaintiffs Trade Mark but it was crucial to note that its products were identical to those developed/produced and Mark eted by the plaintiff and even the pictures and graphics being used by the defendants for depicting, advertising and Mark eting the said products were in fact copies of such photographs, descriptions and graphics as used by the plaintiff and as such by Mark eting and setting such counterfeit, the defendants were in fact confusing the buyers into believing that the defendants' products originated from the plaintiff and as such the defendants were clearly infringing upon the rights of the plaintiff and were not only illegally diverting the plaintiffs customers/business to them but were also putting the plaintiffs goodwill into jeopardy---High Court granted plaintiffs application under O.XXXIX, Rr.1 & 2, C.P.C. restraining the defendants from illegal use of the plaintiffs Trade Mark and advertising or Mark eting any goods under the said Trade Mark till the disposal of the suit and subject to final adjudication of the matter after recording evidence---Principles.





















Citation Name : 2005 CLD 1414 LAHORE-HIGH-COURT-LAHORE
Side Appellant : ADIDAS INTERNATIONAL B.V. through Attorney
Side Opponent : PRIMA SPORTS (PRIVATE) LIMITED through Director/Chief Executive/Manager




---Ss.21 &. 25---Civil Procedure Code (V of 1908), O.XXXIX, Rr.1 & 2---Suit for Infringement of Trade Mark ---Application for temporary injunction---Trial Court as interim relief restrained export of disputed goods---Trial Court thereafter firstly rejected plaint and then such application---Validity---high Court with consent of both parties set aside impugned judgment/decree and remanded case to Trial Court for its fresh decision with observations that injunctive order passed in appeal would remain operative for a period of one month in the interest of justice.





















Citation Name : 2005 CLD 1805 KARACHI-HIGH-COURT-SINDH
Side Appellant : ROOMI ENTERPRISES (PVT.) LTD.
Side Opponent : STAFFORD MILLER LTD.




---Ss. 39, 28, 33 & 76---Trade Mark ---Agreement of user---Cancellation of---There can be only one Trade Mark , one source and one proprietor and cannot have two origins---Registered Trade Mark can be assigned with or without goodwill of the business concerned while the unregistered Trade Mark cannot be assigned except along with the goodwill of the business concerned---Appellant, in the present case, is not claiming assignment of Trade Mark to him nor he is claiming any right in it by way of its user for last many years, but his claim is based upon the "agreement of user", which, in any event, cannot be said or termed as assignment of Trade Mark to him---Appellant, in the present case, admittedly had licence to manufacture and sale of product of the registered Trade Mark of the respondent---Agreement of user of Trade Mark , executed pursuant to license to manufacture and sale, as per appellant's own showing was not registered as required under S.39 of the Trade Mark s Act, 1940---Appellant could not be said to be a registered user of the Trade Mark ---Even if said agreement of user was registered with the Registrar of Trade Mark s, such registration was for a specified period of time, and appellant could not be allowed to use the same without the consent of proprietor of Trade Mark either expressly or impliedly thereafter---Any use of such Trade Mark s, after the expiry of period of user, without the consent of proprietor of the Trade Mark , would make a case of passing off or Infringement against its user as the case may be---When the appellant himself was claiming right of user for the Trade Mark and right to manufacture it through the respondent, paying licence fee to him, appellant could not deny the right claimed by the respondent in respect of Trade Mark and the right of its proprietor---Appellant, in circumstances, had failed to establish any right to use the Trade Mark and/or manufacture the products under the Trade Mark , in the absence of a valid agreement of user and manufacture either with the respondent or with the proprietor---To allow the appellant to use the same, would tantamount to allow use of property owned by someone else without any lawful justification.





















Citation Name : 2005 CLD 1546 KARACHI-HIGH-COURT-SINDH
Side Appellant : Messrs ADT SERVICES AG through Attorney
Side Opponent : Messrs ADT PAKISTAN (PTV.) LTD.




-S. 46---Civil Procedure (V of 1908), O.XXXIX, Rr.1 & 2---Copyright Ordinance (XXIV of 1962), S.9---Infringement of Trade Mark ---Application for grant of injunction---Provision of S.46, Trade Mark s Ordinance, 2001 recognizes right of action against any person for passing off goods of another person or services as services provided by another person or the remedies in respect thereof---Likewise in case of copyright, right or jurisdiction to restrain breach of trust or confidence cannot be defeated, where a person is shown to have obtained or claims copyright in breach of trust or confidence---Plaintiffs, in the present case, had been able to demonstrate that they had adopted the Trade Mark in question in Pakistan on 7-10-1997 when they first applied for its registration---Irrespective of the fact that Mark had not yet received registration, fact remained that plaintiffs had not only made out a case of "passing off' under S.46(2) of the Trade Mark s Ordinance, 2001 `and so also case of breach of trust and confidence in terms of S.9, Copyright Ordinance, 1962---Copyright cannot be used as a substitute or alternate for the Trade or service Mark s---High Court, while expressing anguish over the copy culture and growing tendency of piracy and misuse of copyright as a substitute to Trade Mark , suggested amendment in the Copyright Ordinance, 1962--- Defendant was not only morally, ethically, but legally committed not to appropriate property . comprising Trade and service Mark s vesting in the plaintiffs---Defendant, directly or indirectly could not be allowed to misappropriate the property of his master or Principal---If such tendency was encouraged, it would be devastating for the corporate and commercial Trade and practice in Pakistan and will deter foreign entrepreneurs to enter and make investments in Pakistan---Plaintiffs, in circumstances, had not only made out a prima facie but good case for the grant and confirmation of injunctive relief.





















Citation Name : 2005 CLD 1235 KARACHI-HIGH-COURT-SINDH
Side Appellant : MUHAMMAD YOUNUS SHAIKH
Side Opponent : COREX ENTERPRISES




--Ss. 46, 117 & 129---Civil Procedure Code (V of 1908), S. 79 & O. VII, R. 11---Constitution of Pakistan (1973), Art. 189---Suit for injunction against Infringement of Trade Mark , passing of; damages and account of profits-Plaintiff, impleaded the party alleged to be infringing the Trade Mark and the Collector of Customs (Appraisement) but failed to implead Federal Government in the suit---Validity---If a suit was filed against the Government, the suit should have been filed in the name of Federal Government as per provision of S.79, C.P.C.---Suit, in circumstances, without making the Federal Government or Provincial Government as party was not maintainable and was violative of S. 79, C.P.C. and Art. 189 of the Constitution---Suit . being hit by the said provisions of law, plaint was rejected under O. VII, R.11, C.P.C.





















Citation Name : 2005 CLD 802 KARACHI-HIGH-COURT-SINDH
Side Appellant : FEDERAL MOGUL PRODUCTS, INC. U.S.A. through Authorized Signatory---Plaintiff
Side Opponent : TAHA INDUSTRIES




--Ss. 10(2) & 21---Copyright Ordinance (XXXIV of 1962) S. 39--- Specific Relief Act (I of 1877), S. 54---Civil Procedure Code (V of 1908), O. XXXIX, Rr. 1 & 2---Plaintiff had brought suit against defendants for restraining them from using then Trade Mark s 'Wagner', 'Lockheed', '21' and 'Sunburst Logo with specified colour scheme, design and get-up for packaging which was property of plaintiff since long plaintiff had claimed that use of Trade Mark and copyright plaintiff by defendants for their products of brake fluid was clear Infringement of their right and title and that defendants be restrained perpetually from using the same­--Plaintiff together with plaint had also filed an application for temporary injunction restraining defendants from using the Trade Mark , Colour Scheme, design and get-up of packaging/label till the decision of the suit---Defendants diet not dispute use of Trade Mark in dispute and also did not deny registration of Trade Mark and copyright of plaintiff it Pakistan as claimed by plaintiff in suit, but had pleader' that they had adopted and used said Trade Mark since 1994 and had acquired proprietary rights therein-­Defendants had not filed income returns relating to their business concern for the year 1994 and onward---Non filing returns had led to the inference adverse to the defendants---Use of Trade Mark s in question claimed by defendants was much later in point of time than its use and registration by plaintiff in Pakistan---Plaintiff, who had exclusive right to use the Trade Mark in question since long prior to defendants, had a strong prima facie case---In use of plaintiff's Trade Mark by defendants great possibility was misleading the purchasers and they could be deceived-- -where use of Trade Mark by defendants had potential to affect the image and goodwill acquired by plaintiffs, balance of convenience would be on the side of plaintiff as it would suffer irreparable loss in case temporary injunction prayed for by it was refused---Plaintiff having made out a case for temporary injunction same was granted till decision of suit.





















Citation Name : 2004 CLD 1383 PESHAWAR-HIGH-COURT-NWFP
Side Appellant : SOCIETE DES PRODUITS NESTLE S.A.
Side Opponent : FOOD INTERNATIONAL (PVT.) LTD.




----Ss.8(a), 10(1), 20 & 21---Specific Relief Act (1 of 1877), S.54---Right to use Trade Mark ---Misuse of registered Trade Mark ---Plaintiff had claimed that he was the owner of registered Trade Mark "MILO" which was registered in his favour since 1950 in relation to food products etc. and registered number was also given to him---Plaintiff had also claimed that his goods under Trade Mark "MILO" were being offered and advertised in Pakistan for about last 20 year and goods produced under said Trade Mark were recognized by general public to be the products of plaintiff who had exclusive right to said Trade Mark ---Plaintiff had alleged that defendant was indulging in producing and Mark eting branded `Bread' in the name of "MILO" which was patent Infringement of right of plaintiff---Contention of defendant that `Bread' was not an item produced by plaintiff and that products of plaintiff were different than the product of defendant, was repelled---Contention of defendant that word "MILO" was not an invention of plaintiff, but was a generic name signifying a kind of grain, was also of no substance because `Bread' produced by defendant was not the product of Milo grains, but was made of wheat---Word `MILO'; with reference to grain, could not be made justification, for the use of registered Trade Mark of plaintiff ---of Milo grain for products of bread, had been admitted by the defendant and it was not a case of violating the colour scheme or get-up of plaintiff, but was virtually a misuse of registered Trade Mark `MILO' which obviously was exclusive ownership of the plaintiff-­Registered Trade Mark of plaintiff had been infringed and if such Infringement was allowed to be continued, protection granted to plaintiff under Trade Mark s Act, 1940 would become ineffective---Impugned judgment and decree of Trial Court whereby suit filed by plaintiff was dismissed, being the result of speculative, artificial reasons and based on misinterpretation of evidence and misconception of law, were set aside and suit filed by plaintiff was decreed.





















Citation Name : 2004 CLD 1383 PESHAWAR-HIGH-COURT-NWFP
Side Appellant : SOCIETE DES PRODUITS NESTLE S.A.
Side Opponent : FOOD INTERNATIONAL (PVT.) LTD.




--Ss.8(a), 10(1), 20 & 21---Specific Relief Act (1 of 1877), S.54---Right to use Trade Mark ---Misuse of registered Trade Mark ---Plaintiff had claimed that he was the owner of registered Trade Mark "MILO" which was registered in his favour since 1950 in relation to food products etc. and registered number was also given to him---Plaintiff had also claimed that his goods under Trade Mark "MILO" were being offered and advertised in Pakistan for about last 20 year and goods produced under said Trade Mark were recognized by general public to be the products of plaintiff who had exclusive right to said Trade Mark ---Plaintiff had alleged that defendant was indulging in producing and Mark eting branded `Bread' in the name of "MILO" which was patent Infringement of right of plaintiff---Contention of defendant that `Bread' was not an item produced by plaintiff and that products of plaintiff were different than the product of defendant, was repelled---Contention of defendant that word "MILO" was not an invention of plaintiff, but was a generic name signifying a kind of grain, was also of no substance because `Bread' produced by defendant was not the product of Milo grains, but was made of wheat---Word `MILO'; with reference to grain, could not be made justification, for the use of registered Trade Mark of plaintiff ---of Milo grain for products of bread, had been admitted by the defendant and it was not a case of violating the colour scheme or get-up of plaintiff, but was virtually a misuse of registered Trade Mark `MILO' which obviously was exclusive ownership of the plaintiff-­Registered Trade Mark of plaintiff had been infringed and if such Infringement was allowed to be continued, protection granted to plaintiff under Trade Mark s Act, 1940 would become ineffective---Impugned judgment and decree of Trial Court whereby suit filed by plaintiff was dismissed, being the result of speculative, artificial reasons and based on misinterpretation of evidence and misconception of law, were set aside and suit filed by plaintiff was decreed.





















Citation Name : 2004 CLD 516 LAHORE-HIGH-COURT-LAHORE
Side Appellant : MUHAMMAD JAHANGIR
Side Opponent : HASSAN QAISER




----Ss. 73, 21, 25 & 23---Copyright Ordinance (XXXIV of 1962), S.39---Civil Procedure Code (V of 1908), O.XXXIX, Rr.1, 2 & S.151---Suit ,for Infringement of Trade Mark and copyright with the prayer that the defendants be stopped from passing on their goods as goods of the plaintiff--Admitted position was that the plaintiffs were holders of the Trade Mark and copyright registration in their favour, while the defendants were without these and the main ground urged by the defendants was that the plaintiffs had obtained the registration of the Trade Mark and copyright by suppression of true facts and defendants had been using the Trade Mark in question since long, whereas the plaintiffs had been using different other names while submitting tax returns etc.---Application of plaintiff under O.XXXIX, Rr.1 & 2 read with S.151, C.P.C. was granted by the District Judge and defendants were restrained from using of the Trade Mark in question till final decision of the suit ---Validity--Fact that defendants had been using the Trade Mark in question before the registration of the Trade Mark and thus were protected. under S.25 of the Trade Mark s Act, 1940 would have to be established during the course of evidence---Plaintiffs were the proprietors of the Trade Mark and a prima facie case was established in their favour--High Court having not found any error with the basic findings of the District Judge while disposing of the application for injunction, declined to interfere---If the plaintiffs had obtained registration of Trade Mark and copyright by suppression of true facts, the matter be brought to the notice of the Registrar of Trade Mark s and objections be filed before him in accordance with law---Until that was done, the plaintiffs would. remain the proprietors of the Trade Mark having a vested right---Finding no merits in the case, High Court dismissed the appeal with the observation that the present order of the High Court shall have no bearing, in case, any of the parties approached the Registrar, Trade Mark s for adjudication nor on the ultimate decision at his end.