SELECT SPORTS A.S. CO. Versus TEMPO ENTERPRISES

This is first appeal against the order dated 1-10-1996 passed by the learned District Judge, Sialkot. The brief facts are that the appellant company, the owner of the registered design of footballs, filed suit for permanent injunction under the Patents and Design Act against the defendant/respondent. Alongwith the plaint an application for temporary injunction was also filed. This application for temporary injunction was dismissed by the learned District Judge observing that the representation of the pattern on football which was registered in the name of the plaintiff was in dark colour whereas the pattern of defendant/respondent was in the light orange colour, therefore, the ornamental pattern of design of the defendant's football was different from the one registered in the name of the plaintiff/appellant and thus the plaintiff had failed to make out a prima facie case for grant of temporary injunction. It was also observed that the plaintiff was not manufacturing foot-balls in Pakistan whereas the defendant has been manufacturing it and also receiving orders for sale of footballs.

2 The admitted position is that the plaintiff/appellant is the owner of registered design vide Registration No.99217-D dated 15-2-1995. It is claimed in the plaint that the plaintiff company supplies footballs of this design in other countries of the world, whereas the defendant/respondent has not got his design registered and that the respondent company also did not choose to make an application to the Controller or to the High Court under section 51-A of the Patents and Designs Act, 1911 for cancellation of the registration of design of the plaintiff/appellant.

3. Learned counsel for the plaintiff/appellant submitted that since the appellant is the owner of the registered design, it has the exclusive right to use the same in accordance, with section 53 of the Act and the defendant/respondent or any other person cannot imitate the same or use this design or their own manufactured football. On the contrary, learned counsel for the defendant/respondent relying on "Universal Brushware (Private) Limited v. Syed Industries" (1991 CLC 382) contends that since the design of the plaintiff/appellant is admittedly being used in other countries, the manufacturers in Pakistan cannot be restrained from using such a design.

4. It is not the case of the respondent that the petitioner is imitating the design of some other registered owner, therefore, the ratio decidendi of the precedent case is not applicable to the present case.

5. The learned counsel for the respondent relied on "American Cyanamid Company v. Pakistan Pharmaceutical Produce Ltd." (1970 Law Notes 455) and "Karachi Textile Works v. Multan Handloom Factory" (PLD 1955 Sind 351). These cases lay down that in granting temporary injunction against violation of a design the same principles apply as are applicable in the case of violation of a patent, with which there is no cavil.

6. On the contrary learned counsel for the plaintiff/appellant relying on "Silver Cotton Textile Mills Ltd. and another v. Bawany Violin Textile Mills Ltd. (PLD 1963 (W.P.) Karachi 79) submitted that the plaintiff/appellant is user of the registered design which was got registered by them on 15-2-1995 and on the contrary respondent/defendant does not possess such registration in their favour.

7. The appellant is the registered owner of the design in question, therefore, it is not lawful for any other person to apply or cause to be applied to any article, this registered design, as provided under section 53 of the Act. This by itself is sufficient to establish prima facie case in favour of the appellant. There is also likelihood of causing irreparable loss to the appellant company by using their registered design. The goods of the appellant company are sold in the International Market and if due to any reason goods of substandard quality are supplied to the International Market by any other user of the similar design, it would ultimately adversely affect the goodwill and the business of the appellant company.

8. I, therefore, accept this appeal, set aside the order of the learned District Judge and issue temporary injunction against the respondent/defendant as prayed for. However, in view of the urgency of the situation, the learned trial I [ Court is directed to conclude the trial of this case within one month after this order is received by him, even if the proceedings are required to be held on day to day basis.

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9. Needless to say that any factual observation made herein shall not prejudice the case of the parties before the learned trial Court.

No order as to costs

A.A./S-154/L Appeal accepted