PAKISTAN BATTERY MANUFACTURING CO., KARACHI Versus MUHAMMAD HUSSAIN

The plaintiffs in this suit are a partnership firm and have: been manufacturing and selling batteries and battery cells since 1952 under the trade mark "3‑Stars" which has been registered under the Trade Marks Act, 1940, under registration No. 18275, the registration certificate being granted on 14th April 1952. The plaintiffs' suit for damages for infringement of registered trade mark and for injunction is based on the claim that batteries and battery cells manufactured and sold by them are of a very superior quality in consequence of which they enjoy a considerable reputation and goodwill in the market for the high quality of their products which they extensively advertise. The plaintiffs contend that defendant No. 1 in association with defendants 2 and 3 has been manufacturing and/or selling batteries and battery cells in relation to which the defendants have been using the mark "5‑Stars" which according to the plaintiffs is a colourable imitation of their trade mark and is likely to deceive or cause confusion in the course of the trade and to their customers. The plaintiffs have produced annexures to their suit to show the representation used by them in their battery and battery cells together with cartons in which they are contained as also those so manufactured and sold by the defendants. The plaintiffs thus claim that their trade‑mark has been infringed and that the defendants continue to do so causing plaintiffs considerable loss in their reputation.

2. Defendants 1 and 3 in their written statements have denied that they are using the trade‑mark "3‑Stars" as alleged by the plaintiffs. The suit has proceeded against defendant No. 2 .ex parte. The main defence of defendant No. 4 who is the contesting defendant is that the plaintiffs' trade‑mark as in use does not correspond with their registered trade‑mark, it being quite different from that registered in favour of the plaintiffs. The defendant's case further is that the plaintiffs' trade‑mark is likely to be expunged from the Register under section 37 of the Trade Marks Act, 1940, that they have applied for registration of their trade‑mark "5 ‑Stars" which has been examined by the Registrar of Trade‑Marks and advertised and that therefore the plaintiffs have no right to sue the defendants for the infringement of their registered trade‑mark "3‑Stars". Their case further is that other battery cells are available in the market under various trade‑marks such as "4‑Stars" "9‑Stars" "Star" "New Stars" "33 Stars" etc. without causing any deception or confusion in the trade. They deny the plaintiffs' claim for damages and compensation.

3. The following issues were framed by the Court on the 19th August 1968 :‑

(1) For how long have the plaintiffs been using the trade mark Exh. A to the plaint in respect of battery and battery cells manufactured and sold by them?

(2) Whether the Trade‑Mark Exh. A to the plaint is registered under No. 18275 in the name of the plaintiff?

(3) Whether the products under Trade‑Mark Exh. A enjoy reputation and goodwill in the market for quality and are .extensively advertised?

(4) Whether defendant No. 1 in association with defendants Nos. 2, 3 and 4 have been manufacturing the battery and battery cells in relation to which the defendants have been using a mark Exh. C to the plaint?

(5) Whether Exh. C to the plaint is a colourable imitation of and/or resembles the said trade‑mark Exh. A.

(6) Whether it is likely that the use of Exh. C by the defendants would cause confusion and deception in the course of trade and business in relation to Exh. A to the plaint and is likely to be taken as a trade-mark of the plaintiffs and/or import reference to the plaintiffs and/or to the battery and battery cells manufactured by the plaintiffs.

(7) Whether the plaintiffs have suffered any loss on account of the infringement, if any, if so, what amount are the plaintiffs entitled to recover from the defendants?

(8) Whether the suit is maintainable as framed?

(9) Whether the suit is properly valued for the purpose of jurisdiction ?

(10) To what reliefs, if any, are the plaintiffs entitled?

(11) General.

4. My findings are

Issue No. 1. Since 1952.

Issue No. 2. Yes.

Issue No. 3. Yes.

Issue No. 4. Yes.

Issue No.'

5. Yes.

Issue No. 6. Yes.

Issue No. 7. As below.

Issue No. 8. Yes.

Issue No. 9. Yes.

Issue No. 10. As below.

5. The only witness examined on behalf of the plaintiffs was their Manager, Mahmood Abdul Karim. No witnesses were either summoned or examined by or on behalf of the defendants.

REASONS

6. Issue No. 1. There is no doubt on this issue. It is admitted by defendants including the contesting defendant No. 4 that the plaintiffs have been using the trade‑mark Annexure `A' to the plaint in respect of battery and battery cells manufactured by them since 1952. Finding accordingly on this issue.

7. Issue No. 2. The plaintiffs produced the Registration Certificate No. 18275, dated 14th March 1952, which for the purposes of these proceedings conclusively establishes that they had acquired the ownership and exclusive right to the use of their trade‑mark "3‑Stars" in relation to battery and battery cells. Finding accordingly.

8. Issue No. 3. Through their Manager, the plaintiffs have led satisfactory evidence and proved that their trade‑mark "3‑Stars" has enjoyed a continued reputation for quality in the market and has been extensively advertised. Figures of sales have been produced from October 1953 up to June 1956 and Mahmood Abdul Karim has further stated that the plaintiffs spend about Rs. 15,000 to Rs. 1,00,000 per year on advertising their trade‑mark "3‑Stars". Finding accordingly on this issue.

9. Issue No. 4. The evidence of Mahmood Abdul Karim is again important on this issue and he has stated that the defendants have been manufacturing battery and battery cells and using the mark "5‑Stars" for their purposes. Defendants 1 and 3 only have denied that they are not doing so. On the other hand, the case of defendant No. 4 is that he is using this impugned mark. No evidence has been led by any of the defendants to deny that they are not manufacturers of batteries and battery cells under this impugned mark. The conclusion, therefore, is irresistible that the defendants are manufacturing these articles and the issue is answered accordingly.

10. Issues Nos. S and 6. Halsbury in his Laws of England, Vol. 32, page 959, has set out the tests to be applied in the assessment of colourable imitations or passing off and states that :‑

In considering whether the resemblance of the get‑up of the different goods is such as to cause deception, it must be remembered that the goods will not be seen side by side, and the proper test is whether the get‑up of the defendants' goods would be likely to deceive a purchaser who is acquainted with the plaintiffs' get‑up, but trusts to his memory. It is to be assumed that the purchaser will look fairly at the goods and that they will be shown fairly to him without distinguishing features being concealed. The Court must also have regard to the class of purchasers by whom the goods would normally be bought and the circumstances of sale. Where the general form of the goods is fixed by necessity more care may need to be exercised in avoiding imitation of the get‑up. Another question to be considered is whether the get‑up of the defendants' goods is such as to suggest a name by which the plaintiffs' goods are asked for and recommended. The Court is also con siderably influenced by any evidence showing that the defen dant has deliberately imitated the plaintiffs' labels and the like.

In Ratan Lai's Law of Torts, the learned author states :‑

"The invasion of a trade‑mark consists not in taking the actual mark, but in so taking and in using it as to injure a business by representing that the goods of the plaintiffs are the goods of the defendant."

The learned author then quoted a passage from the judgment in Singer Manufacturing Co. v. Loog ((1880) 18 Ch. D 395) which reads as under :‑

"No man is entitled to represent his goods as being the goods of another man; and no man is permitted to use any mark, sign or symbol, device or means, whereby without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer . . . . "

In Firm Kooverji Becharlal v. Firm Adam Haji Pirmahomed Esakh (2 A I R 1944 Sind 21) Lobo, J. dealt with the question of a trade‑mark being used by others when a person acquires a right to a particular trade‑mark and what principles are to be observed in the infringe ment of a trade‑mark and also in determining whether there has been a colourable imitation or a passing off in relation to that mark and what is the relief to which the plaintiff is entitled if such an infringement of the trade‑mark has been established. The case for consideration was in regard to two marks one registered under the figure of a peacock with the words 'Moaur Brand' in English thereunder and the other with the representa tion of two figures of two peacocks. In the two lines below the words "Gram Dhall" and "Spl. Quality" were common to both the marks and the rest of the get‑up was identical except for minor difference in the words and that some of the writing was in purple ink instead of red ink. His Lordship concluded on the basis of the principle in Halsbury's Laws of England and Law of Torts and on a comparison of the trade‑mark and the alleged imitation of it before him that there was a deliberate imitation of the trade‑mark by the defendants that there was an infringement of it and the plaintiffs were entitled to an injunction restraining the defendants from using the figures of "peacocks" on the bags containing the words "Gram Dhall" and "Spl. Quality" sent to the South Indian ports. In the light of the above cited principles of law I have examined the‑'trade‑mark registered in favour of the plaintiffs and that which the defendants are using. There is no doubt in my mind as would be crystal clear even on a cursory glance at these two marks that the defendant's mark "5‑Stars" is a colourable imitation of the plaintiffs' registered trade‑mark "3 Stars". It appears to me that the defendants have exerted every possible effort to make out a resemblance between the mark that they are using and the trade‑mark registered in favour of the plaintiffs. The get‑up, design and colours are all identical. The only difference which it has pleased the defendants to make is that they branded their mark "5‑Stars" instead of "3‑Stars" o the plaintiffs. It is also consequential keeping these two designs, marks, etc. side by side, that they are bound to cause confusion in the market to the customer in general and amounting to a flagrant infringement of the plaintiffs' registered trade‑.mark definitely deceiving a purchaser or a firm acquainted with the plaintiffs' get up and leading him to purchasing the defendants products as that of the plaintiffs'. My findings accordingly on these issues.

11. Issue No. 7. The plaintiffs have led no reliable evidence on any actual damages suffered by them on account of the infringement of their registered trade‑mark. In consequence they are entitled to any damages as claimed in their plaint, the amount claimed in paragraph 11 on this point being Rs. 25,000. The plaintiffs are only entitled to nominal damages as held in the above cited case of A I R 1944 Sind 21 where identically the plaintiffs claimed substantial damages and were only allowed nominal damages which were fixed at Rs.

100. Accordingly in the circumstances of the present case, I fix the same amount as nominal damages suffered by the plaintiffs and award the same accordingly.

12. Issues Nos. 8 and 9. These issues were not pressed and are decided in favour of the plaintiffs.

13. The result is that the plaintiffs are entitled only to nominal damages of Rs. 100 and an injunction as claimed and costs thereon and will not be entitled to Court‑fees paid on the sum of Rs. 25,000. Decree accordingly.

S. A. H. Decree accordingly.