MEHTABUR REHMAN Versus SAEED AHMED

ORDER

1. Civil Miscellaneous Application No. 3179 of 1985 is an application filed by the plaintiff against the three defendants seeking temporary injunction in respect of his Trade Marks "Alizeb" and "Globe" device label registered under the Trade Marks Act, 1940. According to the plaintiff, who is the proprietor of Asghar Enterprises, in order to distinguish his products namely "shirt‑collars" from other manufacturers and traders in the same line, he started use of his trade mark word "Alizeb" on a label and trade mark word "Globe" and its device on a dominant green and white colour label with a black stripe below in the year, 1979. According to the plaint, the said two trade marks have been continuously used by the plaintiff in respect of the said products in the markets of Pakistan. The plaintiff got the two marks registered in his favour under Registration Nos. 79242 and 80759 in class 25 from the Registrar of Trade Marks in 1983. The grievance of the plaintiff in the present suit is that the three defendants have adopted and have started using, the marks of the plaintiff's marks, which has led to great confusion and deception in the course of trade amongst unwary purchasers as to the source of origin of the goods and has enabled the defendants to pass off and sell their goods conveniently as those of the plaintiff. The defendant No. 1‑has opposed this injunction application and has filed his counter‑affidavit. Affidavits of several other persons have also been, filed in support of the, case of the defendant No. 1 to the effect that ,the defendant No. 1 has been using his mark "A1‑Zeb" since 1974. According to defendant No. 1, he has been using the trade mark "Al‑ Zeb" for his shirt ,collars since 1974, whereas the plaintiff started taking out and selling his shirt collars around 1982‑83. It has further been submitted by defendant No. 1 ,that he had been using the green colour and black stripe on his wrappers for about 6 to 61, years. As regards the device of the "Globe", it is the case of the defendant No. 1 that his device is completely different from the "Globe" device of the plaintiff. It is further submitted in para. 7 of his counter‑affidavit that the trade mark of defendant No. 1 is different and distinguishable and there is no chance of any confusion between the trade marks of the plaintiff and defendant No. 1. Then the affidavits of several persons namely Muhammad Ibrahim; Ghulam Jilani; Nadim Ilahi; Abdul Karim; Muhammad Shuja, Bashir Ahmad; Rashid Ahmad; Muhammad Rashid Khan; Muhammad Qasim; Muhammad Alam; Muhammad Aslam Lari; and Shamim Baig s/o Mumtaz Baig have also been filed in support of the case of the defendant No. 1 that defendant No. 1 has been using the mark "A1‑Zeb" for his ready made shirt collars since 1975 onwards.

2. An affidavit‑in‑rejoinder was filed by the plaintiff denying the various adverse allegations contained in the counter‑affidavit and other affidavits filed in support of the case of defendant No. 1. Affidavits of Muhammad Iqbal; Qadir Ahmad; Sheikh Akhtar Ali; Sultan Ahmad; Fazal Ahmad; and Muhammad Yousuf Bari have also been filed to the effect that they have been purchasing ready‑made shirt collars of imported material under the trade mark label "Alizeb" in bags bearing device "Globe" in green and white colour with black stripes since 1979 and these goods of the plaintiff have become very popular amongst the traders and purchasers and that prior to 1984 they had not seen shirt collars of defendant No. 1 with the mark of "A1‑Zeb" or under a globe like device appearing on bags in which the shirt collars are sold but that the defendant No. 1 was using the Mark "Prince" prior to 1984 for their shirt collars. I have heard Mr. Khalil Kazilbash, learned counsel for the plaintiff and Mr. Mansoor‑ul‑Arfin, learned counsel for defendant No. 1 on this interim application for temporary injunction.

2. Mr. Khalil Kazilbash, learned counsel for the plaintiff, submitted that the marks of the plaintiff, had been registered in 1983 and he relied upon section 23 of the Trade Marks Act for arguing that registration of the marks of the plaintiff are prima facie evidence of their validity. It was then submitted that no documentary evidence had been led and only affidavits have. been filed of interested parties by defendant No. 1 in an attempt to establish that defendant No. 1 had been using his marks since 1974‑75. According to the learned counsel for the plaintiff, the evidence does not establish prior user by defendant No. 1. It was argued that the marks of defendant No. 1 and the registered marks of the plaintiff are similar and definitely cause confusion in the minds of the unwary purchasers and as such the defendant No. 1 is able to pass off his goods as the goods of the plaintiff.

3. Mr. Mansoor‑ul‑Arfin, learned counsel for defendant No. 1, opposing the temporary injunction application, made the following contentions:‑‑

(a) Plaintiff was using different marks than what has been registered under the Trade Marks Act.

(b) Reference was made to section 25 of the Trade Marks Act and it was submitted that the defendant No. 1 has been using his marks since 1974 and reliance was placed on the affidavits of various persons filed in support of the case of the defendant No. 1 that he has been using the marks since 1974 or so. It was argued that the registration of the marks of the plaintiff in 1983 cannot affect the right of the defendant No.l to use the marks, which he has been using since 1974‑75.

(c) The names "Alizeb" and "Al‑Zeb" are different and on account of the use of the name "Alizeb" no deception is caused. According to the learned counsel for the defendant No. 1, even if prior user is not established at this stage, the two marks "Alizeb" and "A1‑Zeb" being different, no deception or confusion is caused, as has been asserted by the plaintiff.

4. In so far as the device of "Globe" of the plaintiff and the device of a circle employed by defendant No. 1 in the polythene wrappers, apart from the words "Alizeb" and "A1‑Zeb", prima facie there appears to be no likelihood of any confusion caused in the minds of the unwary purchasers of such goods, whereby the goods of the defendant No. 1 can be passed off as the goods of the plaintiff. The device of the "Globe" registered in the name of the plaintiff is apparently) dissimilar to the device of the circle used by defendant No. 1.

5. As regards the words "Alizeb" and "A1‑Zeb", learned counsel for the plaintiff submitted that these are similar and that defendant No. 1 had also admitted that the marks are similar. Learned counsel for the plaintiff also cited the following authorities in support of his proposition that the two words "Alizeb" and "A1‑Zeb" are similar and can cause confusion in the mind of the unwary purchaser:‑‑

(a) Muhammad Ismail v. Sufi Soap Factory P L D 1973 Note 144 at p.216.‑‑This case related to the infringement of the registered trade mark "Soofi Soap" by the use of mark "Safi Soap". It was held by a learned Single Judge of this Court that phonetically as well as in writing there appears to be little difference between the words "Soofi" and "Safi" whether writing is in English or Urdu and unless a person knows that Safi Soap was being manufactured by some other manufacturer the possibility of being misled or deceived could not be ruled out.

(b) Tektronix Incorporated v. M. Abdul Mannan P L D 1973 Kar. 14.‑‑In this case the registered trade mark was "Tektronix" and the respondent started using the word "Tech tronics". At the interim stage it was held that prima facie the two words being pronounced alike, chances of confusion and deception in public could not be ruled out.

(c) Insaf Soap Factory v. Lever Brothers Port Sunlight Ltd. P L D 1959 Lah. 381.‑‑In this Judgment, a Division Bench of the Lahore High court observed that in cases of infringement of trade mark the test is whether the unwary purchaser is likely to be deceived into purchasing the goods of the person infringing the trade mark as the goods of the owner of the trade mark.

(d) A & F Pears Ltd. v. Ghulam Haider P L D 1959 Kar.

154. In this case the appellants were manufacturers of perfumery and toilet goods and had been using the mark "Pears" in respect of the goods manufactured by them. The respondents, manufacturers of laundry soap, started using the words "Pears Sabun" in Urdu and English and applied for registration of this device. The appellants entered an opposition. The Registrar of Trade Marks held that there was a possibility of visual confusion if the words "Pears Sabun" were written in Roman Script and there was no possibility of any phonetic confusion and therefore he registered the device of the respondents subject to the conditions that the words "Pears Sabun" are not to be written in English and further that the specification should be confined to soaps for laundry purposes only.

6. It was held that the two conditions imposed by the Registrar were not sound nor by imposing of them the apprehension of confusion in the mind of the public could be obviated.

(e) Burney's Industrial and Commercial Co. Ltd. v. Rehman Match Works P L D 1983 Kar. 357.‑‑In this decision also the test of an unwary purchaser was applied.

7. On the other hand, it was the contention of Mr. Mansoorul Arfin, learned counsel for defendant No. 1, that the words "Alizeb" and "A1‑Zeb" are different and he cited the following authorities in support of his proposition:‑‑

(f) ASPRO‑NICHOLAS Ltd. v. The Registrar of Trade Marks P L D 1973 Notes 60 p. 82.‑‑While dealing with the words "DISPRO" and "ASPRO", it was held that the endings of the two words, though similar, their beginnings were quite distinct and the words were distinct from each other.

(g) Abdul Wahid v. Abdur Rahim P L D 1973 S C 104.‑‑While dealing with the marks "Daigon" and "Saigon", it was observed that there was no phonetic or visual similarity between the two marks. It was noted that as far as first syllables were concerned, they were dissimilar and had no similarity with each other but there appeared to be close similarity as regard the second syllable. It was observed that in such circumstances it was an accepted principle that words having a common suffix but if earlier portions of these words are different and if they do not conflict they are held to be distinctive.

(h) G.M. Pfaff A.G. v. Deputy Registrar of Trade Marks 1984 CLC 2478.‑‑In this case the appellants had a registered trade mark in the same class in the name of 'PFAFF" : .The private respondents applied for registration of the Mark "TUFF". The appellants filed objections before the Registrar of Trade Marks that the two words were similar and bound to cause, confusion. The Registrar dismissed the objections on the ground that the mark "TUFF" was not identical with or nearly resembling the registered mark "PFAFF" and there was no likelihood of any deception or confusion in the couse of trade. The appeal filed by the owners of the Mark "PFAFF" was dismissed 'by learned Single Judge of this Court.

8. In my view, prima facie, the two words "Alizeb" and "A1‑Zeb" are similar to such an extent that they can cause confusion and deception E in the mind of the unwary purchaser. Reference may also be made to the reply, dated 12‑11‑1984 of defendant No. 1 to' the' plaintiff's legal notice, dated 21‑10‑1984. In the reply, dated 12‑11‑1984 of defendant No. 1 (Annexure "D/3") to the counter-affidavit, dated 16‑10‑1985 of the defendant No. 1 it is inter alia stated as follows:=‑

9. "2 ..It is not correct that my clients have intimated the trade mark of your clients. As .a matter of fact ‑the reverse is true. My clients are in the business of "Bukram and ready‑made collar" since 1974 and have been using their Trade Mark "A1‑Zeb" since then. Your clients were not even in the business at that time. My clients, have established over a period of: years a respectable and lucrative business. They. enjoy a good reputation of their products in the market. My clients are using the Trade Mark "AI‑Zeb" since 1974. The 'registration of a ‑similar mark has no sanctity whatsoever in law. Due to the excellent quality and marketability of my clients' goods, your clients have imitated the trade mark of my clients, thereby becoming guilty of passing off .

3. The contents of para. 3 of your notice are denied. My clients are not guilty of breaching any law. As a matter: of fact my clients are sustaining substantial losses due to the loss of the market .share on account of passing off by your clients.

10. In view of the above, your clients are hereby called upon to refrain from using the. similar trade mark as that of , my clients..

11. Although it had been argued 'by the learned counsel for defendant No. 1 that the marks "A1‑Zeb" and "Alizeb" are distinct and dissimilar, in the letter, dated 12‑11‑1984 the defendant No. l's case is that the two marks "A1‑Zeb" and "Alizeb" are., similar and that on, account of a similar mark being adopted by the plaintiff, the .defendant No. 1 is losing market‑share on account, of passing off by the plaintiff. This statement, in the ‑letter of defendant No. 1, is prima facie in the nature of an admission that the two marks are similar.

12. The other point argued by, the learned counsel for the defendant No. 1 was that defendant No: 1 is a prior user of the mark "A1‑Zeb" and as such even if the two marks are 'similar, and the plaintiff's mark is registered, defendant No.l cannot be restrained from using the mark "A1‑Zeb". Learned counsel for defendant No.' l relied upon the counter- affidavit of defendant No. 1, in which figures of sales of collars are given from 1975‑76, onwards and also upon various affidavits filed alongwith the counter‑affidavit, wherein the deponents have mentioned that defendant No.l has been using the mark "A1‑Zeb" from 1974‑75 onwards, that is, much prior to the commencement of the use of the mark "Alizeb" by the plaintiff. The averments in the counter‑affidavit have been denied in the rejoinder. Alongwith the rejoinder, several affidavits of other persons have been filed to the effect that the plaintiff has been using the mark "Alizeb" since 1979.

13. The evidence is yet to be recorded in this case. There are affidavits in support of the plaintiff's case and there are, on the other hand, affidavits of other persons in support of the case of defendant No.l on the question of prior user. Prima facie, I am of the view that the defendant No. 1 has not been able to establish prior user of his mark "A1‑Zeb". This prima facie finding is based on the cumulative effect of the following facts and reasons:‑‑

(i) The mark of the plaintiff is registered in 1983;

(ii) Prior to the registration of the mark, the plaintiff's mark must have been advertised according to the law relating to registration of trade marks and admittedly no opposition /objection was filed by the defendant No. 1.

(iii) Prior to filing application for registration of the trade mark plaintiff had issued public notices in the Press but no objection was raised by defendant No. 1.

(iv) Defendant No. 1 has claimed that he has been using the mark "AI‑Zeb" since 1974. No documentary evidence has been filed in support of the averment that defendant No. 1 has been using his mark since 1974. It is reasonable to expect that from 1974 upto 1983, when the mark of the plaintiff was registered, there would be some documentary evidence about the user of the mark "A1‑Zeb" by defendant No. 1 but no such document has been filed on behalf of defendant No. L .

(v) Defendant No. 1 had only applied in 1985 for registration of his mark.

14. I may refer here to one submission of the learned counsel for defendant. He had laid great emphasis on para. 6 of the affidavit, dated 16‑10‑1985 of one Shamim Baig son of Mumtaz Baig, in which it was mentioned that defendant No. 1 used to give his work for making collars to the plaintiff and his brother Intikhabur Rehman in 1977 and the plaintiff used to entrust this job to Shamim Baig and the plaintiff and Shamim Baig used to put trade mark "A1‑Zeb" and "Prince" of defendant No. 1 by rubber stamps on the collars of defendant No. 1 and that the plaintiff at that time was not making any collar under the name of "Alizeb". According to the learned counsel for defendant No. 1, there is no specific denial of these facts given in para. 6 of the affidavit of Shamim Baig. I, however, find that in para. 11 of the rejoinder, dated 19‑10‑1985 of the plaintiff, para. 6 of the affidavit of Shamim Baig has been specifically denied.

15. At this stage, on the basis of the record, I am prima facie of the view that defendant No. 1 has not established prior user of the mark "A1‑Zeb". I may observe here that this prima facie finding has been reached on the basis of the record at the interim stage when no evidence has been recorded.

16. Till the disposal of this suit, the defendants are accordingly restrained from using, manufacturing, selling or advertising ready‑made shirt‑collars of defendant No. 1 under the mark "AI‑Zeb". Civil Miscellaneous Application No. 3179 of 1985 stands disposed of by this order.

17. M. Y. H. Temporary injunction granted