Mian TAJ DIN Versus TAHIR SHABIR

This is an appeal from the order of a learned Additional District Judge, Lahore, dated 12‑7‑1982 dismissing the application of appellants under Order XXXIX, Rules 1 and 2 read with section 151, C.P.C. for the grant of temporary injunction against the infringement of appellants' registered Trade mark.

2. The appellants filed a suit under section 54 of the Specific Relief Act for the grant of permanent injunction restraining the defendant perpetually from using the trade mark of plaintiffs‑appellants. Alongwith the suit, an application for temporary injunction was moved, which was dismissed on 12‑7‑1982; hence this appeal.

3. The brief controversy in the matter is that the suit was filed on the grievance that the appellants' trade mark was registered as "Nirala Sweet Mart" and that they have acquired high reputation and good will in their business whereas respondents has opened his shop in the name of "New Nirala Sweet Shop". According to the appellants the word `New' had been prefixed to cause deception and confusion in the minds of customers. According to the learned Additional District Judge, the shop was located in a different locality and the trade name of respondent Le New Nirala Sweet Shop appeared to be quite distinct specially when the business addresses of the parties were printed on the boxes and wrappers. He was further influenced by the fact trial the respondent had produced some of the wrappers of other sweet shop at Lahore, the trade names of which had similarity one way or the other. On this view it was observed that the plaintiffs have failed to make out a prima facie case in their favour. The specimens of printed boxes of the parties were held to have no resemblance.

4. The learned counsel for the appellants argued that the approach of the learned Additional District Judge suffered from inherent defect inasmuch as he had failed to understand the very object and purpose for the registration of the trade mark. It was further argued that the learned Court below had failed to correctly appreciate section 21 of the Trade Marks Act. It was then argued that the finding of the learned Additional District Judge that the plaintiffs‑appellants have failed to make out a prima facie case or balance of inconvenience flowed from the view taken by him as pointed out above.

5. I have heard the learned counsel for the parties at considerable length. I must observe that the decision of the question whether infringement of the trade mark is being done or not will depend upon the facts and circumstances of each case, but this has to be judged in the light of sprit of the statute and the policy underlying the enactment, and the purpose sought to be achieved and the mischief designed to be suppressed. I must observe on the authority of the Supreme Court in the case of Mian Muhammad Latif v. Province of West Pakistan through the Deputy Commissioner, Khairpur and another PLD 1970 Supreme Court 180, that in a case where temporary injunction is claimed, the plaintiff was only to make out that he has a prima facie case meaning thereby that a serious question is to be tried in the suit and that in the event of success, if the injunction is not issued, he will suffer irreparable injury. It was further held that where these conditions are satisfied, injunction can rightly be issued by Courts. In the present case, prima facie, a serious question hail been raised before the learned Additional District Judge for trial as to the effect of pre‑fixing of the word "New" before Nirala Sweet in the light of law governing the situation. A further question which was to be examined is degree of near resemblance which was likely to cause deception or confusion in the minds of the customers. The case has to be judged carefully in the light of provisions of section 21 of the Trade Marks Act and guidance was required to be sought from the precedents case law laid down by the superior Courts of the country. It has to be. seen on deeper consideration after the evidence has been led whether the test that an 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 was made out or not.

6. 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, P 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. The view of the learned Additional District Judge that the grant of temporary injunction would amount to granting the relief prayed for in the suit is not well based. On the contrary, the law is that where in a suit no perpetual injunction is claimed, temporary injunction cannot be granted. Reference may be made to the case of Marghub Siddiqi v. Hamid Ahmed Khan and 2 others 1974 SCMR 519. In the present case this requirement is fully met because a perpetual injunction has been sought to be granted in the instant suit. I must also refer to a decision of Karachi High Court in the case of Abdul Jabbar and another v. Ahmed Jan P L D 1973 Karachi 289, wherein a case of infringement of trade mark and the grant of injunction under Order XXXIX, Rule 1 was involved, the Court held that where a strong prima facie case was made out by the plaintiff, argument of balance of convenience in the circumstances of case was of no avail and the defendants cannot be allowed to take advantage of their own wrong.

7. The learned counsel for the respondent, however, tried to pursuade me to go into the merits of the case in depth, but I refused to be pursuaded for the simple reason that while deciding the question of grant or refusal of temporary injunction, this Court cannot resolve the factual controversy touching upon the merits of the case as this is likely to prejudice the case of either party. The contentions of the parties are to be examined only for the decision of the question whether a good prima facie case is made out or not. That has been done.

8. The net result is that this appeal is accepted; the order of the learned Additional District Judge dated 12‑7‑1982 is hereby set aside and temporary injunction prayed fur by the appellants is granted.

MA.K./3418/L

Appeal accepted.