Mr. Justice Zulfiqar Ahmad Khan in his judgment has decided the issue regarding infringement of trademark, Lapp test, Moron in a hurry test and classic trinity test in High Court Appeal No. 269 of 2014.
Through instant appeal order dated 25.09.2014 passed by on the learned Single Judge on applications filed by the rival parties under Order 39 Rule 1 & 2 and Order 39 Rule 4 respectively in Suit titled Injunction against Infringement of Trade Mark, Passing off, Unfair Competition, Damage and Account of Profit, are assailed, where the learned Single Judge while holding that pursuant to registration of a trademark, the registered proprietor acquires exclusive rights in the registered trademark, held that since the respondent’s trademark “Roohe-e-Samar” is not similar with the appellant’s famous and well known trademark “Rooh Afza”, no deception or confusion has taken or likely to take place, thus declined the application seeking injunction against the respondent from selling its goods under Rooh-e-Samar trademark. The relevant paragraphs of the impugned order are reproduced as follows:
“14. I have before me the label (s) of both produces i.e. ‘Sharbat Rooh Afza’ and ‘Rooh-e-Samar’. It is worth to make it clear again that it should not be a mere claim of similarity but claim of similarity should qualify the test that it (similarity), overall, should be so resemble that an ordinary consumer may not differ between that he intended to purchase or what is presented to him. A bare look, nowhere, results into any confusion because not only the colour scheme but also the calligraphy and its manner are quite different from each other. Mere having photo-graph/picture of different fruits is not sufficient to believe the plea of the plaintiff that label of the defendant’s product ‘Rooh-e-Samar’ shall cause ‘confusion’ or ‘deception’ to its customers of ‘Sharbat Rooh Afza’. The color scheme(s) of these two are entirely different with considerable distinction to an ordinary eye; the calligraphy is also differently posed and even picture of fruits is different from that of ‘Sharbat Rooh Afza’.
15. In view of above examination I am not of the view that label of the product of the defendant (Rooh-e-Samar) is being presented / labeled or marketed in a manner or fashion that it could result in causing a ‘deception’ or ‘confusion’ to the customer of the plaintiff whose brand ‘Sharbat Rooh Afza’ is well renowned and very much known to its customers, therefore, no case of ‘confusion’ or ‘deception’ is appearing to me. Accordingly, I am not inclined to sail with the view of the plaintiff but conclude that plaintiff has no prima facie case in its favour so as to deprive the defendant from doing/continuing the lawful business or trade. Therefore, application for injunction is hereby dismissed. In consequence whereof the CMA No.11282/2014 stands dismissed being infructuous.”
Brief facts of the case are that the appellant manufactures and sells syrup under the coined name Rooh Afza for decades and have had the said trademark registered under the Trademark Act, 1940 (the 1940 Act) in the British India on 03.08.1942 in class 32. Various versions of the said trademark have been regularly registered by the appellant and from the details provided, we note that about eight registration between years 1961 upto 1984 have been sought by the appellant in respect of the said trademark giving rise to contention that the appellant is very alert in respect of protection and enforcement of its rights in the said trademark. Being a household name used for over a half century, the said trademark has acquired extreme popularity, which also attracts new incumbents to disguise their trademarks and trade-dress similar or confusingly similar to that of the appellant. The appellant‟s counsel contended that the Appellant became aware of the respondent‟s intended use of its trademark on 29.06.2014 when the latter advertised its products in the daily Dawn newspaper. Being alerted with the deceptive name and confusing similarities in the label used by the respondent, it was clear that the respondent intended to deceive the customers of the appellant and to take benefit of the hard earned reputation and market space created by the appellant for over 73 years; the appellant commenced legal action which culminated in its filing of the instant suit against the respondent on account of alleged infringement and passing off of appellant‟s well-known trademark by the respondent. Along with the said suit, the appellant filed an application seeking injunction against the respondent, while an interim injunction was granted to the appellant, however, in terms of the impugned order, the earlier injunction granted was dismissed.
The counsel for the appellant brought to our attention an application moved by the respondent for registration of its trademark filed at the Trademarks Registry bearing No.316901 dated 22.03.2012 in class 30. The learned counsel contended that when advertised, the said application was also opposed by the appellant which opposition bearing No.1662/2013 is still pending adjudication by the Registrar of Trademarks.
From the documents, we of course see that the respondent has also attempted to protect Rooh-e-Samar trademark under the copyright laws by making an application on 10.04.2014, we are not sure about the fate of the said application, however, even if registered that does not give any right to use the said label by the respondent in respect of any goods. Pursuant to the said registration, all it is entitled to do, is to frame the said paper label and hang it on the wall as a work of art, or to stop someone selling identical copies of the said paper label. The moment, some goods are wrapped in the said label, it loses to act as work of art (protected by copyright laws) and falls into the domain of trademark laws, for which procedure for registration is provided by the applicable laws, of which the Trade Marks Ordinance, 2001 having repealed the 1940 Act, is currently in force.
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