PLJ 2004
Present: tariq
parvez khan & shahzad
akbar khan, JJ. SOCIETE DES PRODUITS NESTLE
versus FOOD
INTERNATIONAL (PVT.) LIMITED-Respondent
R.F.A. No.
100 of 2000, decided on 20.4.2004. (i) Trade Marks Act, 1940 (V
of 1940)--
—Ss. 20, 21-Civil Procedure Code 1908, S. 96--Preamble--Held
: Law
jealously protects the registered trade mark for the
growth of healthy
competition in trade, commerce, industry and those who have invested
their money, labour & skill for earning a remarkable
reputation—Should
not be allowed to be exploited by rivals who venture to take benefits of
earned reputation by a registered trade mark-Further Held:
Object of
the legislature has been primarily focussed towards elimination of
chances of confusion and deception. [Pp. 315
& 316] A
(ii) Trade Marks Act, 1940 (V of 1940)--
—-S.
8(a), 10(1), 20 & 21-Civil Procedure Code 1908, S. 96 Specific Relief Act
1877, S. 54-Suit of appellant dismissed-Appeal against-Held : Goods of appellant
(Chocolate drinks) and the product of respondent (bread) were both definable as
food predictors and available at same stores having common trade
channels-Contention of respondent that "Milo"
was not the invention of appellant and was a generic signifying a kind
of grain, was repelled, as the bread produced by respondent was not product of "milo
grain" but cf wheat alone-Further held : Use of trade mark
registered with the appellant as 'Milo', by respondent amounted to infringement
of its right-Appeal was accepted by H.C.
[Pp.
316 & 318] B, C & E
(iii) Trade Marks
Act, 1940 (V of 1940)--
—S. 8(a) 10(1), 20, 21-Civil Procedure
Code 1908, S. 96--Preamble--Held: Court is duty bound to ensure that once a trademark
has been registered and nurtured through advertisement etc., and has remained
firmly stabilized for a long time, it should not be allowed to be abruptly eradicated by
imitating such trademark--If this sense of security is not guaranteed to an
owner of a registered trademark and if uncertainty about its future is allowed to remain, no
productive growth which is most desirable in every field of activity of a civilised
society would be possible.
[P. 318] D
1987 SCMR 1090, 1984 CLC 781,
1999 MLD 1447, PLD 1990 SC 313 & PLD
1991 SC 939, ref.
Mr. Mueen Qamar, Advocate for Appellant.
Mr.
Asghar Khan Kundi, Advocate
for Respondent.
Date of hearing: 20.4.2004.
judgment
Shahzad Akbar Khan, J.-This appeal under Section 96
of the Code of Civil
Procedure, 1908 has been filed by Societe Des Produits Nestle S.A., calling in
question the judgment and decree dated 22.7.2000 passed by the learned
Additional District Judge-I Peshawar whereby the suit of the appellant was dismissed.
2. Facts of the case
appearing from the record are .that on 3.7.1995
the appellant
had filed a suit for permanent
injunction against the
respondent
in the following manner:-
"Suit for the grant of
permanent injunction restraining the defendant perpetually from infringing and using the
registered trademark MILO
of the plaintiff and pass off its products, as and for the products of the plaintiff
or attempting to infringe, use, pass off and from manufacturing, selling,
offering for sale, advertising for sale or using and selling its products in
particular bread, bakery products and other food and drink products using the
trademark MILO in any
manner and for accounts of profits, delivery-up etc."
At the fag-end of
the plaint there was a prayer for the destruction of the objectionable materials
and rendition of account to be given on oath about the profits that was
wrongfully made by the defendant for the purposes of payment to the appellant.
3. The grounds on which
the suit was framed and filed were that
the
appellant/plaintiff is the owner of the registered trademark '
same
was registered in favour of the appellant since the year, 1950 in
relation
to food products etc. The registration number given to the appellant
2004 societe dbs produits nestle
international (Pvr.) limited
(Shahzad Akbar Khan, J.)
is 10168. The goods of the
appellant under the trademark 'MILO' were offered for sale and have been sold in
4. The suit was
hotly resisted by the respondent by putting in written statement. The rival pleadings of the
parties generated the following issues:--
1.
Whether the plaintiff has got a
cause of action?
2.
Whether the suit is not maintainable
in its present form?
3.
Whether the suit is time-barred?
4.
Whether the suit is incompetent, vexatious and malafide,
if so,
to
what effect?
5.
Whether
the suit is bad for non-joinder of necessary parties?
6.
Whether the defendants are entitled to special costs in
the
event
if the suit of the plaintiff is found to be malafide and
vexatious?
7.
Whether the plaintiff is
manufacturer/producer of high quality
products and plaintiffs trademark '
largest selling brand, advertised throughout, if so, to what
effect?
8.
Whether the plaintiff has promoted
its trademark '
the last twenty years and same is recognized at public at
large?
9.
Whether the expenses
for promotion of
'MILO' marked
products,
as tabulated in the plaint are correct and products of
plaintiff
products are symbol of good health, if so, its effect?
10.
Whether the plaintiff has registered the trade mark 'MILO'
under the Trade Marks Act,
1940 and plaintiff has got exclusive
rights under Section 21 of the said Act?
11.
Whether the plaintiffs suit have been infringed, if so, to
what
effect?
12. Whether the
defendant have manufactured/prepared and using
' malafide, identical trade mark to that
of plaintiff?
13.
Whether
the plaintiff served any legal notice upon defendant as
regards the controverted trade mark, if so, to what effect?
14.
Whether
the plaintiff is entitled to the decree as prayed for?
15.
Relief.
Pursuant to the
aforementioned issues the parties adduced their evidence which they wished in
support of their contentions. It appears that two witnesses from each side were produced by the
parties, however, on the conclusion of trial the learned trial Court dismissed the
suit of the appellant while
rendering findings on Issues Nos. 7 to 14.
5.
The learned trial Judge was influenced by the fact that
the
appellant-company does not
prepare/market bread made of flour in Pakistan
and
abroad and that the products of the appellant-company are restricted to
Chocolate
drinks, therefore, the bread even if branded as 'MILO' Bread
cannot
be considered as product of the appellant-company. That the get-up
and
colour scheme of the trademark of the defendant-company is altogether
different
from that of the appellant-company and as such he formulated an
opinion that- "there
is no possibility that unwary purchasers or common men
would
be deceived/confused while purchasing 'MILO' Bread in taking it as
the product of the appellant-company. hb
observed that even common man
cannot
purchase the products of the appellant-company which are luxurious
in
nature and as such if he purchases 'MILO' Bread, he cannot consider the
same
as the products of the appellant-company which are of such a nature
that the same can only be
purchased by the people of high class society who
cannot be considered as unwary purchasers and.while buying the products of
'MILO'
under the trademark 'MILO', they can easily differentiate that the
same
are the products of the appellant-company and if they buy 'MILO
Bread',
they can understand that the same is of the respondent-company on
which
'MILO -Bread' is written in Urdu words and the products of the
appellant-company are given
the name of 'Nestle' products.
6.
The learned-counsel appearing on behalf of the appellant
has
argued
that the appellant-company on getting the trademark '
registered vide No. 10168 in
Class 30 as is evident from the Certificate of Registration issued by the
Government of Pakistan, became the exclusive owner of the registered
trademark and as such the same has become the property of the appellant to which complete
protection has been given by the Trade Marks Act, 1940 and no body else can use the
trademark of the appellant for any item which falls within the scope of
Class 30 which includes the
food item. While making reference to Certificate No. 10168 he further argued that
the Trademark 'MILO' (word per se) has been registered in the name of the
appellant and this Hvord per se' cannot be used by any person other than the
appellant. Carrying-forward his argument he urged that by using the word 'MILO" in respect of
the bread produced by the respondent-company, the respondent had virtually
oppilated the course of producing such like bread for the appellant besides the
fact that low quality would be sold by the respondent on the strength of
reputation commanded by the
registered trademark of the appellant. Obviously the impugned act of the
respondent-company would cause bad name to the products of the appellant. He
further argued that the respondent had made an unsuccessful attempt to obtain
.the registration of its imitated trademark 'MILO' in relation to bread by filing an
application for registration of the trademark 'MILO' with the Registrar of Trade Mark Bearing No.
114221 in respect of goods (bread) falling in Class 30. The said application of
the respondent-company was published in the Trade Marks Journal No. 521 on
1.6.1994 whereupon the appellant filed regular notice of Opposition No. 79/35
so as to oppose the registration of imitated trademark 'MILO' in favour of the respondent-defendant
on the ground that only the appellant is the real proprietor of the trademark
'MILO' throughout the World including Pakistan. The respondent ultimately failed to file
its counter-statement in reply to the Notice of Opposition filed by the appellant.
On such failure of the respondent,
its application for registration was declared to be abandoned and resultantly the
Registrar of the Trademarks vide his letter dated 18.7.1996 confirmed to the appellant that the
application of respondent (No. 114221) is deemed to have been abandoned
by the respondent. The said matter is appearing on page-66 of the file of this Court. In support of his
contentions the learned counsel for the appellant has placed reliance on: Seven-Up
Company
vs. Kohinoor Thread Ball Factory and 3 others (PLD 1990 SC 313), Messrs Alpha Sewing Machine
Company vs. Registrar of Trade Marks and another (PLD 1990 SC 1074),
Kabushiki Kaisha Toshiba (also trading as Toshiba Corporation vs. Ch.
Muhammad Altaf Trading as Murad Industries (Regd.) and another (PLD 1991 SC 27), Unilever
Limited vs. Sultan Soap Factory and another (PLD 1991 SC 939), Unilever
PLC., A British
Company of Port Sunlight Wirral Merseyside, England vs. R.B.Oil Industries
(Pvt.) Ltd., Karachi (1999
MLD 1447), Mars Incorporated vs. Pakistan Mineral Water
Bottling Plant (Pvt.) Ltd. through Chief Executive/Director/Secretary (2001 MLD 39), Bashir Ahmad vs. Regd.
Firm Haftz Habibur Rehman Muhammad Ramzan (PLJ.1980 Lahore 567), Messrs Tabaq Restaurant vs.
Messrs Tabaq Restaurant (1987 SCMR 1090) and
National
Detergents Limited vs. Nirma Chemicals Works and another (1992 MLD 2357).
7.
On
the other hand, the learned counsel appearing on behalf of the
respondent,
while making an endeavour to support the impugned judgment,
has
argued that the appellant has no right to claim the exclusive ownership
of the word 'MILO' as the
same is not an invention of the appellant but it is a
word
which signifies a type of grain and the bread produced by the
respondent,
even if branded by the word 'MILO', would not create an
impression
that it is the product of the appellant. His further argument was
that
the appellant does not produce the item like bread, therefore, no
prejudice
is caused to its other production if the Trademark 'MILO' is used
for a
bread produced by the respondent. Reinforcing his contention, the
learned counsel argued that the item 'bread' is not included in the list of
products
which are related to the appellant. He also urged that no evidence
has
been produced by the appellant to the effect that any customer was
deceived by the word '
respondent.
He also zealously defended the grounds which prevailed with
the
learned trial Court.
8.
We
have heard and considered the rival arguments of the learned
counsel
for the parties in the light of record and the law governing the
controversy.
9.' In the case of Messrs
Tabaq Restaurant vs. Messrs Tabaq Restaurant reported as 1987 SCMR 1090 the Honourable Supreme
Court of Pakistan while dealing with the controversy pertaining to Trade-mark observed as
follows:—
"The right in the trade
mark existed even prior to the Act and that it was property and the rights in
it remained protected admits of no serious doubt. Salmond in his jurisprudence treats
the trade mark has been treated as property and right in it as ownership, the property being
incorporeal. This will appear from the following statement respecting such a
right:--
'He who by his skill and
labour establishes a business acquires thereby an interest in the
goodwill of it, that is to say, in the established disposition of customers to resort to
him. To this goodwill he has an exclusive right which is violated by any one who seeks to make
use of it for his own advantages, as by falsely representing to the public that
he is himself carrying on the business in question. Special forms of this right of commercial goodwill are rights
to trade names and trade marks. Every man has an exclusive right to the name
under which he carries on business or sells his goods to this extent at least that
no one is at liberty to use that name for the purpose of deceiving the public and so
injuring the owner of it. He has a similar right to
the exclusive
use of the marks which he impresses upon his goods and by
which they are known and identified in the market as
his.'
Similarly,
Section 54 of the Specific Relief Act enacted in the year, 1877
contains an express provision that a trade mark is a property and
invasion of the right therein may call for a perpetual injunction."
In the above
cited judgment it was further observed as under:--
"There
is a clearer exposition of the manner in which trade-mark is protected.
In Harvard's Law Review, Volume 68 (1954-1855) on the subject of
Development in the Law-Trade Marks And Unfair Competition,
in the following words:-
"Basically
a trade mark owner receives protection against use of his mark by
another in such a way as is likely to lead consumers to associate
the others' goods with the trade mark owner. This protection against
trade mark infringement, that is, against sale of another's
goods as those of the trade mark owner by use of the owner's marks, may be
described as protection against passing off. Passing off, however, also
includes any other method by which one person's goods are made to
appear as if they originated from another, whether or not a trade
mark is involved. Thus, one could pass off his goods as those of a
competitor by imitating just the appearance or shape of the competitor's
product, because the consumer might be deceived a"s to
the source of the product. Protection against passing off in this
broader sense is afforded by the tort action of unfair competition."
10.
The Karachi High Court in the case of Standard Finis Oil Co. Vs.
National Detergents Limited and 2 others (1984 CLC
781) (Karachi) held as under:-
"As a matter of public policy
it would be desirable to ensure that once a mark is duly registered, and has
been nurtured through publicity and advertisement and other means and has
remained firmly established for a long period of time, it should
not be allowed to be abruptly uprooted on flimsy ground.
If this
sense of security is not guaranteed to an owner of a Registered Trade
Mark and if uncertainty about its future is allowed to prevail no productive growth
which is most desirable in every field of activity of a
civilised society would be possible."
It
thus follows that the law governing the trademark jealously protects
the registered trademark for the growth of healthy competition in trade,
commerce, industry and those who have invested their money, labour
and skill for earning a
remarkable reputation should not be allowed to be exploited by rivals who venture to take benefit of
the earned reputation by a registered trademark. The object/intention of the
Legislature, while enacting the Trade Marks Act, 1940, has been primarily
focussed towards elimination of chances of confusion and deception thus the Trade
Marks Act, 1940 emphasizes on the language "likely to deceive, or
cause confusion". (Reference can be made to the provisions of Sections 20 and 21
of said Act).
11. In answer to the
argument of the learned counsel for the
respondent
that bread is not an item produced by the appellant, reference
can
profitably be made to the Treatise called, Law of Trade Marks and
Passing
off P. Narayanan (Fourth Edition). In Paragraph No. 15.86, with
reference
to the criteria to determine whether the goods are of same
description,
it was observed as under:—
"15.86 Factors to be considered--The
various matters to be taken into consideration for deciding whether the goods are of
the same description are-
(a)
the nature and composition;
(b)
their
respective uses and functions; and
(c)
the trade channels through which they are bought and
sold."
On the touchstone of the above criteria, it can
safely be held that the goods of the appellant (chocolate drinks) and the product
of the defendant (bread) are both definable as foods predictors and
available at the same 0 stores having connection in the course of trade or
otherwise their trade channels are the same.
12. In the case of Unilever
PLC., A British Company of Port
Sunlight
Wirral Merseyside, England vs. R.B. Oil Industries (Pvt.) Ltd.,
Karachi (1999 MLD 1447) where the goods of the
plaintiff were Tea and the
defendant's
goods were Lipton Bansapati Oil the High Court of Sindh dealt
with
the proposition in the following mannen-
"It, thus, seems that the
defendant-Company wants to thrive at the cost of the plaintiff in order to secure unlawful
gain by taking undue advantage and wrongful gain of the mere circumstance that
the plaintiff-company is not producing Banaspati Oil which in law as well as
equity cannot be permitted. At any rate, there is a greater possibility and
every likelihood of deception and confusion on the part of innocent buyers and
customers to buy the product of the defendant as and for the goods produced by the plaintiff considering those to be product
of the plaintiff-company."
13. The August Supreme
Court of Pakistan in the case reported as
Seven-Up Company versus
Kohinoor Thread Ball Factory and 3 others (PLD
1990
SC 313) gave the following observations:-
"The fact that the
Company 7-Up is a multinational of international repute in the market for
beverages and for that reason not likely to engage itself in trading in
such an indigenous product may academically be sound for a marketing analyst but
really of no or very little concern to the class of consumers served by these products. Their
sale points and outlet points are quite often the same. The consumers served are
largely of the same category. Both the products though classified different for the
purpose of trade mark fall, from consumers' point of view, in the same category of light refreshment
or 'Pep' preparations. Their features do makeout a case of there being likelihood of confusion or
deceptien with regard to their source. The applican.ts for this registration
mark had a wide and open field to choose from. They decided upon the trade name
of another which also happens to be name of the company which has heavily invested in
that trade name and goodwill appurtenant to it. With that real likelihood of deception and
confusion it was clearly a case where registration should have been
refused."
In the case of Unilever Limited vs.
Sultan Soap Factory and another (PLD 1991 SC 939) the following
observations of the Honourable Supreme Court of Pakistan being relevant are
reproduced below:--
"A trade mark which is
identifies! or similar to a registered trade mark in respect of the same goods or description of
goods or if it resembles with the registered trade mark which is likely to cause
confusion and deception to the unwary purchasers should not be registered. However, in case of honest
concurrent user it may be registered, which may be subject to limitations and conditions
• imposed by the Registrar. The intention is to protect unwary-purchasers and
public at large. The question whether a trade mark will cause confusion or deception is a question of
fact which may be determined by examination of the marks, user, reputation,
notoriety, nature of goods, connection with the goods attached to the name of the manufacturer and
such other considerations. It is now well-settled that it is net
necessary that the goods of both the parties may be the same. However, in cases
where goods are different the ultimate object of finding out confusion and deception is to be judged on consideration
whether the name of the owner of the registered mark is so much associated with
the goods that if same or similar mark is registered, the purchaser will take the goods
under such mark in the normal course, the product of the proprietor of the
registered mark. Therefore, in such case besides identical nature or similarity of trade mark the governing
factor is the association of proprietor's name with the goods, its reputation
and goodwill."
In view of the
above survey of law and the authoritative pronouncements of the
Honourable Supreme Court of Pakistan, we see no
force in the contention of the
learned counsel for the respondent that the products of the appellant are
different than the product of the respondent and as such this contention is repelled.
14.
The
argument of the learned counsel for the respondent that the
word
'MILO' is not an invention of the appellant and is generic signifying a
kind of grain, is also of no substance for the reason that the bread produced
by the
respondent is not the product of milo grain but is made of wheat,
therefore, the word 'MILO'
with reference to
grain cannot be made
justification
for the use of the registered trade-mark of the appellant by the
respondent.
The non-use of milo grain for the production of the bread has
been admitted before us by
the learned counsel for the respondent in answer
to our query.
15.
The reasons given by the learned trial Judge also appear
to be
the outcome of his being oblivious of the law on the subject that emanates
particularly
from the above referred judgments. This is also not a case of
violating
the colour, scheme or get-up of the appellant but is virtually a
misuse
of the registered trademark i.e. '
exclusive ownership of the
appellant.
16.
As
a matter of law and public policy it would be the duty of the
Court
to ensure that once a trademark has been duly registered and
nurtured
through advertisement and other means and has remained firmly
stabilized
for a long period, it should not be allowed to be abruptly eradicated
by imitating such
trademark. If this sense of security is not guaranteed to an
owner
of a registered trade-mark and if uncertainty about its future is
allowed
to remain, no productive growth which is most desirable in every
field
of activity of a civilised society would be possible.
17.
On
the facts and circumstances of this case, it cannot be denied
that
the registered trade-mark of the appellant has been infringed and if
such
infringement is allowed to be continued, the protection granted to the
appellant
under the Trade Marks Act, 1940 would
become ineffective.
Resultantly,
we are of the considered view that the impugned judgment and
decree are the result of speculative and artificial reasons and based on mis
interpretation of evidence besides misconception of law. Consequently, this
appeal
is allowed and the suit of the appellant to the extent of permanent
injunction
is decreed with no order as to costs. We, however, may observe
that
the learned counsel for the appellant candidly stated before us that he
would press his appeal only
to the extent of permanent injunction and would
not
claim the recovery of any damages.
(J.R.) Appeal partly accepted.