Capital Plastic Industries Vs. Kappy Plastic Industries - Court Judgment

Excerpt:
the case focused on the application filed for interim injunction under order 39 rules 1 and 2 of the civil procedure code, 1908, for grant of interim injunction - the claim of the plaintiff was on the basis of the trademark 'rabber' - it was observed that the plaintiff had discontinued and had abandoned the trade mark and had started using the other mark 'rahber' - also, the defendant had not produced any evidence in support of the trademark 'rahber' since 1983 - in view of the circumstances, it was held that both the plaintiff as well as the defendant were pirators and they had copied the mark that was registered in the name of some other company - thereforee, none of them were entitled to any relief - accordingly, the petition was dismissed - - 405743 by which the user is claimed to be from 1.1.1983. it is alleged that the plaintiff has acquired a good reputation in the mark because of high quality of goods manufactured by the plaintiff. it is further alleged that the plaintiff is also using the trade mark rahber written in the same manner as rabber in respect of the same goods since september 1985. the plaintiff has acquired valuable good-will and reputation in respect of this mark. in the application it is further alleged that the plaintiff has a very good prima facie case to succeed and in case the defendant is not restrained by way of interim injunction the plaintiff would suffer irreparable loss and injury. this certificate further shows that the registration will remain in force for a period of 7 years from 10.9.1980. the defendant claims to be the user of the mark rahber since april 1983. no material worth the name has been produced by the defendant on the record to show that the defendant bad been actually using the mark rahber from 1 4.1983 except the copy of the additional representation dated 4.4.1985 wherein the user of the mark rahber is shown to be from 1.4.1983. in the certificate dated 10.9.1985 issued by the director of industries and filed by the defendant it is stated that the unit was not in production and the location of the factory was also not mentioned. both the plaintiff as well as the defendant are pirators.c.l. chaudbry, j. (1) by this suit the plaintiff claims perpetual injunction restraining the defendant from manufacturing, selling or otherwise dealing in thermos jug under the trade mark rahber or any other trade mark which may be identical or deceptively similar to plaintiff's trade mark rabber. the allegations of the to plaintiff for claiming the perpetual injunction as laid down in the plaint are as follows :- (2) the plaintiff claims to have adopted a distinctive and celebrated trade mark rabber in respect of the thermos jug and started using the trademark from 1.1.1983. an application for registration of the mark rabber is claimed to have been filed on 20.5.1983 bearing no. 405743 by which the user is claimed to be from 1.1.1983. it is alleged that the plaintiff has acquired a good reputation in the mark because of high quality of goods manufactured by the plaintiff. the plaintiff also got registered the copyright in the artistic label of rabber. the distinctive features of the trade mark are that the letters of the trade mark rabber have been put in the manner of semicircle. it is further alleged that the plaintiff is also using the trade mark rahber written in the same manner as rabber in respect of the same goods since september 1985. the plaintiff has acquired valuable good-will and reputation in respect of this mark. publicity is claimed to have been given to the mark rabber through various media. the plaintiff claims to be the owner and proprietor of the trade mark rabber and rahber. the case of the plaintiff is that in march 1986 he came to know that the defendant had started manufacturing and selling thermos jug under the trade mark rahber which is identical to the trade mark rahber of the plaintiff and is also deceptively similar to the trade mark rabber of the plaintiff. the defendant is passing off the thermos jug manufactured by him under the trade mark rahber as that of the trade mark of the plaintiff. this wrongful act of the defendant has caused great loss and irreparable injury to the plaintiff's goodwill. (3) along with the suit the plaintiff has filed an application under order 39, rules 1&2 being la. 3631/1986 which is under disposal, seeking the interim injunction restraining the defendant from using the mark rahber during the pendency of the suit. in the application it is further alleged that the plaintiff has a very good prima facie case to succeed and in case the defendant is not restrained by way of interim injunction the plaintiff would suffer irreparable loss and injury. (4) the suit is being contested on behalf of the defendant. the pleas taken in the written statement are that the plaintiffs are neither the proprietors nor the registered proprietors of the trade mark rabber/ rahber in respect of thermos judge as alleged by them. the trade mark rahber is registered in the name of plasticrafters limited, 3rd floor,prmier insurance building, wallace road, karachi under registration no. 365902-b and 365903-b under the trade and merchandise marks act, 1958. the claims of the plaintiff regarding copyright have also been denied on the ground that it is not an original artistic work. the design was made public much prior to the date as alleged by the plaintiff i.e. 25.2.1984. it is further stressed that on plaintiff's own allegations made in paragraph 8 of the plaint, it is clear that the plaintiff had abandoned the trade mark rabber in september 1985 and adopted another mark rahber. the case set up by the defendant is that the defendant is using the mark rahber in respect of thermos ware since 1.4.1983 and he moved an application on 4.4.1985 for registration of its mark under si. no. 436018 and the application is pending for disposal. the plaintiffs claim to be using the mark rahber since september 1985, much after the mark was used by the defendant and a such the plaintiffs cannot claim to be prior users of the mark rahber. no injury or loss is likely to occasion to the plaintiff. (5) in reply to the application besides repeating the pleas taken in the written statement it is stated that the plaintiff has no prima facie case to succeed and the plaintiffs are not likely to suffer any loss or injury. (6) i have heard the learned counsel for the parties and have gone through the record of the case. (7) the claim of the plaintiff is based on a passing off action. in order to succeed on this action it is essential for the plaintiff to show that the adoption of the name by the defendant brings about a tangible risk of damages. (8) so far as the plaintiff's mark rabber is concerned, from the material on record it is prima facie established that the mark is being used from the year 1984. there are bills of sales pertaining to this mark up to july, 1985. documents placed on the record also reflect the advertisements and publicity done for this mark. however, it appears that the plaintiff discontinued and abandoned this mark in september 1985 and started using the other mark rahber. no material has been placed on the record to show that after september 1985 there is any sale by the plaintiff of its goods under the mark rabber. rather three bills dated 19-9-1985 for rs. 1605.00 , 6.1.1986 for rs. 2675.00 and 29.3.1986 for rs. 4891.74 showing the sale of their goods under the mark rahber have been placed on the record. no sale is shown in respect of the mark rabber, after september 1985. on the side of the defendant a copy of the registration certificate relating to registered mark no. 365903-b has been produced. this certificate shows that the trade mark rahber is registered in the name of plasticrafters limited, 3rd floor, premier insurance building, wallace road. karachi. this certificate further shows that the registration will remain in force for a period of 7 years from 10.9.1980. the defendant claims to be the user of the mark rahber since april 1983. no material worth the name has been produced by the defendant on the record to show that the defendant bad been actually using the mark rahber from 1 4.1983 except the copy of the additional representation dated 4.4.1985 wherein the user of the mark rahber is shown to be from 1.4.1983. in the certificate dated 10.9.1985 issued by the director of industries and filed by the defendant it is stated that the unit was not in production and the location of the factory was also not mentioned. i am not inclined to accept the bald assertion without any supporting proof that the defendant is using the trade mark rahber since april 1983. (9) the plaintiff has claimed relief on the basis of the trade mark rabber. as stated above, in my opinion the plaintiff has discontinued and abandoned this mark after september 1985. if that is so, i do not think that the plaintiff has made out a case for the grant of injunction so as to restrain the defendant from using the mark rahber. the plaintiff is not likely to suffer any irreparable injury because since september 1985 the plaintiff is not using this mark. so far as the mark rahber is concerned the plaintiff has not claimed any relief on the basis of this mark. even otherwise in my opinion the plaintiff is not entitled to any relief on the basis of this mark. both the plaintiff as well as the defendant are pirators. they have copied and adopted this mark which already stands registered in the name of plasticrafters limited, premier insurance building, wallace road, karachi. none of them is entitled to claim any relief on the basis of this mark. even otherwise the plaintiff has not been able to establish that he has acquired a valuable goodwill or reputation in respect of the mark rahber. the plaintiff has not been able to prima facie establish and fulfill the requirements of a passing off action. the result is that the plaintiff is not entitled to the interim relief at this stage. (10) in the result the application fails and is hereby dismissed without any order as to costs. any opinion expressed in this order is only for deciding the interim application and would not prejudice the contentions of the parties on merits.