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First Appeals from Original Orders Nos. 105 and 106 of 1970, decided on 14th June, 1973.

‑‑‑S. 53r‑Trade Marks Act (V of 1940), Ss. 6 & 14‑‑Civil Procedure Code (V of 1908), O. XXXIX, Rr. 1 & 2‑‑Suit for infringement of design‑‑Interim injunction restraining defendant from use of trade name, shape and design of plaintiff's products‑‑Plaintiff manufacturing 'National Fan' while defendant manufacturing 'Pak National Fan'‑‑Where trade mark used by defendant was so similar to plaintiff's trade mark that ordinary customer asking for 'National' fan was likely to be given a fan manufactured by defendant, and there was documentary evidence to prove prima facie that customers were deceived in purchasing other fans when they had gone for purchasing plaintiff's fan, plea of interim injunction, held, stood established‑‑Balance of convenience would lie in issuance of in motion as plaintiff was likely to suffer irreparable loss and injury if injunction was not issued.

‑‑S. 53‑‑Trade Marks Act (V of 1940), S. 6‑‑Civil Procedure Code (V of 1908), 0. XXXIX, Rr. 1 & 2‑‑Temporary injunction, grant of‑‑Trade name, design and shape used by plaintiff for manufacturing of his goods also used by defendant in manufacturing of his goods‑‑Plea of use for a long time of said mark and design by defendant with no objection from plaintiff repelled‑‑Prima facie, defendant started using the name of plaintiff's mark and design after being conscious of the popularity of the product of that name in the market‑‑There being a clear fraud on part of defendant, he could, held, neither make out a case of acquiescence nor could take advantage any delay in filing of suit.‑‑[Fraud].

‑‑S. 6‑‑Word 'National' not inherently adopted to goods‑‑Effect‑‑Where Court was concerned with passing off action and not with a matter of infringement of trade mark, plea of imitating word not inherently adopted, held, would have no relevance

Karachi Textile Works v . Multan Handloom Factory P L D 1955 Sind 351; Powell v. Birmingham Vinegar Co. (1896) 2 CH 54; Cecil De Cordova v. VIck Chemical Company P L D 1951 PC 108; Vapo Rub v. Karsote Vapour Rub A & F Bears Ltd. v. Ghulam Haider P L D 1955 Kar. 154; (Pears Soap v. Paras (Laundry) Soap); Pakistan Battery Manufacturing Co., Karachi v . Muhammad Hussain and others P L D 1970 Kar. 92 (3 Stars Battery v. 5 Stars Battery); Bande Nawaz Ltd. v. Registrar of Trade Marks, Karachi P L D 1967 Kar. 492; Firm S.M. Ismail Brothers v. A. Habib A I R 1946 Sind 70; (S. Mark Beedis v. Mark Beedis); Ram Kumar Jalan v. R.J. Wood & Co. Ltd. A I R 1941 Lah. 262 D.I. v. J.D. 1; Ghulam Rasul v. Emperor A I R 1941 Lah. 298; (Red Lamp v . Red Lamp); Firm Kooverji Becharlal v . Firm Aadam Haji Pirmahomed A I R 1944 Sind 21 and National Electric Stores and others v. General Electric Company Ltd. A ‑I R 1944 Lah. 386 ref.

‑‑‑S. 6‑‑Patents and Designs Act (XI of 1911), S. 53‑‑Validity of registration of design whether could be assailed in proceedings for grant of temporary injunction‑‑Without applying for rectification or cancellation of registration of designs before Registrar, a party, held, could not assail validity thereof, in proceedings seeking temporary injunction.

‑‑S. 53‑‑Trade Marks Act (V of 1940), S. 6‑‑Infringement of trade mark, shape and design‑‑Imitating word used as part of name of defendant‑‑Effect‑‑Where imitating word was used in such a way so as to appear that same was the trade mark, plea that such word being part of name of defendant, held, would have no substance.

‑‑‑S. 53‑‑Trade Marks Act (V of 1940), S. 6‑‑Civil Procedure Code (V of 1908), 0. XXIX, Rr. 1, 2 & 0. XLIII, R. 1‑‑Temporary injunction, grant of‑‑Where goods manufactured by plaintiff were being imitated in design and shape and sold by defendant as such, plaintiff, held, would be entitled to grant of interim injunction‑‑Order of Trial Court declining temporary injunction was set aside by High Court and same was granted to plaintiff restraining defendant from use of mark, shape and design of plaintiff's goods.

M. Nazir Sheikh for Appellants.

Ch. A. Waheed Saleem for Respondent No.l.

Hamid Mukhtar for Respondent No. 2.

Dates of hearing: 21st March; 10th April; 8th and 9th May, 1973

This judgment will dispose of F.A.Os. Nos 105 and 106 of 1970 and common question of law and fact are involved in them.

2. These appeals are directed against the orders dated 24‑3‑1970 passed by the learned District Judge, Lahore, dismissing the plaintiff/ appellant's applications for temporary injunction under Order XXXIX, Rules 1 and 2 in two suits. These two suits were filed for infringement of the same trade mark against the different fan manufacturers of Gujrat, namely, S. Nabee Bakhsh and Sons and National Electric Fan Manufacturers and one dealer of each manufacturer. Infringement of designs registered under the Patents and Design Act, 1911 is also complained.

3. The appellant filed two suits for permanent injunction restraining the defendants‑respondents from infringing his trade mark‑ and design and passing oft their goods as goods of the plaintiff‑appellant. He also prayed for the accounts of profits obtained by the defendants/ respondents and for decrees of damages as well as of delivering up in Court the infringing material and manufactured goods bearing the trade mark and registered design of the plaintiff‑appellant.

4. The appellant and respondent No.l in each appeal are carrying on the business of manufacture and sale of electric fans. It is alleged in the plaint that the plaintiff‑Company was established in ‑the year 1915 and it adopted the trade mark "National" in respect of electric fans of all descriptions. Before the Independence the appellant had his factory at Amritsar and after the establishment of Pakistan, he set up the factory at Shahdara and has acquired such reputation in the market that the word "National" when alluded to fans has come to mean the fans manufactured by the appellant. The appellant's application for registration of trade mark appears to have been rejected by the Registrar of Trade Marks but it is alleged in the plaints that the matter is still Sub judice in the High Court in F.A.0. 151 of 1967. The appellant got registered the Capacitor design under Registration No. 4045 under the Patents and Designs Act on 22‑11‑1965 while the non‑capacitor design was got registered under Registration Nos. 4345 and 4346 vide certificate dated 26‑8‑1967. The appellant spent a considerable amount of money for introducing the said designs in the market and these designs also have become well‑known to the public as the property of the appellant. Since the beginning of 1967, defendant No. 1 in each suit, fraudulently has started using this mark on his own goods and he has been passing off his goods as the goods of the plaintiff‑appellant. S. Nabee Bakhsh & Sons infringed all the abovementioned designs while National Electric Fans Manufacturers infringed registered Design No.4345.

On coming to know of the infringement, the appellant notified its registered design in several newspapers, i.e. Nawa‑i‑Waqat dated 14‑6‑1968, Imroze, dated 13‑6‑1968. Dawn Karachi dated i1‑6‑1968, Mashriq dated 12‑6‑1968 and Pakistan Times dated 9‑6‑1968. He also issued a proclamation by a pamphlet warning the imitators to stop infringing his trade mark and the registered design but these have no effect upon the respondents. On account of the illegal activities of the said respondent, the sale of the appellant's electric fans had been seriously affected and he is suffering considerable loss and damages.

In the case against S. Nabee Bakhsh & Sons it is further alleged that the appellant served a registered notice dated 15‑6‑1967 calling upon said respondent not to infringe the trade mark and registered design of the appellant. The said respondent sent a sort of undertaking not to imitate the trade mark "National" of the appellant in any,form on electric fans manufactured by them, but has been continuously infringing the trade mark and designs of the appellant‑Company.

5. Alongwith each plaint an application was also submitted under Order XXXIX, Rules 1 and 2 read with section 151, C.P.C. and under section 53 of the Patents and Designs Act, 1911 for an interim injunction restraining respondent No.1 from manufacturing and exhibiting his products by employing the trade mark "National" in any form to his electric fans and copying the shape of the regitered designs of the appellant‑ Commpany, and further restraining the sale of his imitated fans in any part of Pakistan during the pendency of the suit,

6. Respondent No. 1 in each appeal contested the suit as well as the application. It was denied for want of knowledge that the appellant had been using the trade mark "National" since the year. 1934. In the written statement it was also denied that this trade mark was being used by the appeallant till the month of August 1947 and also immediately thereafter. Similarly the registration of design was also denied. It was further denied that the word "National" was used with reference to the electric fans denoting the product of the plaintiff‑appellant. S. Nabee Bakhsh & Sons pleaded that he had been manufacturing his goods in the name of "PAK National" since 1965. National Electric Fans Manufacturers on the other hand pleaded that he had been manufacturing his goods in the name of his firm since the year 1957. It is further averred in each case that the said design had been prepared by the other companies also in Pakistan prior to the registration of the alleged design by the appellant. Reference has been made to a number of documents in order to prove that respondent No.l in each appeal had been manufacturing and supplying quality material and had also been exporting his fans to different countries. The validity of registration of design has also been challenged in each reply and written statement.

7. Temporary injunction in the two suits was issued ex parte but it was vacated after hearing the parties by the impugned orders. The learned District Judge came to the conclusion that the appellant had not been able to prove that he had a prima facie case either in regard to the passing off or to the infringement of the design. He also came to the conclusion that the plaintiff /appellant had filed his suit after long delay and this weakened his case for temporary injunction. It was urged before him that there were disimilarities between the design of the appellant on the one hand and that of respondent No.l in each suit, on the other hand, it was held that these dissimilarities were rather technical and the fact remained that the revolving heads of the fans of parties bore remarkable resemblance in their design and consequently an ordinary purchaser can be easily deceived. It was further held that the registration was of recent origin and it has not been shown by the plaintiff that the design registered by him was new or original. The learned District Judge referred to Karachi Textile Works v. Multan Handloom Factory P L D 1955 Sind 351 in which it was held in spite of registration, that the validity of registration of design can be challenged by a defendant in a suit for infringement. He also held that if injunction is issued it would practically ruin the trade of the respondent which cannot be compensated in the event of failure of the suit. The plaintiff on the other hand can be suitably compensated in the event of their succeeding in the suit.

8. Before discussing the arguments advanced by the learned counsel for the parties, I may give a resume of the documents placed on the record by the parties. From the documentary evidence placed on the record by the appellant, it appears that the appellant‑Company had been manufacturing electric fans under the trade mark "National' since 1934. He had been issuing calendars and other advertisement material advertising the National Electric Fan prior to the Independence. After the enforcement of the Trade Marks Act, 1940, the appellant submitted an application for registration of this trade mark to the Registrar, Trade Marks at Bombay on the 20th April, 1940. This application remained pending till partition of this sub‑Continent. A fresh application was submitted by the appellant to the Registrar of Trade Marks, Karachi on 6th August, 1952. Documents have also been placed on the record to show that the appellant had been exporting his product to other countries. There are some complaints by customers that they had been cheated by being supplied with imitation by S. Nabee Bakhsh & Sons and others. The advertisements of designs in the newspapers have also been placed on the record, There is a proclamation that the plaintiff's design was being infringed. A marked report submitted by some employee of the appellant on the 11th June, 1969 is also on the‑file. It shows that nine different companies of Gujrat, including respondent No.l, were manufacturing electric fans under the trade name 'National'.

In the suit against S. Nabee Bakhsh & Sons some additional documents have also been filed. A notice was sent on the 15th June, 1967 by the appellant to S. Nabee Bakhsh & Sons drawing his attention to the design of 1965 and alleging that he was manufacturing electrie fans similar to the fans manufactured by the appellant under the trade name 'New National'. He was threatened with an action .for infringement and a sum of Rs. 50,000 as damages was claimed from him. It appears that the said respondent agreed to give an undertaking that he would not in future sell the infringed material. The appellant's counsel sent a draft for a deed of undertaking to which an objection was taken by the said respondent. It was alleged that he agreed to only five conditions including the terms that he would not manufacture or sell any fan in the name of "New National"; that the appellant would keep him informed about his registration of patents and designs so that he (the respondent) may not commit any mistake; that if the above conditions are violated, respondent No.l would be liable to pay Rs.50,000 as damages to the appellant. A price list of the fans effective from 10th June, 1966 prepared by S. Nabee Bakhsh & Sons is also placed on the record. This is the price list of 'M.B.S. 'Fans.

9. S. Nabee Bakhsh & Sons has produced, (1) copy of certificate of fans which are not named, issued by the Pakistan Standard Institute on 6‑1‑1969, (2) certificate of origin of the year 1965 about "Pak National" fans, (3) excise duty paid on them, (4) certificate and diagrams showing technical difference between the 'Pak National' fans and 'National' fans, (5) catalogue of different companies in order to prove that the design was not new or invented one, (6) certain documents to prove that the word 'National' with reference to the fans was being used by a number of manufacturers, (7) a retail price list of 'Pak National' fans enforced from 1st February, 1965, (8) an export price list of 'Pak National' and N.B.S. Fans, (9) price list of 'Pak National' fans issued in the years 1967 and 1968 (10) letters from foreign firms from 1965 onwards regarding 'Pak National' fans (11) letters from dealers in Pakistan from 1965 onwards for the same fans, (12) bills of advertising agencies for advertisements for these fans in the year 1967‑68, (13) advertisements of N.B.S. Fans, Rim Jhim and Pak National Fans in different newspapers, (14) registration of the firm under section 58(1) of the Partnership Act and a photo of design.

National Electric Fans Manufacturers placed on record, (1) registration of the respondent's factory, (2) registered certificate issued by the Chief Controller of Exports and Imports, (3) recommendation for grant of import licence, (4) registration of the firm as approved contractors with different departments and WAPDA, (5) some correspondence with different departments, (6) Income‑tax assessment of the firm, (7) registration of the firm under section 58(l) of the Partnership Act, (8) booklet 'My visit to Bangkoke' written by Muhammad Hussain Qureshi, a Managing Director of the firm, (9) catalogue of the firm, (10) statement indicating the difference in shapes of the ceiling fan produced by the plaintiff‑Firm and defendant firm, (11) photostat copies of fans of different firms, (12) letters from Chamber of Commerce, (13) letters from Importers from other countries, (14) letters from dealers in Pakistan, (15) documents to prove export.

The plaintiff has been advertising his electric fans in the name 'National' with letter in the background in the middle of the word. On the fans this mark is printed in large letters. Then follows the description of the fan, voltage, etc. At the end is written the name and address of the plaintiff‑Company, S. Nabee Bakhsh & Sons print on their fans the word 'National' with the word 'Pak' in the background. The word 'National' is prominent and the word 'Pak' can be deciphered though with difficulty as only the upper and lower portions of the letters 'Pak' are partly visible. This is followed by the description of fan, its voltage, etc. and finally by the name and address of the firm. The National Electric Fans Manufacturers use the word 'National' in large letters which is followed in the next line by the words 'Electric Fans Manufacturers' in very small lettering. In the third line is the address of the firm, then follows the description about size and voltage, etc. The word 'National' is too prominent to be treated as part of the name of the firm and not a trade mark of the goods.

10. Although the documents placed on record show that the firm National Electric Fans Manufacturers is in the field since before 1960 they do not prove that this respondent had started selling his goods under the trade name 'National' or in a manner so as to give rise to apprehension in the mind of the appellant that the goods were being passed on as his goods. Admittedly the appellant uses the word 'National' in large letters on their products. The alleged infringed material of the respondent uses the word 'National' in similar large letters and the other part of the name of firm i.e. electric fans manufacturers is typed or printed in much smaller letters in the second line. Except for one document of 1968 all the other documents show that the above respondent used name 'National Electric Fans Manufacturers' in lettering of the same size and in one line as the name of the firm. They do not prove that the word 'National' was written as a trade mark. There is no document to establish that before 1967 the word 'National' was singled out for being written prominently in large letters. The documents filed by National Electric Fans Manufacturers are, therefore, not very relevant to prove that suit of the plaintiff‑appellant against that firm is in any way belated.

11. As regards S. Nabee Bakhsh & Sons it is apparent from the documentary evidence placed on record by the appellant that the above respondent was manufacturing goods and selling them in the name of 'New National'. This was objected to by a notice by the appellant and in reply to that notice the said respondent at once agreed to discontinue the manufacture of the infringing manufacture in the name of 'New National' and according to the design of the appellant. He also agreed that on his failure to comply with this condition, he would be liable to pay Rs.50,000 as damages. On principle I do not see any difference between the name 'New National' and 'Pak National'. The objection of the appellant was about the use of the word 'National' and not about the prefix 'New'. If the respondent had been using the name 'Pak National' also prima facie it appears that the appellant did not have any knowledge about this infringing product before the year 1967. If he had known about it before 1967 he must have taken an objection about it also in his notice in the same manner as an objection was taken by him to the use of the trade name 'New National'. One thing is apparent from the documentary evidence that although the said respondent had been selling similar type of fans under the trade name N.B.S. and Rim Jhim, he wanted to stick to the trade name 'National' somehow or the other in spite of his undertaking not to use the trade name 'New National'.

12. The first question is whether the appellant has been able to show that he has a prima facie case. The similarity of design is admitted. It is also not disputed that some designs of the plaintiff are registered. It was not disputed during arguments before me, perhaps in view of the abundance of the documentary evidence, that the appellant had been using the trade name 'National' since 1934 and after the enforcement of the Trade Marks Act, he has been making constant efforts to get this registered. Admittedly he was the first to start manufacturing his goods under the same trade name in Pakistan. In an affidavit filed by Abdur Rahim son of Sh. Muhammad Din before the Registrar of Trade Marks, Karachi, on the 31st March, 1957, the production of fans from the years 1948 to 1957 was shown. It is apparent from the production figures that except for the year 1953‑54, the production was constantly increasing and this increase waq. more than ten times in the year 1956‑57

as compared to the production figure of 1948‑49. This is indicative of the fact that the appellant had got a firm footing in the market. I have, therefore, no reason to disbelieve the affidavit that the word 'National' when used in connection with electric fans has come to mean the fans produced by the appellant. The defendants in the two suits started manufacturing their fans with identical trade marks after a long time. There is documentary evidence to prove prima facie that customers were deceived in purchasing other fans when they had gone for the fans manufactured by the plaintiff. The trade mark used by the respondent in each suit is so similar to the plaintiff‑appellant's trade mark that an ordinary customer asking for 'National' fan, meaning thereby the plaintiff's fan, is likely to be given any fan manufactured by either respondent, by the dealer. A large number of customers purchasing electric fans may be illiterate. For them the name of the firm may have either no meaning or a secondary meaning. It is always very easy to pass off the goods of the respondent to such customer as the goods of the plaintiff. Even literate persons may be deceived in the present case by close similarity of the names of goods of respondent in each case.

13. One of the points taken by the respondent had been that a number of manufacturers are manufacturing fans in the name of 'National'. During arguments before me also the learned counsel gave a large number of such examples. This means that the word 'National' has become so popular in the market that manufacturers consider it profitable to offer their wares under that name. This argument in fact supports the averments in the affidavit referred to above. None of these points were taken into consideration by the learned District Judge and I am, therefore, of the view that the appellants have been able to show that B they have a prima facie case and other manufacturers of electric fans including respondent No.l in each appeal using the trade name 'National' are trying to take advantage of the appellant's reputation in the market. This being the case the balance of convenience lies in the issuance of injunction as the plaintiff is likely to suffer irreparable loss and injury if injunction is not issued. In Rexona Proprietary Ltd. v. Majid Soap Works P L D 1956 Sind 1 it was held that where the evidence of similarity of mark or design is so clear that fraud is intended, the argument of convenience cannot be sustained. Similar observations are to be found in Ebrahim Currim & Sons v. A.K. Abdullah Sahib A I R ( ) Mad. 206 which was relied upon in the Sind case. In Tekronx Inc. v. M. Abdul Mannan P L D 1973 Kar. 14 the question of delay was held immaterial for issuance of temporary injunction where similar mark is used by the respondent. The reason is clear that in such case fraud is intended.

14. The learned counsel for the respondent made a detailed reference to above documents filed by respondent No.l. I have already dealt with them. He argued that the word 'National' is not registered and such a suit for infringement is not competent. This argument has no force as the case of the appellant is that of passing off and such a suit is competent under section 20(2) of the Trade Marks Act. He then submitted that each respondent's fan was approved by different Government Authorities. This approval does not give the above respondent a right to infringe, the mark or design of another, person or to pass off their goods as the plaintiff. This argument only shows that certain Government Agencies were not deceived but that does not exclude the possibility of ordinary customers being deceived.

15. It was next contended that the respondent had been using the name without any objection for a long time and as such no temporary injunction can be issued: I have already dealt with this question on the factual plane. I am of the view that prima facie the respondent, in each suit, started using the name 'National' after being conscious of the popularity of the product of that name in the market. There being a clear fraud in this respect the respondent can prima facie neither) make out a case of acquiescence nor can take advantage of any delay in the filing of the suit. The learned counsel half‑heartedly also argued that the word 'National was not inherently adapted to the goods. This argument is not relevant for the reasor that I am concerned with a case of passing off and not of a matter falling under section 6 of the Trade Marks Act.

16. Both the learned counsel relied upon a large number of cases. In regard to the test for infringement or passing off the learned counsel for the appellant relied upon Powell v. Birmingham Vinegar Co. (1896) 2 CH 54; Cecil De Cordova v. Vick Chemical Company P L D 1951 PC 108; Vapo Rub v. Karsote Vapour Rub A & F Bears Ltd. v. Ghulam Haider P L D 1955 Kar. 154; (Pears Soap v. Paras (Laundry) Soap); Pakistan Battery Manufacturing Co., Karachi v. Muhammad Hussain and others P L D 1970 Kar. 92 (3 Stars Battery v. 5 Stars Battery); Bande Nawaz Ltd. v. Registrar of Trade Marks, Karachi P L D 1967 Kar. 492 (The Registered Trade Mark of the objector was Dear Brand. The application of the appellant for registration of trade mark Dear Brand with Bandenawaz written across it was refused on account of resemblance) Firm S. M. Ismail Brothers v. A. Habib A I R 1946 Sind 70 (S. Mark Beedis v. Mark Beedis); Ram Kumar Jalan v. R.J. Wood & Co. Ltd. A I R 1941 Lah. 262 D‑1 V. J.D.1; Ghulam Rasul v. Emperor A I R 1941 Lah. 298 (Red Lamp v. Red Lamp); Firm Kooverji Becharlal v. Firm Aadam Haji Pirmahomed AIR 1944 Sind 21; Mour Brand on bags of gram flour and gram dal of plaintiff and two peacocks applied to the similar bags containing similar goods by defendant); National Electric Stores and others v. General Electric Company Ltd. A I R 1944 Lah. 386 (Osram Bulb v. Osram Flash Light Bulb); Dhana Lakshmi Weaving Works v. Hajee Muhammad Abdul Azeez Sahib A I R 1942 Mad. 179 (Diamond on White Twil Shirting v. Diamond on Coloured Stripped Shirting): Boots Pure Drug Co. Ltd. v. The Registrar of Trade Marks, Karachi P L D 1973 Notes 7 (Sweetex); Tektronix Incorporated v. M. Abdul Manan P L D 1973 Kar. 14 (Tektronix v. Teehtronics), Insaf Soap Factory v. Lever Brother Port Sunlight Ltd. P L D 1959 Lah. 381 (New Doctor Soap in wrappers which were colourable imitation of the get up of respondents wrappers).

17. It is not necessary to deal with all these cases. The principle evolved has always been that no man is entitled to represent his goods as being the goods of another man, and no one is permitted to use any mark, sign or symbol, device or other means, whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such purchasers to tell a lie or to make a false representation to somebody else who is the ultimate customer.

18. The learned counsel for the respondent did not disagree with this established proposition of law. His objection was that "the test in case of this nature is not whether the unthoughtful customer would be deceived. According to him the name of the firm written on the goods of the parties provides sufficient indication about the manufacturer of that goods. In this connection he placed reliance upon Messrs Lipton Ltd. v. Messrs Frontic Camellia P L D 1954 Sind 124 and Messrs Modi Sugar Mills Ltd. v. Tata Oil Mills Co. Ltd. A I R 1943 Lah. 196. These cases have been dissented from by a Division Bench of the High Court of West Pakistan in Insaf Soap Factory v. Lever Brothers Ports Sunlight Ltd. P L D 1959 Lah. 381. In that case the test laid down in Ram Kumar Jalan v. R.J. Wood & Co. Ltd. A I R 1941 Lah. 262 was approved. It was held that the test in the case of this nature is whether the ordinary or unwary purchaser is likely to be deceived.

19. The learned counsel for the respondent submitted that the word 'National' is a name which is common to the trade and in this connection relied upon Firm Daulat Ram v . Firm Vera Mall A I R 1938 Lah. 803 . Crescent Pak Soap and Oil Mills v. The Deputy Registrar, Trade Marks, Chittagong and Messrs Premier Soap Factory P L D 1965 SC 292, Sadhana Aushadhalya Ltd., Dacca v. Nutuan Chandra Singa and another P L D 1969 Dacca 314 and Pakistan Soap Factory v. Chittagong Soap Factory and another P L D 1970 SC 460. All these cases are distinguishable. In Firm Daulat Ram v. Firm Vera Mall A I R 1938 Lah. 803 the numerals 4424 and the letters H.R. were held common to the trade but the same thing cannot be said at this stage about the word 'National'. In Crescent Pak Soap and Oil Mills v. The Deputy Registrar of Trade Marks and others P L D 1965 SC 292 the case was distinguished from those cases where one can establish a proprietary right to a name by a sufficiently long use when it might be said that it had become associated with the products manufactured by such a person. This principle is the same which I have already discussed above. In the Dacca case (Sandhana Aushadhalya Ltd., Dacca v. Nutun Chandra Sinha and another) the name 'Saribadi Salsa' was registered. It was held thaf no one has a right to exclusive use of the word 'Saribadi' only. In the Pakistan Soap Factory v. Chittagong Soap Factory and another P L D 1970 SC 460 the figures 1947 and 1937 were held to be dissmilar, phonetically as well as otherwise.

20. The learned counsel also referred to Messrs Punjab Soap Factory, Lahore v. the Assistant Registrar of Trade Marks, Karachi P L D 1970 Kar. 444 and Messrs Surya Brothers v. Messrs Dada Soap Factory Ltd. P L D 1971 Kar. 189 for the proposition that the Trade Marks Act did not object to the bona fide concurrent use of a name. The first authority is clearly distinguishable as the words 'Punjab Soap Factory' were refused to be registered on the ground that they were not adopted to distinguish the goods under section 6(1)(a). The second case is against the respondent as the registration of 'Kala Pan' was refused on the ground of similarity to the name 'Lal Pan' which had already been registered.

21. The learned counsel for the respondent then argued that it is open to the respondents to challenge the validity of the registration of designs in these proceedings without applying for rectification or cancellation before the Registrar. He relied upon Karachi Textile Works v. Multan Handloom Factory P L D 1955 Sind 351 and Qadar Bakhsh v, Ghulam Muhammad A I R 1934 Lah. 709. This particular proposition has been considered in sufficient detail in Silver Cotton Textile Mills Ltd. L and another v. Bawany Violin Textile Mills Ltd. PLD 1963 (W.P.) Kar. 79. It was held that the common law rule that defence of invalidity of a registration of design can be raised in a suit for infringement without applying for cancellation or rectification, is inapplicable to' suits filed in Pakistan. I respectfully agree with the principle of law laid down in this authority. Moreover, in the case against Nabee Bakhsh & Sons the respondent cannot take up this objection for the reason that he had already agreed to give an undertaking not to use any design registered patented under the above Act.

22. Lastly the learned counsel for the respondent argued that the respondent would be suffering irreparable damage if the injunction is issued and ultimately the appellant's suit is dismissed. He, therefore, suggested that the appellant can be asked to maintain accounts as was done in Karachi Textile Works v. Multan Handlooms Factory, P L D 1955 Sind 351, Yashimi Bashaka Ka Sha Ltd. and others v. Dwarkadas Fatehchand A I R 1933 Sind 426 and American Cyanamid Co. v. Pakistan Pharmaceutical Product Ltd. Law Notes 1970 Kar. 455. That principle may not apply to the present case as I have come to the conclusion F that the appellant has a prima facie case and the use of the trade name 'National' by the respondent does not appear to be bona fide. In the present case the principle of law as laid down in Rexona Proprietary Ltd. v. Majid Soap Works P L D 1956 Sind 1, Ebrahim Currim and Sons v. A.K. Abdullah Saheb A I R 1934 Mad. 226, Tektronix Incorporated v. M. Abdul Mannan, P L D 1973 Kar. 14 and Firm S.M. Ismail Brothers v. A. Habib A I R 1946 Sind 70 will apply. The learned counsel lastly argued that at least in the case of National Electric Fans Manufacturers the word 'National' is only a part of the firm's name. I have already shown that the word 'National' is written in large letters so as to appear that this word is the trade mark. In Valentine Meat Juice Co. v. Valentine Extract Company Ltd. (1901) 83 LT 259 : 16 T L R it was held that there is in principle no distinction between a case in which the name of the use of which the complaint is made, is the name of the person carrying on the business and a case in which it is not. The principle of law is laid down in Reddaway v. Behham 1896 AC 199 that nobody has any right to present goods as the goods of somebody else is applicable to such cases also. This principle was also relied upon in V. Abdul Kareem Sahib v. A. Abdul Kareem Sahib A I R 1931 Mad. 461. The argument of the learned counsel for the respondent that 'National' is a part of the name of the respondent, therefore, has no substance.

23. I allow these appeals with costs and issue the temporary injunction in terms of the prayer in each petition for temporary injunction

A. A./S‑8/L Appeals allowed

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