6/3/25, 9:32 PM 2018 C L D 1

2018 C L D 1

[Lahore]

Before Muhammad Farrukh Irfan Khan, J

Messrs HILAL CONFECTIONARY (PVT.) LTD.---Appellant

Versus

Messrs NAVEED ENTERPRISES and another---Respondents

R.F.A. No. 107 of 2006, decided on 16th October, 2017.

Trade Marks Ordinance (XIX of 2001)---

----Ss. 2(xxiv), 40, 46 & 42---Trade mark---Infringement/imitation---Disclaimer---

Various features of trade mark---Passing off actions---Adjudication of cases involving
alleged infringement/imitation of trademark(s)---Determination as to whether there
existed imitation/ infringement of trademark---Test and scope---For maintaining a
passing off action, registration of a trademark was not a requirement and even if there
existed a disclaimer on a product, a passing off action could still be maintained and
succeed if claimant succeeded in showing that disclaimed features in the registration had
acquired distinctiveness by virtue of use and promotion and enjoyed reputation and
goodwill in favour of claimant---Law envisaged each one of the features stated in S.
2(xxiv) of Trade Marks Ordinance, 2001, inter alia, a name, word, figurative element,
colour etc., to be mark by itself and any combination of such features would be a mark
also---When one feature of a label consisting of a combination of marks was adopted or
copied, infringement of such feature (a mark) took place; which was liable to be
remedied and it would not be a valid defence by a defendant, that he had not
adopted/imitated other features of a mark, which may be different---Infringement could
still take place if only word(s) were copied but not the colour scheme, design and get-up,
but such infringement was to the extent of such word(s)---Appearance in the market
place of a number of infringements/imitations of a trademark did not give justification
for a infringer/imitator to claim that original proprietor of trademark had lost such
proprietary status---Comparison by a Court between two trademarks was not to be a
meticulous comparison for the reason that in order to reach mind of an incautious or
unwary purchaser, the test should be if a person would be deceived when he/she saw one
trademark in absence of another mark.

Cecil De Cordova and others v. Vick Chemical Company PLD 1951 Privy Council 108;
Jamia Industries Ltd. v. Caltex Oil (Pak) Ltd. and another PLD 1984 SC 8; Mehran Ghee
Mills (Pvt.) Ltd. and others v. Messrs Chiltan Ghee Mills (Pvt.) Ltd. and others 2001
SCMR 967; Burney's Industrial and Commercial Co. Ltd. v. Rehman Match Works PLD
1983 Kar. 357; J/N. Nichols (VIMTO) Plc A Company Incorporated in the United
Kingdom v. Mehran Bottlers (Private) Limited, Karachi PLD 2000 Kar. 192; Messrs
Hiralal Parbhudas v. Messrs Ganesh Trading Company AIR 1984 Bombay 218; Bashir
Ahmed v. Firm Hafiz Habibur Rehman 1980 CLC 1268; Insaf Soap Factory v. Lever

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 1/13
6/3/25, 9:32 PM 2018 C L D 1

Brothers Port Sunlight Ltd. PLD 1959 Lah. 381 and Guardian Fire and Life Assurance
Co. v. Guardian and General Insurance Co. Ltd. (1880) 50 L.J. Ch. rel.

M. Tariq Malik for Appellant.

Muhammad Raheel Kamran Sheikh for Respondents.

Date of hearing: 13th July, 2017.

JUDGMENT

MUHAMMAD FARRUKH IRFAN KHAN, J.---Through this Regular First Appeal

filed under section 96 of the C.P.C. the Appellant M/s. Hilal Confectionary (Pvt.) Ltd.
has assailed the judgment and decree dated 6.12.2005 of the learned Additional District
Judge, Lahore whereby its suit for permanent injunction filed against the respondents
Messrs Naveed Enterprises and one Shakeel General Store has been dismissed.

2. The brief facts out of which this appeal has arisen are that the Appellant filed a suit for
permanent injunction restraining the Defendants/Respondents from infringement of its
Trade Mark Hilal Khopra Candy (Ex.P.6). It was asserted by the Appellant-company that
it has been manufacturing and marketing sweets and candies bearing the said trade mark
along with its label/wrapper in a particular colour scheme and design for the last many
years. It was also asserted that due to good quality, the sweets and candies of the
Appellant under this specific trade mark and label/wrapper have acquired great
reputation and goodwill throughout the country. It was also asserted that the said
trademark along with its colour scheme and design was pending registration in class 30
under application No.147128; that the copyrights in the said packaging of Hilal Khopra
Candy Sweets is duly protected under the Trade Mark and Copy Rights Laws. Along
with the suit the appellant attached certificate regarding pendency of trademark
registration application in class 30. The appellant pleaded that by adopting a trademark
Naveed Khopra Candy Sweets with identical packaging/label/wrapper, the respondents
are not only infringing the appellant's trademark rights but also passing off their goods
as the goods of the appellant and are thus continuously deceiving the appellant's
customers besides causing financial loss to it.

3. The respondents defended the suit by filing their written statement and pleaded that
the appellant has merely filed a copy of the application for registration of the trademark
which does not confer any exclusive right or cause of action in favour of the appellant;
that it was at the most a suit for passing off which was to be filed before the Court of
competent jurisdiction i.e. Civil Court and that the Court of District Judge had no
jurisdiction to entertain the instant suit and adjudicate upon it. They also asserted that the
appellant lacked knowledge as to the exact period since when they were using the said
trademark as they pleaded in the plaint that they had been using the said trade mark for
the last "many years". They refuted the plea of the appellant that Naveed Khopra Candy
or its wrapper/label was similar or identical to Hilal Khopra Candy and its wrapper/label
and submitted that as no exclusive right is vested in the appellant it cannot seek restraint
against use of a label/wrapper having different colour scheme and design by the
respondents as their trademark was Naveed Khopra Candy. It was alleged that the
appellant had no cause of action.

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 2/13
6/3/25, 9:32 PM 2018 C L D 1

4. Out of the divergent pleadings of the parties the learned Additional District Judge,
Lahore framed the following issues:

ISSUES:

1. Whether the plaintiff is the prior user of the distinctive Packaging, colour
scheme, design and getup of the disputed Trademark Hilal Khopra Candy
Sweets and have reputation and goodwill therein? OPP

2. Whether the trademark of the defendant Naveed Khopra Candy Sweets and its
packaging, colour scheme design and getup is deceptively and
confusingly similar or near resembles the distinctive Trademark of the
plaintiff products and is likely to cause confusion and deception to the
unwary purchasers? OPP

3. Whether the defendant is likely to pass off its goods as those of the plaintiffs
by virtue of its use of the disputed trademark and its colour scheme
design and getup? OPP

4. Whether the plaintiff has no locus standi and cause of action and has come to
the Court with unclean hands? OPD

5. Whether the defendant is entitled to recover special costs under section 35-A
of C.P.C.? OPD

6. Relief.

Evidence was led by both sides and arguments were advanced by the learned counsel.
Issues Nos.1 to 3 were decided against the appellant on the basis of which suit was
dismissed with no orders as to the costs. Hence, this RFA.

5. Arguments heard. Record perused.

6. It is to be noted that Ex.P-6 of appellant shows that the product packaging comprises
of dark blue label in which the dark blue shade becomes lighter going right side. Word
Hilal is written in yellow on the left upper corner. On the right upper corner protruding
towards the center of the label are khopra (coconut) tree leaves in green. The word
KHOPRA is written in white in a stylized manner slightly above the center beneath
which word "Candy" is written in red and a star device on left. A half cut coconut is
depicted on the lower right side. Thus the label/wrapper has an overall dark blue, white,
green and red colour scheme, design and getup. On the other hand Ex P-7 of respondent
also comprises of a dark blue colour in which the blue shade becomes lighter moving
upwards. The word "Excel" is written on right upper side and the coconut green leaves
are depicted in the bottom part upon which a half cut coconut fruit is placed. In the
centre, the word "KHOPRA" is written in gold colour just above the middle where light
and dark blue colours are blending beneath which on the right side word "Candies" is
written in yellow. The word KHOPRA is written in a similar style as written in
appellant's label/wrapper and just above the word KHOPRA the word Naveed is written
in yellow within a red oval shape circle with two parallel separated yellow outlines.
Thus the label/wrapper of the respondent also has a dark blue, light blue, white, green

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 3/13
6/3/25, 9:32 PM 2018 C L D 1

and red colour scheme, design and getup, with few points of difference here and there,
as compared to that of appellant's label/wrapper described above. Wrappers of both the
parties i.e. Ex.P.6 and Ex.P.7 are scanned here as under:-

7. In the first place this Court has observed that Issues Nos. 1 and 2 were not linked with
each other and had a different scope, thus it was inappropriate for the learned Trial Court
to decide the two independent issues together. They are taken one by one.

Issue No. 1:

Issue No. 1 required the learned trial Judge to decide whether the appellant was the prior
user of the packaging, colour scheme, design and getup of the Trademark HILAL
KHOPRA CANDY SWEETS and thereby gained reputation and goodwill, the onus
probandi was upon the appellant. The impugned judgment does not show that any
conclusive finding has been recorded by the Trial Court as to whether or not the
appellant was the prior user thereof. So, I will deal with this issue first.

The record shows that at the time of filing of the suit in the year 2000 though it was
mentioned in the plaint that the appellant/plaintiff had been using HILAL KHOPRA
CANDY SWEEETS along with its colour scheme, design and getup a few years before
the filing of the Plaint, but during the course of evidence PW1 specifically deposed that
appellant/plaintiff has been using the trademark HILAL KHOPRA CANDY with the
wrapper/label Ex-P-6 since 1993. Another witness, PW2, also deposed that the
appellant/plaintiff was manufacturing HILAL KHOPRA CANDY in their label/wrapper
since 1993.

The record further shows that PW-1 produced certificates of transmissions of PTV from
30th October, 1989 to 5th December, 2000 which reflect the commercials of HILAL
KHOPRA CANDY SWEETS aired on television. Copies of sales tax invoices are
marked C1 to C39. Advertisement copies from Akbar-e-Jahan have also been produced
in evidence. There is no evidence in rebuttal by the defendants to prove that they were
the prior user of their own wrapper/label, Ex-P-7. The learned Trial Court has failed to
discuss the above mentioned documents and evidence produced by appellant in the
impugned judgment and has not taken them into consideration in arriving at the
conclusion.

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 4/13
6/3/25, 9:32 PM 2018 C L D 1

The point in issue could be proved by producing independent documents to show that a
particular trademark or label has been used from a particular date. This clearly has been
done on behalf of the appellant/plaintiff by producing the above mentioned documents
and through statements of PW-1 and PW-2, whereas no independent documents were
produced by the defendants/respondents to prove that they were using the disputed
label/wrapper prior in point of time than the use of the label/wrapper (Ex.P.6) by the
appellant/plaintiff. Therefore, it stands proved on record that the appellant is the prior
user of the distinctive packaging, colour scheme, design and getup of the HILAL
KHOPRA CANDY SWEETS (Ex.P-6) and has acquired reputation and goodwill
therein. Therefore, the findings of the learned Trial Judge on Issue No.1 against the
appellant/plaintiff is reversed and Issue No.1 is decided in favour of the
appellant/plaintiff and against the respondents/defendants.

Issue No. 2:

Issue No. 2 is the main question to be decided between the parties. It clearly appears
from the contents of the plaint and rightly formulated in issue No.2 that the claim of the
appellant/plaintiff was against the use of NAVEED KHOPRA CANDY as well as its
packaging, colour scheme, design and getup (Ex-P-7) of the Respondent/defendant and
the Trial Court was required to decide whether the trademark of the defendant NAVEED
KHOPRA CANDY SWEETS and its packaging, colour scheme, design and getup is
deceptively and confusingly similar and nearly resembles the distinctive trademark of
the plaintiff's products and is likely to cause confusion and deception to the unwary
purchasers.

The impugned judgment shows that one of the witnesses P.W.1 on behalf of
appellant/plaintiff deposed that "Defendants were selling NAVEED KHOPRA CANDY
SWEETS in a wrapper which is almost similar to that of the Plaintiff and they are
deceiving the ordinary customers". PW2 on behalf of appellant/plaintiff deposed,
defendants have copied their colour scheme and design. It is therefore, clear that the
emphasis of the claim of the appellant/plaintiff was on the use of a similar
wrapper/label/colour scheme and design by the Respondent/ defendant. Witnesses of the
respondent/defendant deposed, as mentioned in the impugned Judgment, that "there was
no resemblance in the wrapper Ex-P-6 and Ex-P-7" and another witness DW2, dealer of
respondent/defendant, deposed that "wrapper of defendant was not identical to the
wrapper of Hilal Khopra and Hilal Khopra is being sold in blue colour whereas the
wrapper of the defendant's company is in light blue colour.....". The said witness further
deposed that about 30/35 companies were manufacturing Khopra candy in blue colour
wrapper.

Based on the above the learned Trial Court observed and held as follows:

"Moreover it is also evident from the plaintiff's wrapper, Ex-P6 and defendant's
wrapper, Ex-P7, that the plaintiff's wrapper is in light blue, whereas wrapper of
the defendant is dark blue. Moreover, there appears light green colour on
wrapper of the plaintiff, whereas there appears dark green colour on the wrapper
of the defendant. As such there is slight difference between the two wrappers.

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 5/13
6/3/25, 9:32 PM 2018 C L D 1

It is evident from the registration certificate dated 20th November 2004 of the
plaintiff Ex-P11 that it has been expressly got written on the bottom of this
certificate that it has no exclusive right in respect of Khopra Candy, so when the
registration of the plaintiff's firm provides that registration is not in respect of
Khopra Candy, so how the plaintiff can claim that the defendant's company is
passing off its goods in wrapper, the similar to the wrapper of the plaintiff's
company, because it is admitted between the parties from Ex-P7 that it stands in
the name of Hilal Khopra, whereas defendant's wrapper Ex-P6 stands in the
name of Naveed Excel "Khopra Candy", then how it can be concluded that these
trademarks are identical. Moreover, it has come in the evidence of the defendant
that Khopra is being sold by 30/35 companies in blue colour, as such it is
concluded that even if plaintiff is prior user, even then it would not give right to
the plaintiff to claim exclusive right in respect of Khopra Candy, hence it is
concluded that the plaintiff was unable to prove issues, so both the issues are
decided in favour of the defendant and against the plaintiff."

8. From the above quoted part of the impugned judgment it is apparent that the learned
Trial Court proceeded on a wrong premise to opine that there is "slight difference
between the two wrappers". The other aspect is that registration certificate dated 20th
November, 2004 of the plaintiff, Ex.P-11 has not been taken into consideration in its true
perspective. Only the disclaimer appearing on the registration certificate that
appellant/plaintiff has no exclusive right in respect of KHOPRA CANDY has been
noted. As stated above, the appellant/plaintiff's emphasis was on similarity of the
wrappers/labels Ex-P-6 and Ex-P-7. Yet another aspect of the impugned judgment is that
the learned Trial Court has observed that in the presence of disclaimer on KHOPRA
CANDY mentioned in the registration certificate the Appellant/plaintiff can not claim
that defendant is passing off its goods in wrapper similar to the wrapper of the Plaintiff s
company. Thus the Trial Court has erred in mixing the disclaimer on the word KHOPRA
CANDY with the rights that the Appellant/plaintiff has claimed by virtue of the
registration of the features of the whole label i.e. colour scheme, design, getup etc. and
also on account of prior use of the label wrapper/label of the KHOPRA CANDY (Ex-P-6
of the Appellant/plaintiff, about which it has already been held that the
appellants/plaintiff has succeeded to prove that they are its prior user and Issue No. 1 has
been answered in favour of the appellant/plaintiff). In addition to this, the learned Trial
Court committed a further error by overlooking the established principle of law that for
maintaining a passing off action registration of a trademark is not a requirement and
even though there may be a disclaimer on any particular feature on a wrapper/label, a
passing off action can still be maintained, and succeed, if the claimant succeeds in
showing that the disclaimed feature in a registration has acquired distinctiveness by
virtue of use and promotion and enjoys reputation and goodwill in favour of the
claimant, provided such a feature is capable of acquiring such distinctiveness.

It is clear from the impugned judgment that the Trial Court made minute and
microscopic comparison of the labels/wrappers of the parties and in doing so has not
sought guidance from the judicial precedents and the rules of comparison/test of
comparison laid down in a number of cases decided by the honourable Supreme Court
and the High Courts of the country. I may observe here that it is a very common defence
for any infringer to argue that either its word mark is different from the word mark of the
label, infringement/imitation of which is alleged by the claimant or in other cases when

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 6/13
6/3/25, 9:32 PM 2018 C L D 1

the word mark/trademark is imitated/infringed a defense is taken that the colour scheme
or the wrapper of the product is different, based on which it is argued that there is no
likelihood of confusion. It has to be noted that under the Trade Marks Ordinance, 2001 a
Mark has been defined by section 2(xxiv) as follows:

"Mark" includes, in particular, a device, brand, heading, label, ticket, name

including personal name, signature, word, letter, numeral, figurative element,
colour, sound or any combination thereof."

Thus the law envisages each one of the above features namely, inter alia, a name, a
word, figurative element, colour, etc., to be a mark by itself and goes on to further
specify that any combination of these features would be a mark also. In the market place,
generally for consumer products, it is usual for companies to market their products in
attractive colourful labels/wrappers/packaging, which often carries a word, a figurative
element, a particular colour scheme, design and getup. Each one of these features, as the
definition of the "mark" envisages, is a mark in itself. When one feature of a label
consisting of a combination of marks is adopted or copied, infringement or copying of
that feature (a mark) takes place which is liable to be remedied and it will not be a valid
defence by a defendant that he has not adopted/imitated other features of the label mark,
which may be different. Thus when a label comprising of a colour scheme, design and
getup and a word is copied/imitated by adopting a similar colour scheme, design or
getup but a different word, infringement to the extent of colour scheme design, and
getup would take place and can be injected to that extent. Similarly if a word is copied
but not the colour scheme, design and getup, the infringement takes place only to the
extent of word mark and it will not be open to a defendant to allege that due to different
word mark, or different colour scheme, design, getup, in the respective labels/
packaging, there will be no likelihood of confusion or deception. This aspect has been
explained/narrated in a number of reported cases, in a different context, by holding that
when one or more of the essential features of a mark or a label is infringed, infringement
takes place, for example, in the cases of Cecil De Cordova and others v. Vick Chemical
Company (PLD 1951 Privy Council 108), Jamia Industries Ltd. v. Caltex Oil (Pak) Ltd.
and another (PLD 1984 SC 8), Mehran Ghee Mills (Pvt.) Ltd. and others v. M/s Chiltan
Ghee Mills (Pvt.) Ltd. and others (2001 SCMR 967) I would, therefore, hold that the
plea that respondent's/defendant's mark is NAVEED KHOPRA CANDY whereas
Appellant's/Plaintiff's mark is HILAL KHOPRA CANDY and that the former's
label/wrapper, colour scheme, design and getup (Ex-P-7) which otherwise is confusing
and nearly resembling to that of latter's label/wrapper colour scheme, design and getup
(EX-P-6) be considered to be different is not a legally sustainable defence and must be
rejected.

9. With regard to trial court's observation that it has come in the evidence of
respondent/defendant that "Khopra Candy" is being sold by 30/35 companies in blue
colour and, therefore, even if the appellant/plaintiff succeed to show that they are the
prior user even then it would not give right to appellant/plaintiff to claim the exclusive
right to use Khopra and observed that the word "Khopra Candy" is generic in nature and
indicates that a particular candy/sweet has a Khopra (coconut) flavor, essence or filling
or is made of Khopra (coconut) and thus no exclusive right can be given to one
particular party on these words only. However, this does not mean that no right can be
claimed over colour scheme, design and getup of the KHOPRA CANDY product by the

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 7/13
6/3/25, 9:32 PM 2018 C L D 1

appellant/defendant. Secondly, even if it has come in the evidence of the

respondent/defendant that 30/35 companies are using Khopra Candy in blue colour that,
by itself, does not show that the wrapper/label/ packaging of those products, as a whole,
are dissimilar to that of Appellants'/Plaintiffs' Khopra Candy wrappers/label/packaging
Ex-P-6.

In that respect, the appellant/plaintiff has attached a list of almost 25 cases which the
Appellant/plaintiff has filed against various companies which have been decreed by the
courts of competent jurisdiction in favour of the Appellant/plaintiff. This aspect shows
that this particular product of the Appellant/plaintiff is a very popular and successful
product which catches the attention of different competitors who try to make a quick
buck by using its reputation and goodwill in the market place, in the said wrapper/colour
scheme/packaging and this unfair competition/infringement/passing off must be stopped
by the courts of competent jurisdiction if a claim is brought by the owners of such
successful traders before them.

10. Be that as it may, and independent of the above, it is to be noted that appearance in
the market place of a number of infringements/ imitations of trademarks or wrappers
colour scheme, design or getup does not give justification for an infringer/imitator to
claim that the trademark of the original proprietor has lost its proprietary status and that
due to such reason an infringer/imitator of such a trademark or label or wrapper is
entitled to continue with its imitation and infringement.

11. I now turn to determine whether the colour scheme, design and getup of
Respondent's label Ex-P-7 is deceptively and confusingly similar to or nearly resembles
the colour scheme, design and getup of the label Ex-P-6 of the Appellant/Respondent
and is likely to cause confusion and deception to the unwary purchasers. In the case of
Burney's Industrial and Commercial Co. Ltd. v. Rehman Match Works (PLD 1983 Kar.
357) it was observed that the Court dealing with an infringement action no doubt
considers the similarities and dissimilarities between the registered mark and the
offending mark but the decision of the Court should not depend upon the number of
similarities and dissimilarities alone. Consideration of similarities and dissimilarities is
only a factor or aid in reaching the final conclusion by the Court. There might very well
be a case where dissimilarities may out number the similarities but on account of the
general getup, colour scheme, design and other features of the two marks, the Court very
rightly reached to the conclusion that the offending mark was likely to deceive the
unwary purchaser.

The comparison by the Court between the two marks is not to be a meticulous
comparison, the reason being to reach the mind of an incautious or unwary purchaser
and for purposes of resemblance, the two marks should not be compared side by side
and the question in cases of alleged conflict between two marks always is whether a
person will be deceived when he sees one trade mark in the absence of another mark.

In the case of Jamia Industries Ltd v. Caltex Oil (Pak) Ltd. and another (PLD 1984 SC 8)
at page 10 para 5 going on to page 11 the honourable Supreme Court observed as
follows:

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 8/13
6/3/25, 9:32 PM 2018 C L D 1

"The examination of reported cases indicates that a decision on the question

whether a mark so nearly resembles another as to be likely to deceive or cause
confusion is not an exercise of discretion by a Tribunal but a finding of fact.
Kerly in his book Law of Trade Marks and Trade Names (1966 Edn.) at page 838
makes the following observations on the principles to be followed in comparing
the two marks.

"Two marks, when placed side by side, may exhibit many and various
differences yet the main idea left on the mind by both may be same. A person
acquainted with one mark, and not having the two side by side for comparison,
might well be deceived, if the goods were allowed to be impressed with the
second mark, into a belief that he was dealing with goods which bore the same
mark as that with which he was acquainted. Thus, for example, a mark may
represent a game of ball; another mark may show players in a different dress, and
in very different positions, and yet the idea conveyed by each might be simply a
game of football. It would be too much to expect that persons dealing with trade
marked goods, and relying, as they frequently do, upon marks, should be able to
remember the exact details of the marks upon the goods with which they are in
the habit of dealing. Marks are remembered rather by general impressions or by
some significant detail than by any photographic recollect of the whole.
Moreover, variations in details might well be supposed by customers to have
been made by the owners of the trade mark they are already acquainted with for
reasons of their own."

12. When the question arises whether a mark applied for bears such resemblance to
another mark as to be likely to deceive, it should be determined by considering what is
the leading characteristic of each. The one might contain many, even most, of the same
elements as the other, and yet the leading, or it may be the only, impression left on mind
might be very different. On the other band, a critical comparison of two marks might
disclose numerous points of difference, and yet the idea which would remain with any
person seeing them apart at different times might be the same. Thus it is clear that a
mark is infringed if the essential features, or essential particulars of it, are taken."

In the case of J/N Nichols (Vimto) Plc A Company Incorporated in the United Kingdom
v. Mehran Bottlers (Private) Limited, Karachi (PLD 2000 Kar. 192) a learned single
Judge of the Sindh High Court relied on the case of M/s. Hiralal Parbhudas v. M/s
Ganesh Trading Company (AIR 1984 Bombay 218) wherein the High Court of Bombay,
after taking into consideration several decisions of the Indian Supreme Court, summed
up well established principles to be observed in deciding the question of similarity of
two marks in the following manner:-

a) What is the main idea or the salient features?

b) Marks are remembered by general impressions or by some significant detail

rather than by a photographic recollection of the whole.

c) Overall similarity is the touchstone.

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 9/13
6/3/25, 9:32 PM 2018 C L D 1

d) Marks must be looked at from the view and first impression of a person of
average intelligence and imperfect recollection.

e) Overall structures, phonetic similarity and similarity of idea are important and
both visual and phonetic tests must be applied.

f) the purchaser must not be put in a state of wonderment.

g) Marks must be compared as a whole, microscopic examination being

impermissible.

h) the broad and salient features must be considered for which marks must not be
placed side by side to find out differences in design.

(i) Overall similarity is sufficient.

In the case of Burney's Industrial and Commercial Co. Ltd. v. Rehman Match Works
(PLD 1983 Karachi 357) it was held that where two marks are not identical the crucial
point requiring consideration would be that defendant's mark so nearly resembles that
plaintiff's registered trade mark as to be likely to deceive or cause confusion in the
course of trade and that it has to be seen whether an unwary or incautious or careless or
unguarded purchaser is likely to be misled or deceived into purchasing goods of a person
infringing the trade mark as goods of proprietor of trade mark keeping in mind vast
difference in literacy ratio and condition of life in Pakistan as compared to developed
countries.

Test is that of an unwary purchaser and it is he whose evidence only would be relevant-
Evidence of intelligent customer or even an expert may not be relevant.

Comparison by Court between two marks not to be meticulous - Court to reach mind of
an unwary purchaser - Question in cases of alleged conflict between two marks always
being whether a person will be deceived when he sees one trade mark in absence of
another mark.

At page 371 it is observed that

"9. It is for the Court to decide whether there is an infringement of the registered
trade mark in terms of section 21(1) of the Trade Marks Act, 1940. Evidence
given by purchasers to the effect that they were or were not deceived by the
infringing mark is generally not of much assistance to the Court. Evidence of an
expert witness or an intelligent customer or even a customer of average
intelligence who takes ordinary care while buying goods in the market, would
not be relevant as the test is that of an unwary purchaser and it is only the
evidence of an unwary purchaser which would be relevant. Then some witnesses
for the plaintiff in a trade mark whereas other witnesses giving, evidence for the
defendant may depose to the contrary. It may, therefore, be observed that
invariably the Court, after taking into consideration the two marks-the registered
and the infringing-decides whether the unwary purchaser is or is not likely to be
deceived."

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 10/13
6/3/25, 9:32 PM 2018 C L D 1

In the case of Bashir Ahmed v. Firm Hafiz Habibur Rehman, reported in 1980 CLC 1268
the Court at page 569 held that;

"In such like cases the test of the infringement of registered mark, as laid down
by a Division Bench in Ram Kumar Jalan v. R.J. Wood & Co., Ltd. (AIR 1941
Lah. 263) is whether the unwary purchaser is likely to be deceived."

This criterion was followed by another Division Bench of the Court in Insaf Soap
Factory v. Lever Brothers Port Sunlight Ltd. (PLD 1959 Lahore 381) and it was
observed:

"In cases of the infringement of trademark the test is whether the unwary
purchaser is likely to be deceived into purchasing the goods of the person
infringing the trademark as the goods of the owner of the trademark still holds
good. Not much weight can, therefore, be attached to the few points of
dissimilarity between the plaintiffs and defendant's wrappers to which our
attention has been drawn by the learned counsel for the appellant because the
points of similarity in them are so great that an unwary purchaser is likely to be
deceived in purchasing the defendant's goods as that of the plaintiff."

While determining the question of infringement of the respondent's trademark, it is to be

seen whether the public at large and not that an intelligent section of the public would be
confused and misled. Sir George Jessel M.R. in Guardian Fire and Life Assurance Co. v.
Guardian and General Insurance Co., Ltd. [(1880) 50 L.J. Ch.] maintained:

"The public are careless and it is no use supposing that if they paid a very
moderate attention to names they would see they were not the same, but only
similar, but they have in fact been deceived."

12. Therefore, in light of what has been stated above and the principles enunciated in the
above cases I hold that the colour scheme, design and getup of label/wrapper of
respondent/defendant Ex-P-7 is deceptively and confusingly similar or nearly resemble
the colour scheme, design and getup of the label/wrapper of Appellant/ plaintiff Ex-P-6
and is likely to cause confusion and deception to an unwary purchaser. Issue No. 2 is
therefore, answered in favour of Appellant/ plaintiff and against the
respondent/defendant.

Issue No. 3:

In view of the findings with regard to Issues Nos. 1 and 2, the findings of the learned
trial court on Issue No. 3 is set aside/overturned and it is held that by use of similar
wrapper/label Ex-P-7 the Respondent/defendant is likely to pass off its goods as goods
of Appellant/plaintiff as the Appellant/plaintiff is the original and prior user of the said
wrapper/label Ex-P-6 and has reputation and goodwill therein and is likely to suffer
damage to its said reputation and goodwill besides damage in the form of lost sales.
Hence Issue No. 3 is decided in favour of the Appellant/plaintiff and against the
Respondent/defendant.

Issue No. 4:

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 11/13
6/3/25, 9:32 PM 2018 C L D 1

In view of the findings on Issues Nos. 1, 2 and 3, the findings of the learned trial court
that the Appellant/plaintiff has no locus standi/cause of action to file the suit must be
reversed and set aside and it is held that in view of the findings on Issues Nos. 1, 2 and
3, the Plaintiff has a locus standi and a valid cause of action to file the suit and

Issue No. 4 is decided in favour of the Appellant/plaintiff and against the Defendant.

Issue No. 5:

There is no need to adjudicate on Issue No. 5.

In view of the above findings, the Impugned Order dated 06.12.2005 is set aside as a
whole and the issues are decided as above. As a consequence the suit of the
Appellants/Plaintiffs is decreed as prayed for.

KMZ/H-14/L Order accordingl

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 12/13
6/3/25, 9:32 PM 2018 C L D 1

https://www.pakistanlawsite.com/Login/PrintCaseLaw?caseName=2018L5001 13/13