Said Karim, Proprietor Karim PVC Pipe Factory, Faisalabad VS Khushi Muhammad through his legal heir

Stereo. H C J D A-38.

JUDGMENT SHEET

IN THE LAHORE HIGH COURT, LAHORE

JUDICIAL DEPARTMENT

RFA No.66 of 2006

Said Karim, Proprietor Karim PVC Pipe Factory, Faisalabad Versus Khushi Muhammad through his legal heirs

JUDGMENT

Date of hearing: 02.02.2026 Appellant by: Mr. Muhmmad Shakeel Abid, Advocate. Respondents by: Ch. Shaukat Ali Javed, Advocate.

MUHAMMAD SAJID MEHMOOD SETHI, J.- This consolidated judgment shall dispose of instant appeal along with connected appeals i.e. FAO Nos.283 & 285 of 2006 and FAO No.229 of 2007, as common questions of law and facts are involved in these cases.

This Court, vide judgment dated 17.05.2006 rendered in the titled appeal, had remitted the matter to the Registrar of Trade Marks for decision. Subsequently, in view of order dated 12.10.2006 passed by the Hon’ble Supreme Court of Pakistan in Civil Petition No. 435 of 2006, the matter has been remanded back to this Court with a direction to adjudicate the appeal on merits.

2.Through instant appeal, appellant has assailed the consolidated judgment and decree dated 26.01.2006, passed by learned Additional District Judge, Faisalabad, whereby appellant’s suit for perpetual injunction was dismissed and respondents’ suit seeking same relief was decreed.

Through connected FAO No.283 of 2006, appellant has challenged order dated 28.06.2006, passed by the Registrar of Trade Marks, whereby appellant’s Rectification Application on Form TM-26 dated 18.09.2003 for rectification or expunction of the entry in the register of trade mark No.125009 in class 17 consisting

RFA No.66 of 2006 & connected cases

of Trade Mark ADAMJEE registered in the name of Khushi Muhammad, trading as PVC pipe factory, Faisalabad was dismissed.

Through connected FAO No.285 of 2006, appellant has challenged order dated 28.06.2006, passed by the Registrar of Trade Marks, whereby appellant’s Rectification Application on Form TM-26 dated 15.09.2003 for rectification or expunction of the entry in the register of trade mark No.104482 in class 17 consisting of Trade Mark ADAMJEE registered in the name of Khushi Muhammad, trading as PVC Pipe Factory, Faisalabad was dismissed.

Through connected FAO No.229 of 2007, the respondents have challenged the order dated 25.04.2007 passed by the Registrar of Trade Marks, Lahore, whereby they were restrained from using any label similar to the appellant’s trade mark “ADAMJEE” and were directed to use the trade mark “KARIM ADAMJEE PVC PIPE” in one line and in a different script, along with prominently displaying their trading style, namely, “M/s. KARIM PVC PIPE FACTORY, FAISALABAD,” on the labels/packing cartons of the goods, as and when offered for sale. They were further restrained from using the mark “KARIM ADAMJEE” in the Provinces of NWFP and Punjab.

3.Briefly stated, the appellant instituted a suit for perpetual injunction on 29.10.2003 before the learned Additional District Judge, Faisalabad, which was registered as suit No.17-1 of 2003, while on 31.10.2003, the respondent also filed a cross-suit bearing No.18-1 of 2003 seeking similar relief. The controversy between the parties emanates from their business relationship, as both claimed to have jointly commenced the business of manufacturing and sale of P.V.C. pipes in the year 1988 under the name and style of Naveed P.V.C. Pipe Factory, Faisalabad, and to have adopted the trade marks “ADAMJEE” and “ADAMJEE P.V.C.” A partnership deed dated 13.07.1992 was executed between the parties, under

RFA No.66 of 2006 & connected cases

which they asserted joint ownership of the said trademarks. According to the pleadings, the partnership was subsequently dissolved, whereafter the appellant established his separate unit under the name Karim P.V.C. Factory at Faisalabad, while disputes persisted regarding the ownership and use of the trade marks. Out of the rival pleadings, learned Trial Court framed the following issues:-

ISSUES

1.Whether the plaintiff has got no cause of action? OPD

2.Whether the plaintiff is estopped by his words and conduct to file the suit? OPD

3.Whether the suit is barred by law? OPD

4.Whether the suit is liable to be dismissed under order 7 rule 11

CPC?OPD

5.Whether the suit of the plaintiff is liable to be dismissed on the basis of withdrawal of his earlier suit on 30.10.2003? OPD.

6.Whether the plaintiff is entitled to the decree as prayed for in his suit No.17-1 of 2004 titled "Said Karim (Karim Khan) Vs. Khushi Muhammad" ?OPP (Said Karim).

7.Whether the defendant is entitled to the decree as prayed for in his suit titled M/S Naveed P.V.C. Vs. Said Kareem Khan? OPD (Khushi Muhammad).

8.Whether the defendant is entitled for special cost? OP Saeed Karim

9.Whether the plaintiff has not come up in this Court with clean hands, hence his suit is liable to be dismissed? OP Saeed Karim

10.Relief.

Thereafter, the parties adduced their respective oral and documentary evidence. During the pendency of the proceedings, an interim order was also assailed before this Court through F.A.O. No.230 of 2004, which was dismissed as not maintainable with the observation that the parties could avail their remedy in appeal after decision of the suits. Ultimately, vide consolidated judgment & decree dated 26.01.2006, the learned Trial Court dismissed the

RFA No.66 of 2006 & connected cases

appellant’s suit and decreed the suit filed by the respondent, giving rise to the present appeal.

4.Learned counsel for the appellant contends that the learned Trial Court failed to give due weight to the partnership deed dated 13.7.1992 (Exh.P1) and other documentary evidence produced by the appellant, including Marks A to E, which clearly established the appellant as a co-owner and prior user of the trademark ADAMJEE. He adds that the Court also overlooked that the respondent’s own evidence and documents, including cancellation of partnership (Exh.D1), corroborated the appellant’s claim. He argues that the appellant’s use of the trademark from 1988 predates the respondent’s registered trademark, entitling him to protection as an honest and prior user under Sections 10(2) and 25 of the Trade Marks Act, 1940, and that goodwill attached to the mark has vested in the appellant under Section 54 of the Specific Relief Act. He maintains that the findings of the learned Trial Court were based on conjecture rather than evidence, misconceived the real dispute as one of confusion or deception, and thus erroneously dismissed the appellant’s suit while decreeing that of the respondent. Finally, he submits that the impugned judgment & decree, being unsustainable in the eye of law, is liable to be set aside. In support, he has referred to Pakistan Soap Factory v. Chittagong Soap Factory and another (PLD 1970 Supreme Court 460), Lallubhai-Amichand v. The Punjab Aluminium Factory, Gujranwala [PLD 1960 (W.P.) Karachi 545], Messrs Sadhana Ausadhalaya v. Messrs Rackitt, Colman, Chiswick (Overseas) Ltd. and another (PLD 1965 Dacca 41), Anwar Industries Ltd. v. Muhammad Ishaque Gondal and others (1988 CLC 489), Mohsin Aziz Butt and others v. General Electric Industries and others (1988 CLC 1358) and Gallup Business Research Services (Pvt.) Limited v. Registrar of Trade Marks and another (2020 CLD 1404).

5.Conversely, learned counsel for respondents defends the impugned decision and contends that the respondents are the lawful

RFA No.66 of 2006 & connected cases

and exclusive registered proprietor of the trade mark “ADAMJEE PVC PIPE”, registered in his favour since 1993 and duly renewed, whereby exclusive statutory rights stand vested in him under the Trade Marks Act, 1940. He further submits that such registration carries a strong presumption of validity, which cannot be displaced merely on the basis of unproved documents or assertions of alleged partnership or user. He argues that the appellant, having failed to establish any superior or legally enforceable right, is not entitled to seek injunction against the respondent’s lawful use of the registered trade mark.

6.Arguments heard. Available record perused.

7.The pivotal issues No.6 & 7 are inter-linked and inter- connected, hence are decided jointly. The remaining issues No.1 to 5, 8 and 9 have not been pressed before this Court. The appellant produced as many as seven witnesses and exhibited documents as Exh.P-1 to Exh.P-8. Conversely, the respondents produced six witnesses and documentary evidence as Exh.D-1 to Exh.D-12. The appellant’s claim is fundamentally predicated upon the alleged partnership deed dated 13.07.1992 (Exh.P-1), through which joint ownership and concurrent user rights in the trade mark “ADAMJEE” are asserted. However, the evidentiary value of the said document is fatally undermined. Only one marginal witness was examined, who admittedly is the real brother of the appellant, while the other attesting witness was neither produced nor was any plausible explanation furnished for his non-production. It is a settled principle of law that a document required by law to be attested must be proved through its attesting witnesses; failure to do so renders such document legally unproved. The learned Trial Court, therefore, rightly discarded the said document as having not been proved in accordance with law. Reference can be made to Province of the Punjab through Collector, Sheikhupura and others v. Syed Ghazanfar Ali Shah and others (2017 SCMR 172), Pakistan Engineering Consultants through Managing Partner v.

RFA No.66 of 2006 & connected cases

Pakistan International Airlines Corporation through Managing Director and another (PLJ 2006 Karachi 209).

8.It is not disputed that the trade mark “ADAMJEE PVC PIPE” stands registered in favour of respondent Khushi Muhammad under Registration No.104482 since 1993 and has been duly renewed. In terms of Section 39 of the Trade Marks Ordinance, 2001, upon registration, a trade mark becomes the personal property of the registered proprietor, who acquires the exclusive right to use the same in relation to the goods or services for which it is registered, subject to the provisions of the Ordinance. The proprietor of a registered trade mark has the exclusive right to prevent any unauthorized use of the mark. In case of any infringement, the proprietor has the right to obtain any relief under the Ordinance, 2001 and under any other law for the time being in force. Section 40 covers the instances and provides elements of the infringements. Under section 40(1), a person infringes a registered trade mark if he uses in a course of trade, a mark which is identical with the trade mark in relation to goods or services, which are identical with those, for which it is registered. Under section 40(2), a person infringes a registered trade mark if such person uses in the course of trade a mark which is deceptively similar to the trade mark and is used in relation to goods or services identical with or similar to the goods or services for which the trade mark is registered. Under section 40(3), a person infringes a registered trade mark if he uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark in relation to (a) goods of the same description as that of goods in respect of which the trade mark is registered; (b) services that are closely related to goods in respect of which trade mark is registered; (c) services of the same description as that of services in respect of which the trade mark is registered; or (d) goods that are closely related to services in respect of which the trade mark is registered. Section 40 (4)

RFA No.66 of 2006 & connected cases

provides that a person shall infringe a registered trade mark if he uses in the course of trademark in relation to goods or services which are not similar to those for which the trade mark is registered when deceptively similar to the registered trade mark. Section 40(5) stipulates that a person shall infringe a registered trade mark if he uses such registered trade mark as his trade name or part of his trade name. Section 40(6) specifies that a person shall infringe a registered trade mark if the person uses such registered trade mark as his domain name or part of his domain name or obtains such domain name without consent of the proprietor of the registered trade mark, with the intention of selling such domain name to another including the proprietor of the registered trade mark. Section 46 postulates that an infringement of a registered trade mark shall be actionable by the proprietor of the trade mark. The rectification applications filed by the appellant were also dismissed by the Registrar of Trade Marks, thereby affirming the respondent’s statutory title. Registration under the Trade Marks Act, 1940 confers exclusive proprietary rights upon the registered proprietor and carries with it a strong presumption of validity. The appellant has failed to establish any legally enforceable right capable of displacing or overriding these statutory protections. Reference is made to Messrs Akhtar Muhammad and Brothers through Proprietor v. Haji Muhammad Nabi and Brothers and another (2011 CLD 1730), Muhammad Saleem Warind v. Mazhar and 2 others (2015 CLD 655) and Mahnaz Mirza Malik through Attorney v. Bilal Embriodery through Owner / Partner and 2 others (2021 CLD 507).

9.The plea of prior or concurrent user is equally devoid of merit. The appellant’s own pleadings acknowledge that the business was initially commenced jointly and that the respondent was already using the mark. Consequently, the appellant cannot be characterized as a prior user. Nor does the record support a case of lawful concurrent use in the absence of any subsisting legal

RFA No.66 of 2006 & connected cases

entitlement. Mere user, howsoever prolonged, does not ipso facto confer enforceable rights against a registered proprietor.

10.The learned Trial Court has correctly concluded that the appellant’s use of the mark “ADAMJEE KARIM PVC PIPE” constitutes infringement. The incorporation of a personal or trading name does not mitigate infringement where the dominant and essential feature of the registered trade mark is reproduced in its entirety. Given that both parties deal in identical goods, the likelihood of confusion and deception among consumers of ordinary prudence is apparent. The appellant has also failed to establish any bona fide justification for adoption of an identical mark. Reliance is placed upon National Detergents Limited v. MOD International (Pvt.) Ltd. (1993 MLD 590), Messrs Ahaukat Soad and Ghee Industries (Pvt.) Ltd. v. Messrs Shaukat Brothers Soap Manufacturers (Pvt.) Ltd. (2016 CLD 1036), Alle’Nora Beauty Salon and Parlour through Partner and others v. Mrs. Qurat-ul-Ain Mansor and others (2016 CLD 1062) and Master Motors Corporation (Pvt.) Limited through Attorney / Authorized Officer v. Master Road Corporation SMC (Pvt.) Limited through Proprietor / Partners / Managers and others (2021 CLD 838).

11.Furthermore, the assertion that a written partnership involving substantial commercial interests was dissolved orally without any contemporaneous record or settlement is inherently improbable and contrary to ordinary business practices. Such improbabilities were rightly weighed by the learned Trial Court while rejecting the appellant’s version.

12.In view of the foregoing, the appellant has failed to establish any legal right, proprietary interest, or equitable entitlement in respect of the registered trade mark “ADAMJEE”. The findings recorded by the learned Trial Court are the result of proper appreciation of evidence, correct application of settled legal principles, and sound judicial reasoning. No perversity, illegality, or

RFA No.66 of 2006 & connected cases

jurisdictional infirmity has been pointed out warranting interference by this Court.

13.In view of the findings recorded hereinabove, the connected appeals do not survive for independent consideration. The orders dated 28.06.2006 passed by the Registrar of Trade Marks, dismissing the appellant’s rectification applications, are found to be lawful and in consonance with the settled principles governing trade mark registration and rectification. Likewise, the order dated 25.04.2007 passed by the Registrar of Trade Marks, Lahore, restraining the respondents from using labels similar to the appellant’s mark, cannot be sustained in view of the appellant’s failure to establish any proprietary or prior user rights.

14.Consequently, FAO No.229 of 2007 is allowed, and the impugned order dated 25.04.2007 is set aside; whereas the present appeal is dismissed, and the judgment and decree dated 26.01.2006, passed by the learned Additional District Judge is affirmed. Likewise, FAO Nos.283 & 285 of 2006 are also dismissed. The parties shall bear their own costs.

(Muhammad Sajid Mehmood Sethi) Judge

APPROVED FOR REPORTING

Judge

*Sultan*