2008 C L D 190
[Karachi]
Before Khalid Ali Z. Qazi, J
Messrs HUB PAK SALT REFINERY through Duly Authorized Partner---Plaintiff
Versus
NATIONAL FOODS (PVT.) LIMITED---Defendant
C.M.As. Nos.9084, 8633, 9946, 10085, 10086, 10087, 10088, 10089, 10090, 10091 and 10157 of 2007 in Suit No.1339 of 2007, decided on 3rd January, 2008.
(a) Trade Marks. Ordinance (XIX of 2001)---
----Ss.52(2)(b), 2(6) & 68---Copyright Ordinance (XXXIV Of 1962), S.56-Defamation Ordinance (LVI of 2002), Ss.8 & 4---Civil Procedure Code (V of 1908), O.XXXIX, Rr. 1 & 2---Suit for declaration---Application for grant of permanent injunction against a legal notice to plaintiff by the defendant threatening it taking a coercive action and restraining it from interfering in any manner whatsoever with the dealings, affairs and contractual relations of the plaintiff with the television channels airing the advertisement for the plaintiffs product, other than through a court in due process of law---Defendant, who was copyright owner and had registered trade mark for its product in question, which was shown in the advertisement on electronic media by the plaintiffs advertisement to the effect that `a lady picked up the defendant's product and put off treating the same as
dangerous to health and human consumption'---Defendant, in view of such advertisement served legal notice on the plaintiff, its advertisers and concerned channels of the TV pointing out the violation by them of relevant law on the subject and taking action therefor---Validity.---Offensive advertisement seemed to have been prepared in such a manner as to amount defaming the defendant and its product which was not permissible under the law and was not a `comparative advertisement' and was disparagement--Advertisement admittedly was disparaging, in fact, it would cause great damage to the marketability of the' defendant's product---Advertisement campaign on the electronic media had an immediate impact on the viewers and possible purchaser's mind and effect of the aired advertisement could not be repaired readily and easily---Legal notice issued by defendant could be inferred to be in compliance of law and under the circumstances, the defendant was justified to take necessary action according to law---Plaintiff, in circumstances, was not entitled for the relief, and issuance of the notice by the defendant might be treated as notice required under S.8 of Defamation Ordinance, 2002, and the notice could not be said to be a groundless threat---Plaintiff, in circumstances, had no prima facei case at the present stage balance of convenience was also not in favour of plaintiff as great inconvenience would be caused to the owner of registered intellectual property in exercising its legal rights to deal with the property as per law and no irreparable loss would be caused to the plaintiff, if the injunction was refused because the loss, if any, could be compensated in the shape of damages---Application for grant of injunction by the plaintiff was dismissed by the High Court.
Prince PLCV Prince Sports Group Inc. (1998) FSR Volume 25, decided 30-7-1997 by Mr. Justice Neuberger', High Court of Justice Chancery Division, U.K.; Halsbury's Laws of England, Forth Edition 2000 Rassue Volume 48 Page Para 118. 119 and 120; CM Row's Law of Injunctions 8th Edition by K. Swami Paragraph 17.5; Muhammad v. Bism Nath AIR 1928 All. 316; 1976 RPC 308 (313); .1998 FCR 21; Country Link Development Corporation v. Habib Bank Limited and others PLD 2000 Kar. 269 (277); Mst. Bushra Sadiq v. KDA and others 2001 MLD 1257 (DB); 94(2001) DLT 30 case of Pepsi Cola (Dehli High Court); Pakistan Drug House (Pvt.) Ltd. v. Rio Chemical Company and another 2003 CLD 1531; AIR 1978 SC 1613 (1627); AIR 1965 SC 980; AIR 1995 SC 1795 (1806); PLD 1984 SC 44 (46); AIR 1939 Lah. 529; PLD 1960 Dacca 19; 1991 MLD 1243; 1986 CLC 1908; Jaybeam Limited v. Abru Aluminum Limited (1976) R.P.C. 308 decided on 15-5-1975; (1929) 2 K.B. 331 case of Cassidy v. Daily Mirror Newspapers Ltd. decided by Court of Appeal on 13-5-1929; (1905) 1 Chancery Division 519 in case of Hanfstaengl v. W.H. Smith & Sons; Black Law Dictionary page 448 definition of Defamation; All ER (1941) 2 Page 403 in case of King Features Syndicate Inc. v. O. and M. Kleemann, Ltd.; Syed Muhammad Ali v. Network Television Marketing (Pvt.) Ltd. and another PLD 2005 Kar. 399; Adeeb Javedani v. Yahya Bakhtiar 1995 CLC 1246; Abdul Ghafoor v. Syed Jawed Hussain Jaffrey and another PLD 2006 Kar. 691; Eureka 'Forbes Limited, Kalkata v. Pentair Water India Private Limited 2006 Ind Law Kar. 505, decided on 20-12-2006; Dabur India' Limited v. Emami Limited 2004 Ind Law Del 162, decided on 28-5-2004 by Delhi High Court; Altaf Goher v. Wajid Shamsul Hussain PLD 1981 Kar. 515 and Unreported Judgment of Delhi High Court in I.A. No.5445 of 2004 titled as Dabur India Limited v. Colgate Palmolive India Ltd. decided on 9-9-2004 ref.
(b) Civil Procedure Code (V of 1908)---
---Rr.1 & 2---Grantof injunction---Entitlementof a party to get relief---Satisfaction of Court---Conditions.
A party would be entitled to relief under Order XXXIX Rules 1 and 2, C.P.C. provided that it satisfies the court that it has a prima facie case; that balance of convenience is in his favour and the irreparable loss and injury could be caused to him if interim relief is not granted. The aforesaid three phrases are not Rhetoric phrases but elastic words to meet a wide range of situation in given set of facts and circumstances. The burden is always on the plaintiff/applicant' to satisfy the court that a prima facie case exists in his favour. The court must further satisfy itself that non-interference by court 'would result in irreparable injury to a party seeking relief. Irreparable injury means that the injury must be a material one, one that court cannot adequately compensate by way of damages. The court is expected to exercise sound judicial discretion to find out the amount of substantial mischief or injury which is likely to be caused to the other party if the injunction is granted.
(c) Trade Marks Ordinance (XIX of 2001)---
---S.52---Defamation Ordinance (LVI of 2002), S.8---Remedy for groundless threats of infringement proceedings---Expression "the plaintiff shall be entitledto anyrelief specified in S.52(2)of Trade Marks Ordinance, 2001"---Scope---If defendant shows a valid cause of initiating the proceedings, which were threatened, then the plaintiff in such situation shall not be entitled to any relief---Principles.
The expression "the plaintiff shall be entitled to any relief specified in subsection (2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute, or if done would constitute, an infringement of the registered trade mark concerned" in section 52(3) makes it clear that if defendant shows a valid cause of initiating the proceedings, which were threatened, then the plaintiff in such situation shall not be entitled to any relief. In the present case, the plaintiff admitted in its plaint and supporting affidavit of application under Order XXXIX Rules 1 and 2, C.P.C. that in its advertisement packet of product of the defendant was shown and can be seen that the lady picked up the defendant's packet and put off treating the same as dangerous to health and human consumption. It is to be inferred that legal notice issued by defendant was in compliance of law and under the circumstances, the defendant was justified to take necessary action according to law. In the circumstances the plaintiff is not entitled for the relief. Therefore, the issuance of legal notice may be treated as notice required under section 8 of Defamation Ordinance 2002 therefore, it cannot be said to be a groundless threat.
(d) Trade Marks Ordinance (XIX of 2001)----
----Ss. 67, 68 & 2(6)---Disparagement---Definition.
Webster's Dictionary; Black's Law Dictionary and Chambers Dictionary ref.
(e) Trade Marks Ordinance (XIX of 2001)---
----Ss.67, 68 & 2(6)---Disparagement---Principles to decide whether a party was entitled to an injunction, enumerated.
The main principles for deciding as to whether the party was entitled to grant of injunction are:--
(i) A tradesman is entitled to declare his goods to be the best in the world, even though the declaration is untrue.
(ii) He can also claim that his goods are better than his competitor, even though, such statement is untrue.
(iii) For the purpose of saying that his goods are the best in the world or his goods are better than his competitor he can even compare the advantages of his goods over the goods of the other.
(iv) He, however cannot, while saying his goods are better than competitor, say that his competitors goods are bad. If he says so, he really slanders the goods of his competitors. In other words he defames his competitors and their goods, which is not permissible.
(v) If there is no defamation to the goods or to the manufacturer of such goods no action lies, but if there is such defamation then action lies and if an action lies for recovery of damages for defamation, then the court is always competent to grant an injunction restraining repetition of such defamation.
Rockitt and Colman India Ltd. v. M.S. Ramachandran and another 1999 PTC 741 quoted.
(f) Trade Marks Ordinance (XIX of 2001)---
----Ss.67, 68 & 2(6)---Disparagement---`Comparative advertisement'---Such advertisement is admissible, however, the advertisement should not be in such a manner as to disparage the goods of the competitor---Mere puffing up the goods without disparagement is not actionable---Advertisement must be issued in the light of, such test.
94 (2001) D.L.T. 30 Pepsi Cola Inc. and another v. Hindustan Coca Cola and others in I.A. No.3097 of 2001 in Suit No.635 of 2001 decided in September, 2001 rel.
Yousaf Saeed for Plaintiff.
Zahid Jamil for Defendant.
ORDER
KHALID ALI Z. QAZI, J.---This is an application C.M.A. No.8633 of 2007, filed by the plaintiff, under Order XXXIX, Rules 1 and 2 read with section 151, C.P.C., which is reproduced as under:--
"For the reasons elucidated in the accompanying affidavit, viewed in conjunction with the facts, reasons and grounds set forth in the plaint and the documents annexed thereto, and in view of the fact that the actions being threatened and proposed by the defendant following the actions "taken will cause irreparable loss to the plaintiff firm, it is humbly prayed that this Honourable Court may be pleased_ to restrain the defendant or any person(s) acting through, under or on behalf of the defendant from threatening or taking any coercive action and from interfering in any manner whatsoever with the dealings, affairs and contractual relations of the plaintiff with the television channels airing the advertisement for the plaintiffs salt, other than through a Court in due process of law."
Urgent ad interim orders are respectfully solicited."
Brief facts of the plaintiffs case as per plaint are. that the plaintiff is a partnership firm registered under the Partnership Act, 1932, and has extensive expertise in the salt business and is engaged in the processing and production of high quality refined salts of various grades and types at its plant situated with the Hub Industrial Trading Estate in Baluchistan, which in keeping with the plaintiffs unwavering commitment to quality and firm emphasis on acting in a socially responsible manner is specifically designed so as to be environmentally friendly and is perhaps the only industrial plant in Pakistan to have achieved zero liquid discharge. It is further contended by the plaintiff that the plaintiff is ISO 9001-2000 and HACCP certified and even otherwise the plaintiffs commitment to quality is duly evinced by the fact that the plaintiff is the only indigenous supplier of salt to the pharmaceutical sector they are needless to say only the salt conforming to the most exacting purity standards is utilized. It is further contended that the plaintiff has just recently entered the consumer market for food grade salt with the launch of its fine grain edible salt in 2006 under the brand "Hub Salt". It is further contended that PDV or pure vacuum dried salt, which is the product of a vacuum evaporation process carried out by the plaintiff at its state of the art plant especially imported from Switzerland and designed to produce salt with 99.99 per cent of sodium chloride content. It is further contended that the plaintiff is the solitary manufacturer in Pakistan utilizing the same to date, and as such it follows a priori that the plaintiffs salt is presently the only domestically manufactured salt that is residue free. It is further that the domestically produced salt otherwise marketed by suppliers as edible salt, is invariably simply washed and the insoluble impurities present cannot be completely removed. It is contended that the insoluble impurities that are present in the salt in such cases are bound to have an adverse effect upon human health when consumed regularly over a prolonged period. Furthermore, when salt is crystallized in open solar evaporators in salt pits near the sea side or open lakes in desert areas the same is subject to further contamination as such areas are accessible to stray animals. It is further contended that for the purpose of advertisement and promotion an advertisement was conceived wherein it was stated inter alia for the benefit of the consuming public in the ensuing television commercial that the plaintiffs salt was the only such product that was completely free of residue and it was demonstrated as to how the claim' may. be put to the test vide a simple controlled experiment where four spoonful's of any of the consumers existing kitchen salt may be dissolved in a beaker of water, following which the same test should be similarly repeated with the plaintiffs salt so as to make a readily comprehendible comparison as to the insoluble impurities present in the former and conspicuously absent from the latter. It is contended that this exercise was carried out with recourse to the broad term "aap kay kitchen ka namak" and a generic pack of salt bereft of any trademarks or any work in which the copyright may be held by the defendant or any other person. The defendant products were never shown during the course of the subject advertisement other than for a scintilla of a moment while placed on a supermarket shelf amidst similar available products of the particular genre. It is contended that this momentary glimpse is so fleeting that it is not possible to register the existence of the defendants products, unless the footage of the subject advertisement is scrutinized in slow motion for the specific purpose. It is further contended that the subject advertisement merely highlighted a positive attribute of the plaintiffs salt and did not denigrate any particular product whether of the defendant or airy other supplier, the defendant has nonetheless taken umbrage to the same on the misplaced ground that it infringes the defendant's copyright and defames its products marketed as "National Refined Table Salt" and "National Refined Iodized Salt" and has served a legal notice dated 1-10-2007 (the subject notice) upon the plaintiff through its legal counsel to that effect, which has been replied to by the plaintiffs counsel vide a letter dated 9-10-2007. It is contended that the subject notice is patently vexatious and misconceived and the same has not been confined in;' its scope and application to the plaintiff alone and was also specifically addressed to the advertising agency engaged by the plaintiff i.e. Manhattan Communications (Pvt.) Limited as well as various television channels i.e. Hum TV, Star Plus and Worldcall Telecom Limited from Pakistan Electronic Media Regulatory Authority, and stringent civil and criminal action was unwarrantedly threatened separately against each entity. It is further contended that it is apparent that the defendant simply perceives the education of the consuming public per se to be a threat to its virtually monopolistic hold over the branded salt market and it is submitted that the defendant has accordingly addressed the television channels carrying the subject advertisement in most threatening terms not so much out of any conviction as to' the averments contained therein as such as with the ulterior motive of coercing and intimidating the said television channels and thereby preventing the airing of the subject advertisement, thus effectively stifling the plaintiffs business. It is contended that the allegations levelled against the plaintiff in the subject notice are completely unfounded and bereft of substance having been aired by way of a pretext as part of what is an obvious ploy to .gain the commercial and pecuniary advantage against the plaintiff through obvious threats of false implication and prosecution against the plaintiffs media partners. It is contended that the television channels airing the subject advertisement would obviously have no desire to be embroiled in what they will no doubt perceive-as a dispute inter se the plaintiff and the defendant and it is apprehended that being intimidated by the size and influence of the defendant they will accordingly summarily cease to broadcast the subject advertisement: It is submitted that it is already transpired in the case of Worldcall Telecom Limited vide their letter dated 5-10-2007 (received by the plaintiff towards close of business hours on 6-10-2007) that in view of the subject notice they are ceasing to air the subject advertisement forthwith. The plaintiff already stands prejudiced vide the untimely loss of this valuable media resource at a nascent stage in its venture in the edible salt market, which has been exacerbated by the fact that the Ramadan period in the buildup to Eid is always a pivotal juncture from the marketing standpoint, particularly in the food industry. It is further stated that plaintiff has also been informed by its advertising agency that the other channels addressed in terms of the subject notice have also very recently been in contact with the said agency and expressed their reservations regarding the further broadcasting of the subject advertisement in view of the subject notice and further approaches that have, apparently been made to them directly by the defendant in order to procure the termination of their arrangements with the plaintiff. As such, it is genuinely apprehended by the plaintiff that remained unchecked the defendant would almost certainly abuse its position as a well established consumer oriented company advertiser in order to carry on its policy of coercive persuasion in order to bring about the suspension of the subject advertisement by the television channels addressed in terms of the subject notice as well as such other channels through which the same is being aired. It is further contended that it is genuinely apprehended by the plaintiff that the defendant will further perpetuate its campaign of threats and intimidation to the detriment of the plaintiff without ever invoking the jurisdiction of any Court, thus resulting in irreparable loss to the plaintiff, and is liable to be permanently restrained in that regard.