Judgment Sheet
IN THE HIGH COURT OF SINDH AT KARACHI
Suit No. 727 of 2008
Plaintiffs : BAYER AG and Bayer Health Care AG,
through Mrs. Amna Salman Advocate.
Defendant No.1 : Bayhealth Care (Private) Limited, called absent.
Defendant No.2 : The Deputy Registrar of Companies, SECP, Karachi,
called absent.
Dates of hearing : 14.12.2012 and 11.01.2013.
J U D G M E N T
NADEEM AKHTAR, J. – The plaintiffs have filed this suit against defendant No.1 for accounts, recovery of money, damages, and perpetual and mandatory injunctions. Before dealing with the case of the plaintiffs, it is necessary to trace their background and to understand the circumstances in which they were constrained to file the present Suit.
2. Plaintiff No.1 BAYER AG, which is an international chemical and pharmaceutical company incorporated and based in the Federal Republic of Germany, is engaged in the business of manufacturing and selling a variety of products, as well as providing services in diverse areas such as health care, agrochemical products, organic products, specialty chemicals, industrial products, engineering materials, etc. The business and operations of plaintiff No.1 are spread almost all over the world. Plaintiff No.1 is the owner of the name ‘BAYER’ since 01.08.1863, when the founder of plaintiff No.1 Mr. Fredrich Bayer started his business in the name and style ‘Friedr. Bayer et comp’ in partnership with one Mr. Fredrich Weskott. The partnership was converted into a joint stock company in the year 1981 in the name and style ‘Farbenfabriken vorm. Friedr. Bayer & Co.’. Plaintiff No.1 entered into the pharmaceutical business in the year 1888, for which it is well known and acknowledged throughout the world, including Pakistan. In the year 1904, plaintiff No.1 developed, adopted and started using its corporate image, the Bayer Cross Logo, wherein the word ‘BAYER’ appears vertically as well as horizontally within a circle, and the words intersect at the letter ‘Y’. The name of plaintiff No.1 was changed in the year 1972 to its present name, that is, ‘BAYER AG’. Plaintiff No.2 ‘Bayer HealthCare AG’ is a wholly owned subsidiary of plaintiff No.1.
3. In addition to their company name ‘Bayer’, the principal trademark ‘Bayer’ and the Bayer Cross Logo, the plaintiffs also coined / developed / created various ‘Bay’ Formative Marks, that are being used by them in their pharmaceutical products all over the world. It has been claimed by the plaintiffs that the word ‘Bayer’ is in their exclusive use since 1863 as their trade name, company name, trademark, service mark and house mark, which as well as the Bayer Cross Logo, appear on all their products, product packaging, buildings, structures, stationery and vehicles. The plaintiffs have also claimed that they have been using ‘Bayer’ and ‘BAYER HEALTHCARE’ as their trademarks / company names / trade names, and the Bayer Cross Logo as their logo, and in all their printed and audio-visual promotions and advertisements in Pakistan during the past several years, they have prominently and extensively used their trademarks / company names / trade names / ‘Bayer’ and ‘BAYER HEALTHCARE’. The plaintiffs have further claimed that the word ‘Bayer’ has never been used by or associated with anyone else throughout the world. Because of the use of the word ‘Bayer’, the Bayer Cross Logo and the ‘Bay’ Formative Marks exclusively by the plaintiffs, and their extensive promotions and advertisements by them, the word ‘Bayer’, the Bayer Cross Logo and the ‘Bay’ Formative Marks have acquired not only substantial reputation and goodwill in Pakistan, but have also created strong awareness in the general public that all the above are associated only with the plaintiffs, and all products with the word ‘Bayer’, the Bayer Cross Logo and the ‘Bay’ Formative Marks thereon, belong exclusively to the plaintiffs.
4. The plaintiffs have averred that they have been carrying on their pharmaceutical business in Pakistan for several decades in the name and style Bayer Pakistan (Private) Limited, a Pakistani subsidiary / sister concern of plaintiff No.1, which uses several trademarks of plaintiff No.1 in Pakistan, including the company name ‘Bayer’ and the Bayer Cross Logo, under the authority and supervision of plaintiff No.1. In order to protect their interests in their trademark ‘Bayer’ and ‘Bay’ Formative Marks, the plaintiffs have obtained their registration in Pakistan. The sale figures of the plaintiffs’ products in Pakistan run into hundreds of millions of Rupees every year.
5. It is the case of the plaintiffs that all their products manufactured, sold and marketed in Pakistan depict the company name ‘Bayer’ and the Bayer Cross Logo, and in addition to the above, various pharmaceutical products bearing the marks derived from the prefix ‘Bay’, that is, ‘Bay’ Formative Marks, such as ‘LIPOBAY’ and ‘GLUCOBAY’, are being sold in Pakistan since 1991, when the said products were got registered by the plaintiffs. The plaintiffs are also using the trademark ‘BAYCUTEN’ with the prefix ‘Bay’ in Pakistan since 1991, and the said product is still being sold. Another trademark ‘BAYDAL’ with the prefix ‘Bay’ has been recently introduced in Pakistan by the plaintiffs, and they intend to introduce in future more products in Pakistan with ‘Bay’ Formative Marks.
6. The plaintiffs have stated that in November 2007, they came to know through an advertisement in the Trade Marks Journal No.681 dated 01.10.2007, published on 31.10.2007, that defendant No.1 ‘Bayhealth Care (Private) Limited’ had filed applications with the Registrar of Copyrights for registration of trademarks ‘BAYOXY’, ‘BAYFASTIN’, and ‘BAYTORVIS’, as copyright. It has been alleged that defendant No.1 had adopted and started using the aforementioned imitated ‘Bay’ Formative Marks in an unauthorized and malafide manner. Through the said applications filed by defendant No.1, the plaintiffs also came to know that defendant No.1 had been incorporated as a company in the above name and style. It has been strongly alleged by the plaintiffs that, by using the prefix ‘Bay’ in its name and the purported trademarks, defendant No.1 has attempted to take undue advantage of the plaintiffs’ well known and reputed trademark, service mark, company name and trade name, that is, ‘Bayer’, Bayer Cross Logo and ‘Bay’ Formative Marks.
7. In the above background, this suit was filed by the plaintiffs against defendant No.1 praying inter alia that defendant No.1 be restrained perpetually from operating its business under the name and style ‘Bayhealth Care (Private) Limited’, and / or ‘Bayhealth Care’, and / or from using the prefix ‘Bay’ as a trademark, service mark or trade name, and / or from infringing upon the plaintiffs’ genuine trademark, service mark, company name and trade name, that is, Bayer Logo and ‘Bay’ Formative Marks in general, and ‘BAYOXY’, ‘BAYFASTIN’, and ‘BAYTORVIS’ in particular ; defendant No.1 be restrained perpetually from passing off, advertising or otherwise enabling others to infringe or pass off, committing acts of unfair competition, offering for sale or using or selling any goods or conducting any business in particular pharmaceutical business by using imitated ‘Bay’ Formative Marks and imitated company name ‘Bayhealth Care’ similar to the plaintiffs’ genuine trademark, service mark, company name and trade name, that is, Bayer Logo and ‘Bay’ Formative Marks in general, and ‘BAYOXY’, ‘BAYFASTIN’, and ‘BAYTORVIS’ in particular ; defendant No.1 be restrained permanently from maintaining with the office of defendant No.2 the company registration having the word ‘Bayhealth Care’, or any other word confusingly and deceptively similar to ‘Bayer’ or ‘Bay’ belonging to the plaintiffs ; mandatory injunction be issued directing defendant No.2 to rectify the present name of defendant No.1 in a manner that the words ‘Bayhealth Care’ be removed therefrom ; a preliminary decree be passed for accounts to be rendered by defendant No.1 of the profits wrongfully made by it by selling goods and / or conducting business under the imitated ‘Bay’ Formative Marks and the present imitated company name ; a final decree be passed for payment to the plaintiffs the sums of money that may be found due from defendant No.1 ; a decree in the sum of Rs.30.000 million be passed against defendant No.1 for payment to the plaintiffs as partial compensation for loss and damage to their goodwill and reputation ; a direction be issued to defendant No.1 to destroy or replace all boards, neon signs, hoardings and all kinds of printed and packaging material, bearing the imitated ‘Bay’ Formative Marks and its present imitated company name ; and, a direction be issued to defendant No.1 to write to all concerned to remove the listing of its business in its present imitated name.
8. The summons were issued to both the defendants, which returned duly served. On 16.09.2008, the Additional Registrar (O.S.) directed the defendants to file their respective written statements within four weeks. Vide order dated 12.01.2009, it was ordered by the Court that summons be repeated to defendant No.1 through publication and pasting. In compliance of the said order, the summons were published in the Urdu daily ‘JANG’ of 16.07.2009, and were also issued through all other modes. Accordingly, the service on the defendants was held good by the Additional Registrar (O.S.) on 08.09.2009. Since the defendants failed to appear or to file their written statements, they were declared ex-parte by the Court vide order dated 14.12.2009.
9. The plaintiffs examined their authorized representative and attorney, who produced the original power of attorney granted on 18.03.2008 by the plaintiffs in his favour, as Exh.PW-1/4 ; pages 23 and 29 of the Trade Marks Journal No.582 dated 01.07.1999 as Exhs.PW-1/5 and 1/6, respectively ; pages 2032, 2037 and 2038 of the Trade Marks Journal No.580 dated 01.05.1999 as Exhs.PW-1/7, 1/8 and 1/11, respectively ; page No. 381 of the Trade Marks Journal No.588 dated 01.01.2000 as Exh.PW-1/9 ; and, page No.312 of the Trade Marks Journal No.624 dated 01.01.2003 as Exh.PW-1/10. Exhibits PW-1/5 to 1/11 produced by the plaintiffs’ witness show the existence of various products of the plaintiffs on the Trade Marks Journal. The plaintiffs’ witness was not cross examined by or on behalf of the defendants, and as such his cross examination to the defendants was marked as ‘Nil’. Despite proper service, the defendants were called absent when this matter came up for final arguments on 14.12.2012 and 11.01.2013.
10. Mrs. Amna Salman, the learned counsel for the plaintiffs, reiterated the aforementioned facts stated in the plaint. She submitted that the plaintiffs’ exclusively owned trademark, service mark, company name and trade name, that is, ‘Bayer’, Bayer Cross Logo and ‘Bay’ Formative Marks, enjoy remarkable reputation and goodwill internationally and in Pakistan ; any person, firm or company providing and marketing his business, service or goods with the plaintiffs’ trademarks / company names / trade names ‘Bayer’ and ‘HealthCare’, or the prefix ‘Bay’, either alone or with any other word, as trade name, company name or trademark, generally or in the pharmaceutical field particularly, would be passing off its goods, business and services as that of the plaintiffs giving rise to inevitable confusion and deception, and would also be committing acts of unfair competition as envisaged under Section 67 of the Trade Marks Ordinance, 2001 ; the adoption of the plaintiffs’ trademarks / company names / trade names / service marks ‘Bayer’ and ‘HealthCare’, or the prefix ‘Bay’ by defendant No.1 without the plaintiffs’ permission, consent or license, is clearly an act of dishonesty on the part of defendant No.1, motivated to deceive or confuse the public into believing that the defendant No.1’s company or business are related to or associated with the plaintiffs ; defendant No.1 was incorporated in its present imitated name ‘Bayhealth Care (Private) Limited’, which is almost identical to the plaintiffs’ trademark ‘BAYER HEALTHCARE’, as the plaintiffs’ prefix ‘Bay’ and ‘Bay’ Formative Marks are a dominant and significant part of the imitated name, with a negligible difference of omission of the letters ‘ER’ in the imitated name ; the incorporation of defendant No.1 and the carrying on of its business in the said imitated name, was / is deliberate and intentional in order to take undue advantage of the plaintiffs’ well-established reputation and goodwill ; and, the acts committed by defendant No.1 inter alia constitute (i) infringement of the plaintiffs’ trademark / company name / trade name / service mark ‘Bayer’, the trademark ‘BAYER HEALTHCARE’, the prefix ‘Bay’, the ‘Bay’ Formative Marks, and the ‘Bayer’ Logo, (ii) passing off of defendant No.1’s business and goods as and for those of the plaintiffs, and, (iii) acts of unfair competition by defendant No.1.
11. In support of her submissions, the learned counsel for the plaintiffs cited and relied upon the cases of (1) Messrs Mehran Ghee Mills (Pvt).) Limited and others V/S Messrs Chiltan Ghee Mills (Pvt.) Limited and others, 2001 SCMR 967, (2) Messrs Tabaq Restaurant V/s Messrs Tabaq Restaurant, 1987 SCMR 1090, (3) Jamia Industries Ltd. V/S Caltex Oil (Pak) Ltd. and another, PLD 1984 Supreme Court 8, (4) Glaxo Laboratories Ltd., England V/S Assistant Registrar, Trade Marks, Karachi and another, PLD 1977 Karachi 858, (5) Messrs Zenith Laboratory (Pak.) Ltd. V/S Messrs British Drug Houses Ltd., England and another, PLD 1970 Dacca 772, (6) Pakistan Battery Manufacturing Co., Karachi V/S Muhammad Hussain and 3 others, PLD 1970 Karachi 92, (7) Bandenawaz Ltd. V/S Registrar of Trade Marks, Karachi and another, PLD 1967 Karachi 492, (8) New Light Chemical Industries V/S Registrar of Trade Marks and another, PLD 1963 Dacca 75, (9) Messrs Al-Anis Laboratories through its 4 Partners V/S Messrs Al-Chemist and another, 1987 MLD 2823, (10) Muhammad Rafiq V/S Muhammad Ali, 1986 CLC 2621, and (11) Bashir Ahmad V/S Registered Firm Hafiz Habibur Rehman and another, 1980 CLC 1268.
12. In the case of Mehran Ghee Mills (Pvt.) Limited (supra), the Hon’ble Supreme Court was pleased to hold inter alia that the trademarks of the petitioner and respondent No.1 in the cited case had close resemblance and were likely to cause confusion in the mind of purchaser ; the question whether there has been an infringement or not is to be decided by comparing and placing the two marks together and then to determine about their similarity or distinctiveness ; if the two marks are absolutely identical, no further probe is needed and infringement is established ; to constitute infringement, it is not necessary that whole of the mark be adopted ; the infringement will be complete if one or more dominating features of a mark are copied out ; if there is a striking resemblance, ex- facie, it would lead towards the conclusion that the mark has been infringed ; passing off action may be independent or it may be coupled with infringement ; and, the action is maintainable irrespective of the fact that the trademark is registered or unregistered. In the case of Jamia Industries Ltd. (supra), it was held inter alia by a Full Bench of the Hon’ble Supreme Court that the similarities in the cited case were so striking that an unwary purchaser would be exposed to reasonable probabilities of confusion and deception that the goods of the appellant (in the cited case) carrying the proposed trademark had their origin from the respondents (in the cited case) ; and, it is well recognized that the same test is more stringently applied in cases of infringement or passing off. The other aforementioned reported cases relied upon by the learned counsel are based on more or less similar findings.
13. After carefully examining the above mentioned two authorities and the other reported cases, I feel that there is hardly anything that can be added to the law laid down by the Hon’ble Supreme Court or the findings given by other Superior Courts for determining the criteria as to whether or not a case falls under the definition of infringement or passing off. As I have understood, in a case where the plaintiff alleges that the defendant has infringed his trademark, copyright or trade name, it is to be gauged as to whether or not the products of the plaintiff and the defendant are identical, or to what extent they are similar. The products, without any investigation or close examination, should look identical or similar in size, shape, colour / colour scheme, texture, packing, presentation, or appearance, so as to deceive the customer / consumer to purchase / use the product of the defendant without any hesitation or doubt in his mind, under the impression that he has purchased / used the product of the plaintiff. It is not necessary that the defendant’s product should have all the above characteristics to look similar or identical to the product of the plaintiff ; any one, or some of them, may be sufficient in some cases to create such a situation. If the customer / consumer gets deceived or becomes doubtful or confused after looking at or comparing the products of the plaintiff and the defendant, the plaintiff will be justified in bringing an action against the defendant. In my opinion, it is not necessary that the deception or confusion was caused by the defendant deliberately or intentionally, and even unintentional deception and confusion in such cases would give rise to a cause of action to the plaintiff, as the main element is the deception and / or confusion, and not the intention of the person responsible for the deception and / or confusion. The above aspect becomes more important and applicable when the plaintiff and the defendant are operating and carrying on business in the same area / filed, the nature of their business is the same or similar, and the operations and business of the plaintiff were prior in time to those of the defendant. I am also of the view that when a person, firm or company decides to start the business in a particular name and style or with a particular trademark or copyright, he / they are duty-bound to ascertain and ensure that the name and style or the trademark or copyright which they intend to use, was not being used by any other entity. If such caution is not exercised and any infringement and / or passing off is caused, the entire responsibility as to the consequences shall rest on the person / entity who uses the same or similar name and style, trademark or copyright that was already in the use of or was already owned by the other entity.
14. In my humble opinion, in the case of infringement or passing off, the person indulged in or responsible for the infringement or passing off not only commits illegal acts, but he also commits moral and ethical wrongs. He deceives and cheats the unguarded public at large ; he deceives and cheats the person whose trademark / copyright / trade name / company name is infringed, or whose business or goods are involved in passing off ; he causes loss to the business, reputation and goodwill of such person through his illegal acts of infringement, passing off and unfair competition ; and, he also violates the law.
15. In the present case, the plaintiffs have successfully established that they are the lawful owners of their company name / trade name / service mark / trademark ‘Bayer’, the trademark ‘BAYER HEALTHCARE’, the prefix ‘Bay’, the ‘Bay’ Formative Marks, and the ‘Bayer’ Logo. The comparison and a bare perusal of the defendant No.1’s name as well as the names of its products show that the prefix ‘Bay’ and the ‘Bay’ Formative Marks owned by the plaintiffs, have been used therein by defendant No.1 in a glaring and obvious manner. The name of defendant No.1 ‘Bayhealth Care (Private) Limited’ encompasses not only the prefix ‘Bay’ owned by the plaintiffs, but also the words ‘health Care’, which are the part and parcel of the trade mark ‘BAYER HEALTHCARE’ owned by the plaintiffs. Likewise, the prefix ‘Bay’ owned by the plaintiffs distinctly, prominently and unambiguously appears in the products ‘BAYOXY’, ‘BAYFASTIN’, and ‘BAYTORVIS’ manufactured, sold and marketed by defendant No.1. The above similarities are of such nature that they can go unnoticed, undetected and unchecked very easily, and the same are bound to cause deception or confusion in the minds of the customers / consumers, doctors, retailers, dealers, stockists, etc., that the imitated products of defendant No.1 are those of the plaintiffs, especially when all the imitated products of defendant No.1 with its imitated name thereon, and those of the plaintiffs, are sold, marketed, used and consumed as pharmaceutical products. The similarities between the trademarks and the company / trade names of the plaintiffs and defendant No.1, are so obvious and unambiguous that because of the use of the plaintiff’s prefix ‘Bay’ and the word ‘healthCare’ of the plaintiffs’ trademark by defendant No.1, its products and the plaintiffs’ products look identical. As such, no inquiry or investigation is required to compare or distinguish the products. My above observations clearly show that this is a case of infringement of the plaintiff’s trademarks and company / trade names by defendant No.1, and that of passing off its goods, business and services as those of the plaintiffs, especially in view of Mehran Ghee Mills (Pvt.) Limited (supra), wherein the Hon’ble Supreme Court was pleased to hold that if the two marks are absolutely identical, no further probe is needed and infringement is established.
16. The entire contents of the plaint and those of the affidavit in ex-parte proof were reiterated by the plaintiff’s witness in his evidence, which remained unchallenged and un-rebutted, as the witness was not cross examined or confronted by defendant No.1. In view of the averments made by the plaintiffs in the plaint, the un-rebutted evidence produced by them, and also in view of the comparison, examination and observations made by me, the plaintiffs have successfully proven their case. I do not see any reason for disbelieving the plaintiffs especially when the case set up by them and the evidence produced by them have remained unchallenged / un-rebutted. Therefore, the plaintiffs are entitled to the reliefs sought by them in this Suit against defendant No.1 for the infringement and passing off its goods, business and services as those of the plaintiffs. Consequently, the plaintiffs are also entitled to the general damages claimed by them against defendant No.1 for causing loss to their image, reputation, goodwill and business.
17. Regarding the prayer made by the plaintiffs for the grant of permanent injunction restraining defendant No.1 from maintaining the registration of its imitated name with the office of defendant No.2, and the prayer for the grant of mandatory injunction for issuing a direction to defendant No.2 to rectify the present name of defendant No.1, the learned counsel for the plaintiffs relied upon Messrs Muhammad Bakhsh & Sons Ltd. and another V/S Azhar Wali Muhammad and 11 others, 1986 MLD 1870. In the said case, it was held inter alia by this Court that it is settled law that a registered company can be restrained from being registered with a name similar to that of another registered company ; if a company has already been registered, it can be restrained from carrying on business in the registered name ; even if the company had been got registered by a stranger, the common law right to get an injunction to restrain the deception to the public resulting from such registration, would exist ; the right to claim the injunction is enhanced by the fact that the defendant wanted to carry on exactly the same or similar business as the plaintiff ; and, where the difference being so light as to mark no difference, the plaintiff would be entitled to injunction against the defendant restraining him from carrying on business under the name similar to that of the plaintiff. In the cited case, injunction was granted restraining the defendant from carrying business under the impugned name. However, the injunction order was suspended for one month to enable the defendant to take necessary steps to change its registered name.
18. On the above point, there are many other reported cases, but I was able to locate a more recent case decided by this Court ; namely, Messrs ADT Services AG through Attorney and another V/S Messrs ADT Pakistan (Pvt.) Ltd. through Promoter and Director and 4 others, 2005 CLD 1546. In the said case, plaintiff No.1 ADT Services AG was a Swiss company, and plaintiff No.2 was a wholly owned foreign subsidiary company. Plaintiff No.1 appointed plaintiff No.2 under a licence agreement as an exclusive licensee for providing security services and equipment with ‘ADT’ as the trade and service mark. The agreement was terminated by plaintiff No.1 after giving one month’s prior notice to plaintiff No.2. Immediately after one month of termination of the agreement, defendant No.2 got incorporated defendant No.1 company under the name and style ‘ADT Pakistan (Pvt.) Ltd.’, adopting ‘ADT’ as part of its corporate name. It was held inter alia that the plaintiffs had been able to demonstrate that they had adopted a trademark in question in Pakistan on 07.10.1997 when they first applied for its registration ; the plaintiffs had also made out a case of passing off under Section 46(2) of the Trade Marks Ordinance, 2001, and also a case of breach of trust and confidence in terms of Section 9 of the Copyright Ordinance, 1962 ; the defendants were not only morally and ethically, but also legally committed not to appropriate property comprising trade and service marks vesting in the plaintiffs ; adoption of name and registration of company under a name which is deceptive, is not permissible under Section 37 of the Companies Ordinance, 1984 ; in appropriate cases, the Court may pass injunctive order against the defendants from adopting and / or to carry on trade and business under the name and style deceptively identical or similar to that of the other company already carrying on business under a particular name ; and, if such tendency was encouraged, it would be devastating for the corporate and commercial trade and practice in Pakistan and will deter foreign entrepreneurs to enter and make investments in Pakistan. In the cited case also, defendant No.1 company was directed to take steps and measures for rectification of its name within one month, and it was further ordered that if no such steps were taken within the stipulated period, the Securities and Exchange Commission of Pakistan in terms of Section 38 of the Companies Ordinance, 1984, may direct defendant No.1 company to rectify its name to obviate deception and confusion on account of similarity of its name with that of plaintiff No.1 and its trademark.
19. In view of the cases of Messrs Muhammad Bakhsh & Sons Ltd. and Messrs ADT Services AG (supra), it is clear that the prayers made by the plaintiffs for the grant of permanent injunction restraining defendant No.1 from maintaining the registration of its imitated name with the office of defendant No.2, and for the grant of mandatory injunction for issuing a direction to defendant No.2 to rectify the present imitated name of defendant No.1, can be granted by this Court.
20. During the course of the hearing, the learned counsel, for the plaintiffs submitted that the plaintiffs would be satisfied if all their prayers are granted, except the prayers for taking accounts from defendant No.1, and for recovering from defendant No.1 all sums of money on the basis of such accounts.
21. Sub-Section (2) of Section 37 of the Companies Ordinance, 1984, provides as under :-
“(2) A company shall not be registered by a name identical with that by which a company in existence is already registered, or so nearly resembling that name as to be calculated to deceive, except where the company in existence is in the course of being dissolved and signifies its consent in such manner as the registrar requires.”
In view of this mandatory provision in the Companies Ordinance, 1984, the name of defendant No.1 ought not have been entertained or registered by the Deputy Registrar concerned, as the company / trade name of defendant No.1 contains the plaintiffs’ company / trade name, the trademark as well as the prefix ‘Bay’ Formative Marks. For the same reason, the Registrar Trademarks ought not have entertained or registered the products of defendant No.1. Both the above named authorities failed in discharging their statutory functions and duties in accordance with law. If these authorities perform their functions and duties vigilantly and in a prudent manner, the possibility of infringement and passing off can be curbed to a great extent, and unnecessary inconvenience and loss to parties as well as uncalled for litigation could be avoided.
22. In view of the above discussion and findings, and also as the plaintiffs have successfully proven their case, the Suit is decreed with costs against defendant No.1 to the extent of Prayers (i), (ii), (iii), (iv), and (vii) made in paragraph 26 of the plaint, and Prayers (a) and (b) made in paragraph 26.1 of the plaint, as prayed by the plaintiffs. It is hereby ordered that defendant No.1 shall immediately take all necessary steps for changing / rectifying its name in the record of defendant No.2 by ensuring that the company name / trade name / service mark / trademark ‘Bayer’, the trademark ‘BAYER HEALTHCARE’, the prefix ‘Bay’, the ‘Bay’ Formative Marks, belonging to and owned by the plaintiffs, are deleted / removed from the name of defendant No.1 with immediate effect. The entire exercise shall be completed by defendant No.1 within thirty (30) days hereof. Defendant No.2, the Deputy Registrar of Companies, SECP, Karachi, is hereby directed that in case defendant No.1 does not initiate the above process or the said process is not completed within the stipulated time frame, defendant No.2 shall ensure that the registration of defendant No.1 in its present imitated name is cancelled, and the rectification in the defendant No.1’s name is carried out in the above terms in letter and spirit. Defendant No.2 is further directed to submit the compliance report to this Court through the M.I.T. within one week after the expiration of the stipulated period.
The office is directed to forward copies of this judgment to the M.I.T., as well as to defendant No.2 and the Securities and Exchange Commission of Pakistan, Islamabad, for compliance.
J U D G E
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*Suit- 727- 2008 BAYER-Trade Mark.doc/Judgments Single/Court Work/ARK*