SYED QAMAR HASAN, J.
1. This Civil Miscellaneous Appeal on behalf of the plaintiff is directed against the order dated 31-3-1959 of the First Additional Judge, City Civil Court, vacating the ad interim injunction restraining the respondent from issuing and passing off his goods wider the name of Ruh-e-Tilismat.
2. The judgment in this appeal has been reserved on the assurance of the advocates that the parties would reach a compromise to their mutual satisfaction. It now appears that contestants desire to have the dispute between them settled by a decree of the Court. The short question to be decided is whether the Court below was justified in vacating the interlocutory injunction given in favour of the appellant.
3. The appellant is the plaintiff. He is admittedly the owner of a trade mark registered under the Trade Marks Act (V of 1940) under which he sells a medicinal preparation named as Zinda Tilismat. The respondent also prepares and puts in the market medicinal preparations under the caption of Ruh-e-tilismat. The complaint on the part of the appellant was that the respondent had infringed his trade mark by adopting a design similar to that of the appellant and was passing off his goods to the detriment of the appellant. He, therefore, prayed for a perpetual injunction, damages and other ancillary reliefs.
On practically the same allegation he filed an application supported by an affidavit for an ad interim injunction to restrain the respondent from passing off his goods in the market or selling them by corner means under a label and design similar to that of the appellant's design, colour and get up. He also prayed that covers, wrappers, labels and chits may be attached. The learned Additional First Judge on 28-2-1955 issued the injunction and ordered attachment as prayed for.
4. The respondent appeared in response to Court notice and prayed for the interim injunction being vacated and attachment removed on the ground that he was manufacturing Ruh-e-tilismat since its registration on 9th Bahman 1344 F. and had been carrying on that business using the label, wrapper and carton etc., as registered. The charge laid against the appellant was that he was trying to damage his business and that he would be deemed to have acquiesced in the infringement by reason of continued inaction since 1344 F.
Another plea taken was that in the Hyderabad State other medicinal preparations such as Johar-e-tilismat, Hamara Tilismat, Hin Tilismat, National Tilismath, Ajeet Tilismat, Azad Tilismat and various other products of this kind are being sold in the market. Simply because the word 'tilismat' has been used it cannot be said that all those products are the counterfeit of the plaintiff's trade mark. It was further stressed that the plaintiff had no prima facie case since his alleged trade mark, label etc. were quite distinct from those of the defendant.
The learned Additional First Judge negatived the plea of the respondent that he had satisfactorily established the use of his impugned trade mark since 1344 F. In the next place, he held that the word 'tilismat' appeared to have been used by other persons and consequently the suit trade mark, the infringement of which is complained of, had lost its legal efficacy. He further found that the failure of the appellant to take action against the respondent for full three years even after the registration of trade mark in 1952 and the withdrawal of the respondent's application for registration of the latter's trade mark before the Registrar of Trade Marks at Bombay, affected the right of the appellant to seek interlocutory injunction.
Therefore, he would be regarded to have lost his right, if any, by reason of laches to the protection of the Court which he would have claimed with success had he come with reasonable promptitude. In arriving at this conclusion, the learned Judge followed Yoshimi Boshaka Kasha Ltd. v. Dwarakadas Fatechand, AIR 1933 Sind 26, in preference to the authorities cited on behalf of the appellant. Then turning to the question of balance of convenience he took Ismail S.M. Bros. Firm v. A. Habib, AIR 1946 Sind 70 as a guide and vacated the ad interim injunction and the order for attachment and substituted it by an order enjoining the respondent to keep true, accurate and regular account of the 'articles in respect of which the plaintiff has prayed for a temporary injunction and undertake to he accountable for and to pay to the plaintiff, if so ordered, any profits that he might make by the sale of such articles', and also to furnish two sureties for the due performance of the undertaking and to make good any loss which the plaintiff might be held entitled to recover in the event of his success in the suit.
5. It is against this order that the present appeal is directed. The learned advocate for the appellant did not press against that portion of the order by which the Court below has removed the attachment. He, however, contended that the learned Judge misdirected himself in vacating the interlocutory injunction, and confining the interim relief of accounts being kept by the respondent with the poor consolation of two sureties to ensure the due performance of the undertaking which may be given by the respondent.
The learned advocate for the respondent supported the order appealed against on the grounds adopted by the Court below and cited before us the same cases which have been referred to above. We are afraid that the Court below has transgressed into matters which might appropriately have been dealt with at the time of the final disposal of the suit and for that reason we refrain from expressing any opinion on those points. Obviously, the application presented by the appellant was for an interlocutory injunction.
It is well settled that when an interim injunction is sought during the pendency of the suit for perpetual injunction to restrain the infringement of the trade-marks and in an action complaining passing off, what has to be seen is whether a prima facie case has been made out in the statement of claim and, secondly, whether the balance of convenience demands that an injunction should be issued. In order to see whether there was a prima facie case, the best method is to compare the trade-mark of the plaintiff with that of the defendant and to come to a tentative finding as to the existence of general similarity which may in all probability deceive an unwary purchaser.
The learned Additional First Judge has failed to take notice of this method. The advocate for the appellant invited our attention to both the trade marks. After examining them we felt satisfied that the similarity was sufficient to make out a prima facie case for me interim relief. In addition to it we find that the appellant has got his trade mark registered under the provisions of the Trade Marks Act. The respondent no doubt claims to possess a registered trade mark.
But the registration seems to have been unilaterally obtained under the Hyderabad Registration Act which was never meant for such registrations. It is no doubt true as is pointed out by the learned Judge that the appellant has taken three years to seek the aid of the Court after he got his trade mark registered. But it has not been noted that he has given reasons for that. In para 6 of the plaint he states that the respondent had also applied for registration of the impugned trade mark (application No. 250 -Hyd) to which the appellant entered opposition.
Before the Registrar of Trade Marks the respondent on 24-10-1950 admitted through his attorney that the impugned trade mark bore similarity to that of the appellant and agreed to change the name of his preparation to Ruh-e-Hayat. The Registrar still insisted that the respondent should change the colour and other aspects of the get up. The respondent was unwilling to do it and consequently he withdrew his application for registration.
The appellant continues to say that he had all along been expecting that the respondent would change the name of his preparation as promised before the Registrar and also alter the colour and the design on the carton but he found that the respondent purposely refrained from doing so in order to make unlawful gains. When that intention became clear to him, the appellant says, he was forced to institute the present suit. This allegation cannot be taken for granted but will have to be probed but it cannot be denied that there is prima fade explanation for the delay.
6. Now coming to the question of balance of convenience, we fail to see now the respondent could be put to terms when the suit itself suffered from the infirmities found by the learned Judge in his order appealed against. Be that as it may, the very word 'balance' signifies that convenience of both the contestants will have to be looked into. At least there was an affidavit for the appellant that unless an interim injunction was granted he would suffer irreparable injury. The respondent, however, did not file any affidavit to show that his business would be destroyed for all times if he was saddled With an interim injunction.
7. We, therefore, consider that this was a fit case in which the ad interim injunction ought to have been made absolute. We, therefore, allow the appeal, set aside the order of the Court below, and restrain the respondent, their agents and servants from selling the preparation named Ruh-e-tilismat during the pendency of the suit. The suit has now become three years old and is at the preliminary stage of the trial. The trial Court will, therefore, make it a point to finish the case after day-to-day hearing without granting unnecessary adjournments on flimsy grounds. The appellant will recover costs of the appeal from the respondent.