IN THE SUPREME COURT OF PAKISTAN 
(Appellate Jurisdiction) 
 
 
Present: 
Mr. Justice Mian Saqib Nisar 
Mr. Justice Mushir Alam 
 
 
Civil Petitions No.2066 to 2068 of 2013  
Against judgment dated 12.09.2013 of High Court of Sindh 
at Karachi, passed in Miscellaneous Appeals No.1, 2 & 3 of 
2011. 
 
M/s Farooq Ghee & Oils Mills (Pvt) Ltd 
 
 
 
 
 
 
 
 
 
 
 
 
 
Petitioner (in all cases) 
VERSUS 
Registrar of Trade Marks, Trade Mark Registry & others 
 
 
 
 
 
 
 
 
 
Respondents (in all cases)  
  
For the Petitioner(s): 
 
Syed Arshad Hussain Shah, ASC 
 
 
(in all cases) 
 
For the Respondent(s):  
Mr. Munawar Ghani, ASC  
 
 
(in all cases) 
 
Date of Hearing:  
 
20.01.2015 
 
ORDER 
 
 
 
Mushir Alam, J-. Petitioners, Farooq Ghee & Oil Mills 
(Pvt.) Ltd. have impugned the Judgment dated 12.09.2013, passed 
by a learned Single Judge of Sindh High Court, in Chambers, in 
Miscellaneous Appeals No.01, 02 and 03 of 2011 respectively, 
whereby consolidated order dated 29.9.2009 passed by the learned 
Registrar of Trade Marks, in the matter of registration of trade mark 
“HAYAT”, favouring respondent 
No.2 was maintained and 
Miscellaneous Appeals were dismissed. 
 
2. 
 
Facts in brief, appear to be that M/s International 
Foodstuff Company of UAE, (hereinafter abbreviated as IFFCO) the 
Respondent No.2 herein, through Application No.140853 dated 
11.04.1997 applied for the registration of Trade Mark “HAYAT” for 
the goods in Class 29, which inter-alia included “edible oils, and fat; 
ghee; margarine”. Application inviting opposition for the said trade 
mark was advertised in Trade Mark Journal dated 1.2.2003 
published on 14.6.2003, to which the Petitioner filed Opposition 
No.481/2003.  
Civil Petitions No.2066 to 2068 of 2013  
 
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3. 
 
IFFCO, through yet another Application No. 189056 
dated 01.8.2005, applied for the registration of trade mark “HAYAT” 
in Class 29, which was advertised in Trade Mark Journal dated 
01.08.2005, published on 21.8.2005 to which  also the Petitioner 
filed opposition No.835/2006. 
 
4. 
 
Petitioner adopted for itself Trade Mark styled as 
“FAROOQ’S Hayat”, for the goods in Class 29 and applied for its 
registration through Application No. 179894, dated 24.8.2002, 
which was advertised in Trade Mark Journal dated 01.01.2005, 
published on 11.11.2005, registration of which was challenged by the 
Respondent No.2 through opposition No.01/2006 on the strength of 
their earlier Application for registration No. 140853 dated 11.04.1997   
 
5. 
 
All the Applications for the Registration of the 
competing mark and oppositions thereto, filed by the rival claimants 
under Section 14(1) of the Act, 1940 were taken up, heard and 
decided by the learned Registrar of Trade Marks, through common 
order dated 29.9.09. The Registrar of Trade Marks, in consideration 
of facts that the IFFCO through evidence has established to the 
satisfaction of Registrar that they are the originator, proponent and 
prior user of the Trade Mark “HAYAT”, which mark is not only 
registered in various jurisdictions but is also used in Middle Eastern 
and various other countries since 1990. In Pakistan, they started 
import of its goods (Oil and Ghee) under said brand name or 
Trademark since 1996, which was supplemented by various invoices 
evidencing import and use into Pakistan ever since, whereas, the 
Petitioner adopted the competing mark and applied for its 
registration on 24.8.2002, after more than a decade of its adaption 
by the IFFCO. Consequently, both the Applications for the 
Registration of the Trade Mark “HAYAT” in Class 29, made by the 
IFFCO and their opposition to the Registration of the Trade Mark 
“FAROOQ’S Hayat” filed by the Petitioner were allowed and the 
Application for registration of impugned mark “FAROOQ’S Hayat” filed 
by the Petitioner and their Opposition Applications were also 
dismissed. 
 
6. 
 
Learned ASC for the Petitioner contended that both the 
marks are quite distinct. It was argued that thorough search was 
Civil Petitions No.2066 to 2068 of 2013  
 
3 
made in the Trade Marks Registry, and as per search report dated 
23.10.2002 it was revealed that registered mark is “nil” and two 
applications in class 29 were pending for different products, and in 
market search, according to learned counsel for the Petitioner, 
similar products were not available, therefore, bonafide and in good 
faith petitioner had adopted the mark “FAROOQ’S Hayat” for Banaspati 
Ghee, Cooking Oil, Edible Oil, and Palm Oil.   
 
7. 
 
Contentions of the learned ASC for the Petitioner are 
not substantiated from the record. The official search report 
(Memorandum) 
dated 
23.10.2002 
discloses 
that 
IFFCO’s 
Application No.140853 for the trade mark HAYAT, was already 
pending in class 29 for “Meat, fish, country and games; meat 
extracts, preserved dried and cooked fruits and vegetables; jellies; 
jam; fruit sauces; eggs, milk product; edible oils and fats; ghee; 
margarine; being goods included in class 29” (page 41 in CPLA in 
2067/13) (emphasis supplied), therefore, it cannot be urged that the 
petitioners were not aware of the adoption and use of Trademark 
‘HAYAT’ by IFFCO. 
 
8. 
 
It may be observed that section 8(a) of the Trade Marks 
Act, 1940 forbids registration of trade mark and or a part of the trade 
mark that may comprise of or embraces, any scandalous design or 
any matter the use of which would by reason of its being likely to 
deceive or cause confusion or otherwise , be disentitled to protection 
in a Court of justice (emphasis added) Likewise section 10(1) of the 
Trade Marks Act, 1940, puts a clog on the registration of trade mark 
in respect of any goods and or description of goods which is identical 
with a trade mark belonging to a different proprietor and either 
already registered in any of the acceding state in respect of same 
goods or descriptions of goods or “which so nearly resembled such 
trade mark as to be likely deceive or cause confusion”. The 
exception to this general restriction is provided under various 
provisions of the Act of 1940. Sub-section (2) to section 10 ibid is 
extended to “honest and concurrent use” or if there exist “other 
special circumstances” that too is subject to such conditions and or 
limitations as may be imposed by the Registrar or where in terms of 
section 13 (b) ibid; the trade mark applied for is “common to trade 
or otherwise of a non distinctive use” and or that the petitioner is in 
Civil Petitions No.2066 to 2068 of 2013  
 
4 
terms of Section 25 (2) ibid; is a prior user of the competing mark. 
Petitioner has not been able to demonstrate that his case falls under 
any of the exception clauses catered for under such statutory 
exceptions provided under the Act 1940. 
 
9. 
 
As regards contention of learned ASC for the Petitioner 
that both the marks are quite distinct and dissimilar and there is no 
likelihood of confusion and or deception. According to him, use of 
prefix FAROOQ’S, the trading name of the Petitioner to the word 
‘Hayat’, distinguishes petitioners good from that of IFFCO. He 
placed reliance on the case reported as Uniliver Ltd v. Sultan Soap 
Factory (PLD 1991 SC 939) and Ekhlik Ahmed v. Dae Health 
Laboratory limited London 1980 SCMR 625). It may be observed 
that, registration of trade mark is not restricted to one word, but it 
may comprise of composite and or composition of common to use 
and or invented words, coupled with numerical, device, diagram, 
picture and or any image etc. and or any combination thereof. 
Certain trademarks do carry one or more prominent feature that 
clearly distinguishes goods of one proprietor from their competitors 
dealing in similar goods, such distinguishing feature in parlance of 
intellectual property is termed as ‘dominant feature’.  In instant case 
the trade mark “HAYAT” in Arabic/Urdu and English as is adopted 
and used by IFFCO since 1990 in overseas market and also in 
Pakistan since 1996 is displayed on its goods with pictorial of 
vegetables, poultry etc laid in a peculiar fashion. Petitioner has 
adopted the mark Hayat for same class of goods, by adding 
“FAROOQ’S” printed in small script as a prefix to the striking and or 
dominating feature “HAYAT”. It may be observed that merely adding 
a prefix and or suffix to already existing trademark will not save the 
Petitioner from the clutches of Section 8 of the Trade Marks Act 
1940, which prohibits registration of a trade mark or a part of trade 
mark, which is “likely to deceive or cause confusion”.  Trade Marks 
Act, 1940 (as succeeded  by  Trade Marks Ordinance 2001, which 
came into force on 12.4.2004 per SRO No.212(I)/2004) not only 
protect consumers, but also traders who adopt a particular 
trademark, which  distinguishes their goods, products and services 
from other competing traders, producers and  service providers. The 
Act 1940/Ordinance, 2001, provides mechanism, to protect such 
trademark and forbid anyone attempting to appropriate to itself and 
Civil Petitions No.2066 to 2068 of 2013  
 
5 
or to thrive on the goodwill and reputation created by another and or 
to deceive customer in assuming and or believing that the goods, 
merchandise and or services reputed to belong or associated with 
some one else are his or associated therewith, it is of no consequence 
that such representation and or assumption is fraudulent or not. Law 
protects honest traders, encourages due observance of fair play, 
moral and ethical values in trade and business practices. Courts of 
law always frown on unfair trade and business practice, that may 
tend to encourage malpractice, and or usurpation of goodwill and 
market created by some one else, such wrongdoing cannot be termed 
any thing short of robbing some one of his hard earned goodwill and 
or rights in (intellectual) property.  In the case of Uniliver Ltd (PLD 
1991 SC 939), use of the mark LIGHT was opposed by the proprietor 
of the trade mark “SUNLIGHT, on the ground that LIGHT is part of 
the Appellant mark SUNLIGHT. This Court considering all aspects 
of the case and taking into consideration effect of trade marks 
comprised of two syllable, took note of the words “create striking 
effect and cause confusion or deception”. It was held that mere use of 
the word “LIGHT” will not automatically be taken as SUNLIGHT or 
the product of the appellant. The Court also took note of the fact that 
many trade marks were already registered with prefix “SUN”   This 
court allowed respondent the use of LIGHT within certain territorial 
bound and by adding its trade name SULTAN before LIGHT. Case of 
Ekhlaq Ahmed 1980 SCMR 625, is of no help to the Petitioner rather 
goes against the Petitioner. In the cited case, this Court itself 
examined the competing mark by examining the copy of carton of 
“VEST” applied for registration, with that of the trade mark “VEET” 
of the foreign based company and found visual and phonetic 
similarity between both the mark and declined to interfere in the 
finding recorded by High Court.     
 
10. 
 
From the record it is sufficiently established that the 
Petitioners have adopted the trade mark “FAROOQ’S Hayat” it 
encompasses the mark “HAYAT”, which is the striking or dominating 
feature of the trade mark of IFFCO such trademark was already in 
use and associated with IFFCO since 1990. In instant case adoption 
of dominant feature being “HAYAT” is not only strikingly similar but 
is identical as noted above,  merely adding prefix of “FAROOQ’S” in 
inconspicuous manner to the dominant or striking feature of the 
Civil Petitions No.2066 to 2068 of 2013  
 
6 
existing trademark HAYAT is of no consequence. The prefix 
“FAROOQ’S” as used by the Petitioner in instant case does not eclipse, 
overshadows or obscures the dominating mark HAYAT in a way that 
may distinguish his goods with that of the goods of the IFFCO. If the 
competing trade mark of the Petitioner is allowed registration, it 
would not only be encouraging unscrupulous traders to steal some 
one else’s goodwill and (intellectual) property, but at the same time 
unwary purchaser would be exposed to more than reasonable 
probabilities of confusion and deception. It is not only the registered 
trademark but the trademark proposed to be used is given statutory 
protection under sections 8(a) & 10(1) of the Trademarks Act, 1940.   
 
11. 
 
It was next argued that the artistic work in the name of 
“FAROOQ’S Hayat”;  has found favor under the Copyright Act, 1962, 
therefore the Petitioner has perfected his right being registered 
under the Copy Right Act 1962; thus should have been given 
preference to use the mark “FAROOQ’S Hayat” for its goods as against 
IFFCO. 
 
12. 
 
Arguments are fallacious on more than one counts, 
firstly the ‘Registration of Copyrights’ work is dated 12, April 2004 
(page 48 of the CPLA/2068/13), which is much after the date of 
adoption of the mark and application for registration of the Mark by 
the IFFCO and, secondly at the foot of such certificate it is boldly 
mentioned that  
“ 
PLEASE 
NOTE 
THAT 
TITLE/ 
NAME/ 
BRAND/MARK GIVEN BY THE APPLICANT IN 
APPLICATION FORM OR APPEARING ON 
“WORK” IS NOT REGISTERED BUT ONLY THE 
EXPRESSION/ 
STYLE/ 
GETUP 
OF 
THE 
“WORK” 
IS 
REGISTERED/ 
PROTECTED 
UNDER COPYRIGHT LAW.” 
 
13. 
 
It is not very uncommon that unscrupulous traders or 
the manufacturers tend to confuse and or mislead consumers of 
goods of known or popular brands by taking shield and protection 
under various other laws governing intellectual property rights 
namely Patent, Merchandise, Designs, Trade Marks and or Copy 
Rights. 
There 
is 
growing 
tendency 
of 
using 
such 
terms 
interchangeably or treating such terms synonymously. It may be 
observed that there may be some similarities and overlapping in 
Civil Petitions No.2066 to 2068 of 2013  
 
7 
intent and purport of such rights, but rights of a proprietor/owner in 
each namely trademark, merchandise mark, Patent and Design and 
or Copyrights  govern different category of intellectual properties 
and recognize host of different and special rights, obligations and 
remedies in their respective domain.  There is growing tendency of 
misappropriating rights in one type of intellectual property by 
seeking protection under different statute governing altogether 
different intellectual property. Most abused are rights in trade marks 
under the garb of copyrights, later aims to protect original works of 
art or creative articulation may be of a trademark in any tangible 
medium of expression, whereas, trademarks is associated with the 
goods for the purpose of indicating or so to indicate a connection in 
the course of trade between the goods and some person having the 
rights, either as a proprietor or as registered user, to use or apply the 
trade mark on his goods. Trademarks Act, 1940 protects the 
proprietor to use the trademark on his goods, and prevent others 
competitors from using and applying identical and or confusingly 
similar trade mark on their goods of similar class or description. 
There is no prohibition under the Trade Marks Act, 1940, for the 
competitors/traders from making, producing or marketing same or 
similar goods; only restriction placed is on the use and or adoption 
of same or deceptively and or confusingly similar trade mark. A 
trader may make or market or sell same or similar category of goods 
falling in same class but under different brand name or trademark 
that clearly distinguishes its goods from same category or class of 
goods. Petitioner may continue to manufacture, produce and market 
its competing and similar goods under class 29, but under different 
brand name or trademark.  
 
15. 
 
A copyright material cannot be allowed to be used as an 
alternate and or in substitution for the trademark, unless, of course, 
such copyright in 
the 
artistic 
work 
was 
also 
registered 
under 
the Trade Marks Act, 1940. It may be noted that Practice of using 
copyright as a substitute for the trademark was deprecated and 
defence of the infringer resting on registration of copyright was 
sternly rejected in large number of cases  including cases reported as 
Tapal Tea (Pvt) Ltd. Shahi Tea Co. (2002 CLD 1113), Pak Drug                              
House v. Rio Chemical (2003 CLD 1531), as upheld by a learned 
Division 
Bench 
in 
the 
case 
reported 
as 
Pak 
Drug                          
Civil Petitions No.2066 to 2068 of 2013  
 
8 
House v. Rio Chemical (2003 CLD 1531), M/s ADT Services AG v. 
ADT Pakistan (Pvt.) Ltd (2005 CLD 1546),  Muhammad Wahid v. 
Adnan Memon (2010 CLD 450).  In most of the reported cases, the 
Courts have rightly desired amendments to protect valuable rights 
and obligations in intellectual property under various statutes 
regulating such rights and obligation and arrest, misuse and abuse of 
such statute to the determent of honest and truthful   traders and 
entrepreneurs.  
 
15. 
 
No other grounds were urged. For what has been 
discussed above, order dated 29.09.2009 passed by the learned 
Registrar of Trademarks and the impugned order dated 12.09.2013 
passed by High Court in appeals, could not be interfered with. 
Consequently, the listed Civil Petitions are dismissed and leave to 
appeal is refused.  
 
Judge  
 
 
Judge 
 
 
ISLAMABAD, THE 
20th of January, 2015 
Zubair  
