ISLAMABAD: The Supreme Court has reserved its ruling on a trademark dispute, instituted by Karachi-based manufacturers and merchants of commonly used breakfast items like jam, jellies as well as syrups and squashes.

A two-judge bench consisting of Justice Qazi Faez Isa and Justice Yayha Afridi had taken up an appeal moved by the Shezan Services (Pvt) Ltd, the manufacturers of the jam, jellies, syrups and squashes against Shezan Bakers and Confectioners (Pvt) Ltd, owners of restaurants and bakeries in Lahore.

The Supreme Court reserved the judgment with a direction to both parties to furnish certified copies of the original registration and incorporation etc.

Messers Shezan Services (Pvt) Ltd was represented in the Supreme Court by Advocate Sultan Ahmed Sheikh whereas Advocate Hasan Irfan Khan appeared on behalf of Messrs Shezan Bakers and Confectioners.

Both claimants directed to furnish certified copies of original registration

The appeal concerned the May 14, 2018, Sindh High Court (SHC) verdict in which it rejected the plea with an observation that had it been the case of permissive use only, the appellant would have claimed a royalty for continuous use of the word “trademark”.

But it is not the case here and thus only advances the case of the respondents (Shezan Bakers and Confectioners) that the sale of goodwill includes the sale of trademark subject to its use within the territory defined i.e Lahore.

In the Supreme Court, the petitioner, through its counsel, contended that the trademark Shezan was Shezan Service’s house mark since the entity was an internationally renowned manufacturers and merchants of jams and jellies etc and market and sells these products throughout Pakistan. Besides, they are also the proprietors of several hundred trademarks which are registered in Pakistan and some are registered abroad, the petition contended.

Moreover, the word Shezan as well as the label had been duly registered in respect of jams, marmalades, jellies etc adding that originally the trademark Shezan was registered in the name of Shahnawaz Ltd, but the company assigned this trademark, subsequently, in favour of Shezan International Ltd. Later it was assigned in favour of the petitioner company.

The petitioner contended that due to continuous and extensive use under the trademark of Shezan label, it has become very popular in the Pakistani market and in fact the Shezan trademark was associated with the petitioners’ only.

But the Shezan Bakers allegedly imitated the trademark Shezan for the bakery and confectionary products, the petitioner claimed.

Later, the bakers applied for the registration of the trademark Shezan label in respect of all kinds of patties, cheese straw, chicken sandwiches, chicken spring rolls, vegetable spring rolls, fish rolls, fish kababs, pizza, fish, poultry, meat extracts, preserved and dried and cooked fruits and vegetables, jellies, jams eggs, milk and milk products, edible oils and fats and salad dressings.

The application was examined by the Registrar of Trade Marks of the Trade Mark Registry, Karachi, and accepted the same, which the petitioner claimed was done erroneously.

The registrar subsequently advertised the same in the trademark journal of Nov 1, 2001, for the purpose of inviting opposition, which the petitioner did under the Trade Marks Act, 1940.

Subsequently, the Bakers furnished Feb 19, 1975, agreement before the registrar trademark to which the petitioner contested that it had not been executed by the petitioner but a third party besides it had been granted to run two restaurants in Lahore namely Oriental Restaurant and Continental Restaurant, but did not confer any rights to the bakers, which was claiming the concurrent use.

Later, the registrar of trademarks dismissed the plea taken by the petitioner and subsequently endorsed by the SHC.

On the other hand, Hasan Irfan Khan argued in the Supreme Court that throughout its use since 1975, the petitioner never objected to the independent and consistent use of the label by the bakers besides there was no opposition of the appellant with regard to the opening of additional restaurants or bakeries etc within Lahore.

Published in Dawn, February 11th, 2022