Trade Marks: Distinctiveness: Legislative Requirement & Judicial Interpretation

TRADE MARKS: DISTINCTIVENESS: LEGISLATIVE REQUIREMENT & JUDICIAL INTERPRETATION TRADE MARKS: DISTINCTIVENESS: LEGISLATIVE REQUIREMENT & JUDICIAL INTERPRETATION INTERPRETATIONS OF DISTINCTIVENESS: GROUNDS FOR RECTIFICATION OF REGIST'ER By Mr. Justice Dr. Nasim Hasan Shah, Judge Supreme Court of Pakistan What's is a name : That which we call a rose By any other name would smell as sweet (Romeo and Julliet ; II. 2) ‑--Shakespeare But this is not true of Trade Marks and ill the world of commerce, as opposed to the world of the poet, the name is everything. It distinguishes one article from another. It provides the distinction of the goods of one owner from the similar goods of another. In this competitive world 'of commerce, one's "rose;" should smell more sweetly and sell more swiftly than the rose of others. For this purpose, the owner of the "rose" must not only get his rose identified by his name and lead the world to think that his rose smells more sweetly than the rose of any other but also ensure that no one passes off his similar goods as his "rose". The fundamental rule in trade‑marks, in the language of Lord Langdale all the case of Perry v. Truefitt is that one man has no right to put off iris goods for sale as the goods of a rival trader, and he cannot, therefore, be allowed to use names, marks, letters or other indicia, by which he tray induce purchasers to believe that the goods which he is selling are the manufacture of another man. A man may mark his own manufacture, either by his name, or by using for the purpose of any symbol or emblem, however unmeaning in itself, and if such symbol or emblem comes by use to be recognised in trade as the mark of the goods of a particular person, no other trader has a right to stamp it upon his goods of a similar description. Normally a "trade‑mark" will consist of a picture, symbol, label, word or words which the owner will give to his girds for distinguishing them from the similar ‑goods of others so that they are identified as his goods. However, to fulfil these attributes, his "trade‑mark" must be distinctive. In this paper I propose to first present before you some facets of this attribute of "distinctiveness", particularly the interpretations of distinc tiveness and then briefly refer to the grounds for rectification of the register wherein the trade‑mark is entered. The concept of "distinctiveness" in relation to trade marks as under stood in the English Common Law countries today has its origin in the enactments of their Legislatures and the interpretations made from time to time by eminent Judges of those countries. Lord Halsbury while intervreting the U. K. Acts of 1883 to 1886, in Perry Davis v. Harborb2 said: "The word distinctive means distinguishing a particular person's from somebody else's goods not a quality attributed 'Paper presented on 6th October, 1986 in Regional Forum on the Judiciary & Intellectual Property System, Islamabad, Pakistan to the particular article but distinctive in that respect, that it means that it is a manufacture of his as distinguished from some body else's"; Elaborating the concept of distinctiveness Lord Russel, in the case of "The Canadian Shredded Wheat Co. Ltd. v. Kellog Co. of Canada Ltd.' observed that "Distinctiveness . . . must carry with it the feature that the goods distinguished are the goods manufactured by a particular person and by no other. A word or words to be really distinctive of a person's good must generally speaking be incapable of application to the goods of any else". While according to Lopez L. J. "the meaning of the word "distinctive" I understand to be this, that it must be a mark or device of such a kind that in case of infringement it shall be clear what it is that is being infringed, and that the mark is something different from all other marks used in the same class of goods" re: James's Trade Mark, James v, Soulby.4 To ensue this distinctiveness, the mark used by a trader is generally got registered as his "trade‑mark" 'in relation to his goods. The perimeters of the registration system of trade‑marks to this country is set by the term "trade‑mark" itself as given in the Trade Marks Act, 1940 'this is a pre‑independence legislation and is patterned largely on the Trade Marks Act, 1938 of the United Kingdom This Act is still in force in Pakistan but in India it has been replaced by the Trades and Merchandise Marks Act, 1958. According to section 2(1)(L) of the Trade Marks Act, 1940‑ "Trade Mark means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or registered user, to use the mark whether with or without any indication of the identity of that person." The Act, through clause (J) of section 2, adds a further definition of the word mark to include "a device, brand, heading label, ticket, name signature, word, letter, numeral or any combination thereof." Section 6(1) of the Trade Marks Act, 1940 requires that a trade mark must contain or consist of at least one of the five categories of `essential particulars". The first four of these concern particular kinds of words. But the fifth‑"any other distinctive mark ‑admits any mark that satisfies the criterion specified in section 6(2), namely, that the mark must be "dis tinctive' in the sense of being "adapted the distinguish good with which the proprietor of the mark is or may be connected in the course of trade" from those with which he is not. A tribunal assessing this has to consider both whether the mark is inherently adapted to distinguish the goods and whether it is adapted to distinguish them in fact, i.e. from its actual use as a trade mark and any other circumstances [Section 6(3)). In Re: Cadbury Brothers Ltd.'s Application [1915), the observations of Neville, J. at pp. 337. 339 are note-worth) in this respect. He said‑ "I have. . . to ascertain whether this name ["Cadbury", under which the chocolate, cocoa and confectionery of Cadbury Brothers Ltd., was sold] . . . . is distinctive in the sense of being 'adapted to distinguish the goods of the proprietor of a trade mark from those of other persons'. In determining that question I am entitled to 'take into consideration the extent to which .. user has rendered such trade mark in fact distinctive of the ~goods in respect of which it is registered or proposed to be registered', and I have at all events the dicta of the Judges of the Court of Appeal to show that that means user as a trade mark . . . . . . What is meant by distinc tive' except that when you see the name your mind immediately refers to the person or firm or company who sold or manu factured the article, and to that one person or firm or company alone." Again in Punjab Soap Factory v. Assistant Registrar of Trade Marks6 where the question arose whether the appellants mark consisting of the words "Punjab Soap Factory" could be registered as his "trade‑mark", the Sind High Court while refusing to do so observed that "distinctiveness" under section 6(1)(e) and subsection (3) of section 6 would depend on whether‑ (a) the trade‑mark is inherently adapted to distinguish ; and (b) the use of the trade‑mark has made the mark adapted to distinguish. The words "Punjab Soap Factory", it was observed, were not inherently adapted to distinguish. The words "Soap" and "Factory" were merely descriptive ; while the word "Punjab" was a geographical name not generally suitable for use as a trade mark. The "essential particulars that form the first four cases of section 6(1) refer to categories of the word 'mark'. The first two are special forms of marks involving names (business names particularly represented, and signatures); they are reserved for‑ consideration with surname marks. The next two categories are of general importance. They are: invented words [category (c)] and words that are not directly descriptive or geogra phical and are not surname [category (d)]. There is a relationship between them, which in broad term is this: if a word is newly coined and as such conveys no obvious meaning it is "invented" within category (c). If it is not invented it falls into category (d), unless it is descriptive, geographical or a surname. If it comes within this exception, it can qualify only under category (e); and because its other meaning must render the mark to some extent not inherently adapted to be a trade mark, evidence is required of its adaptability in fact. This evidence (normally of use as a trade mark) must be sufficient to overcome the initial objection to the mark. Words in categories (c) and (d) do not normally have to be shown to be distinctive in fact, and that is the advantage attaching to them. But still the root test is that they must be "distinctive". So, in particular cases there may be an initial objection requiring evidence to overcome it. "Chin Chin" for alcoholic beverages was held to be non- descriptive but were not, however, in such general use as not to be capable of distinguishing and so within category (d): "Chin Chin".7 (i) Invented words.‑Whether a word is invented depends upon two factors, one subjective, the other objective: the word must have been newly coined and it must convey no obvious meaning to the ordinary man such as "Diabolo" for a game.8 Here, however, the Courts have distingu ished between mere changes of spelling and more substantial changes from words in the existing vocabulary. Misspelling‑slight ("Trakgrip") as in Dunlop Rubber's Appln9 do not bring the privilege attaching to invention, however, common a technique this has been for telling the public that it is dealing with a trade mark. Courts in Pakistan have also taken the same view. Thus, the word "Allwite" was refused registration in respect of shoe polishes, shoe cleaning preparations and leather preservatives as it was merely a misspelling of "Allwhile" and not adopted to distinguish but likely to lead to embarrassment acid confusion.10 Again the word "Esso" representing phonetically the appellants then name Standard Oil was not considered to be an "invented" word and hence not registrable, in the absence of evidence of distinctive ness." Similarly, the word "Sweetex" by adding "EX" to the word "Sweet" was not found to be an invented word as it was a trifling variation of the word "Sweet" and did not make the word an invented word within the meaning of section 6(l)(c) of the Trade Marks Act, 1940.12 But compounding words so as to leave some indirect suggestion‑for instance some "covert and skilful allusion to the character or quality of the goods" is nonetheless inventive as held in Soho's case.13 In this case, the word "Solio" was found registrable for photographic equipments as an invented word even though it might be taken to allude to the sun. So also such confiations as "Coffusa" (Coffee infusa) and ("Bitumetal"+ Metal) have been considered to be invented words. (ii) Direct reference to the character or quality of goods.‑Words chosen as marks often relate to some quality of the goods. Provided that the word is not "invented", .and if the reference to the character of quality of the goods is direct, then evidence of distinctiveness is a prerequisite for registration under the Trade Marks Act, 1940. Words such as "Brownie" and "Bullseye" for cameras and films,14 "Oomphies" for shoes,15 "Tub Happy" for clothing16 and even "Dustic" for adhesives17 have been held to involve no sufficiently direct reference. On the other hand, words like "Tastee Freez" for ice‑cream,18 "Weldmesh" for wire mesh19, "Tarzan" for films and toys.20 "Madame" for food21 and in India Rasoi for hydroge nated oils for cooking,22 even though found to be directly descriptive of the goods have been refused registration for want of evidence of distinctiveness. The second group of examples shows considerable variation in the amount of evidence of actual distinctiveness needed to secure their registration. The ultimate question is whether, if registration is granted, other traders would be hampered in making any fair and honest use of the word in their own trade. See in particular, Lord Parker's observations in Registrar of Trade Marks v. W & G Du Cros Ltd.23 where he said that the right to registration should "largely depend on whether other traders ate likely in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark, nearly resembling it, upon or in connection with their own goods". In U. S. A. the word "Fineline" in respect of mechanical pencils and leads though sufficiently descriptive of the character or quality of the goods indicating as it did that the 'pencil wrote finelines but was refused registration because it could cause confusion to the public and also prejudice the legitimate interests of other traders.24 A mere laudatory epithet is not registrable as a trads mark, regardless of the extent of use. This was established by the "Perfection" case25 which was the first case under the U. K. Act of 1905 corresponding to section 9(1)(e) of the U. K. Trade Marks Act, 1938, and section 6(1)(d) of the Pakistan Trade Marks Act, 1940. On the same basis the word "Marvel" was refused registration, in Pakistan, as it was purely alaudatory term.26 If a word is not merely laudatory, but gives a more or less fanciful or indirect indication that the marked goods have some special or desirable properties registration could be possible on the basis of sufficient evidence of user, as in the "Sheen" case for sewing cotton.27 The word "Sheen" was found to be a less usual word than "luster" to describe the quality in question and so was registered upon proof of very substantial use. (iii) Geographical names.‑--If a word is a geographical name according to its ordinary signification, it is not registrable under the Trade Marks Act, 1940, except upon evidence of its distinctiveness. The name of a place when applied to any article of commerce, will, in general serve to indicate only that the product or article is manufactured at the particular place and not that they are manufactured by a particular trader. Accord ingly, the name or place of a major industrial area or a city will be totally unregistrable in respect of almost any gods as such marks do not serve the purpose of a trade mark. Thus, names of well‑known mineral water springs "Apollinaris" and "Hunyadi Janos" were held geographical names and prima facie not distinctive in respect of spring waters or product of those waters.28 But not all names of places suffer from this disability. Thus, "Northpole" could very well be a good trade mark for sewing machines. No sensible man would think that sewing machines are manufactured at the Northpole. The prima facie disability can be overcome by filing evidence of distinctiveness and long user. But names of places of industrial or commercial importance are still incapable of registration even upon proof of extensive user. The mark "Liverpool"29 for cables was refused registration on the ground that it is the name of a place having reputation for the article. Similarly, a mark consisting of the word "York" for trailers and containers for transportation of freight was not registered by the Registrar and his decision upheld by the House of Lords on the principle that, in relation to certain words, of which laudatory epithets and some geographical names were established examples, traders could not obtain the monopoly in the use of such words (however distinctive) to the detriment of members of the public who, in the future and in connection with other goods, might desire to use theta. The refusal by the Registrar was upheld because the name "York" possessed an industrial character such that other traders in related fields, might want to use.' However, in Abdul Hamid v. Abdur Rahim" where the question was whether the words "Daigon" and "Dragon" could be refused registration as trade marks when the word "Saigon" was already on the register of trade marks it was held by the Supreme Court of Pakistan that first syllables "Dai" and "Drs" are dis similar from the first syllable "Sai", which syllable was important for dcciding the question of deception and confusion. Since the word "Saigon", an important geographical entity, had become well‑known in connection with the Vietnam War the word "Daigon" was not likely to cause confusion or deception and it, could be registered. It is also to be noted that the words "according to its ordinary signification" used in section 6(1) (d) of the Trade Marks Act, 1940, must interpreted in the general and popular meaning of the words and that a word does not become geographical name because some place in the world is called by that name. If the name of a place was not generally used and was not likely to be understood in a geographical sense it may be registered. In Magnolia metah M. T.32 an application for registration of the word "Magnolia" for metal alloys was filed. There were several places by that name in U. S. A. but the goods had no connection with any of those places. It was held by Kekewich J That "Magnolia" was not a geographical name for the purposes of the English Act and his decision was affirmed by the Court of Appeals. The Court observed that the phrase 'geographical' to section 64(e) ought not to receive so wide an interpretation. In the Pakistan Act the limitation regarding registrability of geographical names is even more restricted. Here the place has to be located in Pakistan to come within the prohibition. Thus, the Supreme Court of Pakistan in the case of Hoechest A. G. v. Assistant Registrar of Trade Marks" reversed the decision of the Trade Marks Registry and the; High Court wherein registration ,of the word "Kalle" was refused on the ground that it was both a surname and a geographical name in its ordinary signification on the reasoning that the words "ordinary signification" must be looked at objectively and according to a Pakistani's normal understanding. On this criteria, the word "Kalle" was found to be a word which was not "commonly understood in Pakistan" and if at all it referred to some geographical entity it could only have "one signification of referring to the name of a place outside Pakistan". The Court went on to observe that "since in terms of section 6(1) (d), the prohibition relates to geographical names, in Pakistan, it appears to us that no valid objection could be raised to the registration of this word as a trade mark". (iv) Surnames.‑--A word which "according to its ordinary signification" is a surname also requires proof of distinctiveness before registration and prima facie is not adapted for the purposes of registration. The question is "whether a word is a surname in its ordinary signification. For the purpose of registration, if a name is a common surname, it is indeed very difficult to prove that it has acquired distinctiveness. In each case, however, the question depends upon the facts. In respect of such‑ articles as motor cars and aeroplanes, there would not be much difficulty in registering a surname. For instance, "Chevrolet", "Dodge", "Morris". "Austin", "Daimler". "Toyota", "Suzuki", etc. are all registrable trade marks in respect of motor cars, and very slight evidence of distinctiveness would be sufficient. In the case, however, of articles which are manufac tured by many traders and which are purchased by the public on a large scale, there must be very strong evidence of distinctiveness before a surname is considered registrable. The quantum of evidence of distinctiveness depends also upon the nature of the surname, viz. whether it is a common surname or a little known surname. For instance, "Eno", a surname, has been registered for an "aperient". 34 Where the other meaning is still the more usual but the gap is not so considerable the word will be treated as a surname and so, until sufficient use is proved, will not be registrable: examples are "Jury" and "Bugler"" However, where it is an unusual surname, a modicum of use may suffice to secure registration." The commoner the name, the harder it is to establish distinctiveness in fact. But there is no decision holding a very common surname to be so inherently non‑distinctive as never to be registrable. The Courts in Pakistan have held that only such meaning of the words as exist in Pakistan shall be pertinent for ascertaining the distinctiveness of a mark. Thus, word "Up" was held not to convey by itself and idea of effervescence or sparkling, hence, not descriptive." However, the word "challak" was held, in Pakistan, distinctive enough to be registrable in respect of metal and motor polish as the word "challak" in Urdu meant "shining" or "bright".' Another question which is of considerable interest is whether a "get‑up" of an article can be registered? It used to be thought that get‑up", in the sense of the shape or colouring of goods, or the shape or colouring of a container for them, was not registrable. But this view is now no longer true and the House of Lords while deciding Smith Kline & French's Application" has upset it. The case concerned marks for pharma ceutical capsules consisting of particular colours applied to half the capsule and to the contents visible through the other half. Such marking by colouration was held to constitute a "trade‑mark". The House declined to accept that a mark "must be capable of being described and depicted as something apart from the goods'", or that it cannot be some thing that covers their whole surface. Marks which are labels for various sides of a box have long been accepted and so have coloured lines that run the length of circular objects such as hosepipes. Accordingly, the concept is not limited to marks to be used in two dimensions, and, if coloured lines and the like may cover part of the surface, the Lords could see no use in distinguishing between those which cover part or the whole of the visible surface. If colour, why not shape? It may be that, whatever inhibition may previously have been felt, any sort of get up may in principle be a "trade mark' . Tee crucial question must then become whether it is sufficiently distinctive. On the question of "distinctiveness" Courts in Pakistan have also held that besides proof of long and wide user there should also be consider able volume of business to establish distinctiveness. In the case of boots Pure Drug Co Ltd. v Registrar of Trade Marks,"' it was held that a business of rupees three lakhs spread over a period of eight years did not establish the word (in that case the word "Sweetex") as having become distinctive of the applicants goods. Courts in Pakistan lave also consistently refused registration if the trade‑mark is likely to cause deception or confusion. Thus, the Dacca High Court, when Pakistan was not yet divided, in the case of a phar maceutical company refused registration to a party applying for getting one of its products registered under the trade‑mark "Livatogen". The Court observed that a product under the trade‑mark "Livogen" stood registered since 1942 and had a wide circulation. As the words "Liva togen" and "Livogen" were likely to create confusion in the public mind and purchaser of ordinary prudence likely to be deceived, registration was refused. Similarly, in the case of Monsanto Co. v. Gul Ahead Textile Mills Ltd.42 Qadeeruddin Ahmad, J. accepted the appeal of the appellant who was using the word "Resloom" as its trade mark on a chemical preparation, which was a liquid and was used for treating textiles for giving a finish and resistance to shrinkage of such goods. This business of the appellant was carried on in the United States of America. The respondent imported 2,375 lbs. of this preparation from the appellant for using it cn the textile piece goods manufactured by him. Subsequently, the respondent decided to adopt the word "Resloom" as the trade mark of his textile piece goods and also applied to the Registrar of Trade Marks for its registration as a trade mark. This was opposed by the appellant. But as the evidence disclosed that neither party had acquired any reputation for this trade mark in the Pakistan market, the Registrar rejected the appellant's opposition. The appellant appealed to the High Court where the respon dent disputed the appellant's contention that there was a likelihood of deception or confusion if the same trade mark was used oft goods of two different classes. The Court rejected the respondent's plea observing that the real point is not whether the goods belonged to the same class or to different classes, but whether there is any trade relation between them of such a nature as to create an impression that the manufacturer of one might be the manufacturer of the other: or the products of the goods of the other manufacturer might have been used in the production of the goods of the other manufacturer. As there was a likelihood of deception and confusion from this point of view, the appeal was allowed. Ten years later, in 1978, the same High Court reiterated that once it was established on the evidence that deception or confusion was probable, the Registrar (of Trade Marks) was bound to prohibit registration of the proposed trade mark in the public interest." It has also been held by Courts in Pakistan in cases of competing Trade Marks that the Trade Marks Registry while ascertaining the issue of distinctiveness should lay emphasis on their leading features and characteristics. In Jamia Industries Ltd, v Caltex Oil (Pakistan) Ltd." the application of Jamia for a device of a five pointed star in a crescent almost forming a circle was opposed by Caltex on the ground that their registered mark consisted of the device of star within a circle in respect of the same class of goods. It was held that the proposed trade mark was not distinctive as the essential characteristic of the mark in spite of the Use of the word "Jamia" would be the star. It has also been held that the onus of proving that the new proposed trade mark is distinct from a trade mark already on the register is on the applicant. The idea underlying the law of registration of trade marks in Pakistan is the prevention of fraudulent use of marks of one proprietor by another. In National Electric Fans Manufacturers Gujrar v. S. Muhammad Din 8c Sons Ltd., Lahore 46 the respondent was denied the right to register its mark in view of the finding that the mark was dishonestly copied. In another case it was observed by the Supreme Court of Pakistan that the Registrar Trade Marks is not only free to take into account social and economic considerations while exercising his discretion in allowing or disallowing registration of a trade‑mark but is also bound to take into consideration the public interest observing that it was "obvious that public interest can never be furthered by doing anything which would encourage dishonesty"" (a) Rectification of register As mentioned already the Trade Marks Act, 1940 of Pakistan is patterned on the U. K. Trade Marks Act, 1938 and its provisions bear considerable similarity to its provisions. Section 46 of the Trade Marks Act of 1940 deals with the matter of rectification. This section seemingly corresponds to sections 32 and 33 of the U. K. Act of 1938 but in fact is wider to it in its amplitude. Under section 46 of the Pakistan Act a High Court or the Registrar may, on its or his own motion, after giving notice and hearing the parties concerned make any order for rectification of the Register for sufficient cause. In the United Kingdom on the other hand, the Registrar cannot in any case make an order for rectification on his own motion but has to apply to the Court for rectification in every case even where the registered proprietor is guilty of fraud or of breach of any of the conditions of registration. As for the grounds on which rectification may be ordered these have not been set forth at one place on the Trade Marks Act of 1940 but are contained in various sections of the Pakistan Act. However, most of them are provided for in section 46 of the Act. These are as follows:‑ (1) "Contravention of or failure to observe a condition entered on the register in relation" to the trade mark. (2) "absence or omission from the register of any entry" by which the applicant is aggrieved. (3) "any entry made in the register without sufficient cause", and constituting the grievance of the applicant. (4) "any entry wrongly remaining on the register". (5) "any error or defect in any entry in the register". The Registrar has powers to correct the Register under section 47 of the Act also, on the application of the registered proprietor, or enter any changes in the details. Also, section 42 of the Act provides that without prejudice to the provisions of section 46, the registration of a person as a registered user may be varied as regards the goods, conditions or limitations of registration, or cancelled by the Registrar on application made by the registered proprietor, or any registered user, or by any person on certain specified grounds. Again under section 23 of the Act, registration of a trade mark is deemed to be prima facie evidence of the validity of original registration of the trade mark and of all subsequent assignments and transmissions. And under section 24 of the Act, the validity of original registration of a trade mark cannot be challenged after expiration of seven years from the date of original registration except on grounds of fraud or that the mark offends against the provisions of section 8(a) of the Trade Marks Act as to deceptive trade marks. Rectification proceedings can be filed by any "person aggrieved" before the High‑Court of the 'Registrar of Trade Marks under section 37 on grounds of non-use or, on any of the grounds given under section 46 of the Trade Marks Act; 1940. The expression person aggrieved has been construed in several cases. According to Bowen; L. J. in re': Powell's T. M.'48 "Persons who are in soiree' way or the other substantially interested in having the mark removed from the, Register or persons who would be substantially damaged if the 'mark remained on the Register" would be persons aggrieved. Furthermore; the scope of the expression is not confined to persons who would in the game trade and deal in the same goods but includes persons who being in the same trade might reasonably be expected to deal in the same article; though at the moment they had not formed a clear determination to do‑so. In re: Reviere's T. M.'9 It was observed: "If a man is hampered in the future by the fact that a trade mark is on the register which ought not to be there, he is a person who . . . . is sufficiently aggrieved to come within the section'. A foreigner may also be a person aggrieved if he is otherwise qualified to apply for rectification.' Rectification of the register can be ordered in cases where the original registration ‑was. wrongly procured as well as in those cases arising as a result, of events occurring after registration. In both cases it mast, however; be shown that the entry is, wrongly made or is wrongly remaining on tie register by virtue of some other section of the Act.51 However, in all cases the power to remove a registered trade mark is discretionary with the Registrars' and he may not order cancellation of registration where m; re technical formalities have not observed at the time of registration. 53 Coming to the cases where the original registration was not warranted, the matter must be looked at as at the date of the application for registration. A trade mark trot possessing at the date of its registration, any of the essential particulars of a registrable trade mark enumerated under section 6 of the Act, can be removed from the. Register subject to the provisions of section 24 of the Act. Thus, name marks, and signature marks not falling within clauses (a) and (b) respectively of section 6(1), and not supported by evidence of distinctiveness at the time of their registration as required under the proviso to section 6(1)(e) are liable to be removed from the Register. A mark which was not distinctive of the applicant's goads at the date of registration, and was calculated to deceive was expunged. The leading authority on this point is Bowden Wire Ltd. v. Bowden Brake Co. Ltd 5' Any evidence as to distinctiveness of the mark acquired by use subsequently to the date of application to register does not carry any weight." Similarly, words which had been registered as "invented" words will be ordered to be removed from the Register on being shown that they were in fact not invented words at .the time of registration. In the 'Livron' casr'6 the word Livron was registered as an invented word in relation to liver extract and iron composition medicine by Boots Purg Drug Co. Ltd. How ever, on motion for rectification, the applicants for rectification showed that the word was actually the name of a small town in France where they had a factory for manufacturing pharmaceutical goods. It was held that the mark was a geographical name and that it was wrongly registered as there was no evidence of distinctiveness at the time of original registration. Green, M. R. observed with regard to the corresponding section 11 of the U. K. Act of 1905, thus "It is to be remembered that that section is one which exists not merely for the benefit of other traders but for the benefit of the public at large, and I take the view that this is a case where the Registrar, who, in the first instance, would have to decide the issue of fact under that section, if he had all the facts before him which we now have before us, ought to have held that the use of the mark would have been calculated to deceive. It appears to me quite insufficient to displace that proposition to say that in practice the use of the mark has riot deceived. The use of the mark has been limited in the past to its use in a particular way and in particular context. But since under the registration the mark can be used in connection with anything falling within the class, the question is whether the use of the mark in any way in which it can be used as a mark would be calculated to deceive. It appears to me that the use of the mark ought to be held to be calculated to deceive having regard to the existence in a place of the ,wine name of a company carrying on the same business and manufacturing articles of the same class." It was also observed that the registration of the word 'Livron' interfered with the legitimate interests of other rival traders to use the word to indicate their place of manufacture, and that the registration was made without sufficient cause. The mark was accordingly expunged. Similar observations were made In re: Baily & Co. Ltd. v. Clark Son & Morlands' where the House of Lords ordered the removal of the word "Glostonburg" from the Register on the ground that the mark was "not adapted to distinguished" at the date of original registration and that its presence on the Register would hamper the rights of the traders. (b) Marks common to trade: Marks which were common to the trade at the date of registration and were, therefore, not distinctive are also liable to be removed from the Register: The broad question to be considered here is whether the goods are such that by virtue of some similarity, affinity or other circumstance, the purchasing public will consider them as coming from the same trade source if marketed under similar trade marks. The problem has to be looked at from a business and commercial point of view. In a recent case, Daiqiri Rum Tm" the mark for rum was expunged given the trade use of "Daiquiri" for a rum cocktail on the ground that it had become common to trade inasmuch as the word "Daiquiri" contained in the word "Daiquiri Rum" was a well‑known and well‑established name or description of a Daiquiri cocktail that had come into cocktail use all over the world as a descriptive term applicable to a rum cocktail. However, it is possible to imagine cases where marks lose their distinctive character for a reason other than that they are common to trade. Thus, a newsworthy event or other publicity might, for instance, make a geographical name prominent which was previously obscure. (c) Marks calculated to deceive: A registered trademark can also be removed on the ground that it is calculated to deceive by reason of similarity to other earlier marks. In Re: Christiansen's T. M.S9 a trademark which was registered earlier was ordered to be expunged on a motion for rectification by the proprietor of an old trade mark subsequently registered because the mark earlier registered was similar to his mark and was calculated to deceive. (d) Mark which offend against section 8: Trade marks which are inherently deceptive or otherwise offend against the provisions of section 8 (a) of the Act are liable to be removed at any time notwithstanding the provisions of section 24 and registration obtained on material misstatements contained in applications of registration have been directed to be expunged from the Register. An example of such trade mark is the Livron case noticed already. (e) Registration in wrong name: Rectification has been allowed in cases where a person has wrongfully registered the trade mark of another person in his own name. In Z ppas Tm, 61 it was held that a trade mark belonging to a foreign manufacturer registered in the name of the importer of goods bearing the mark may be expunged from the register on the application by the foreign manufacturer. Again where an importer of goods bearing a foreign proprietor's mark gets the mark registered in his name, it may be expunged from the register on the application by the foreign proprietor, even if the foreign proprietor is not the manufacturer of the; goods but owns the mark only as an association mark (similar to be certification trade mark) : See Karostep Tm.62 ( f ) Mark not used or proposed to be used: Rectification of the Register can be allowed by the Registrar or the High Court in cases where the mark was not used at all or there was no bona fide intention to use it at the date of its registration. The mark in such cases will not be a trade mark within the definition of the Act. Section 37 of Trade Marks Act expressly contains a provision for the removal of such marks subject to the provisions of section 38 relating to defensive registration Fry L. J. in appollinaris Companys' observed: "It may well be that in case of new marks the intention to use as a trade mark may be presumed; but when it is apparent, as it is here, by the evidence and admissions at the Bar, that there is no such intention, but that the registra tion is directed to a different end, then the entry has, within the meaning of section 90, been made without sufficient cause and ought to be expunged". Cases of rectification as a result of events subsequent to registration can be discussed, under the heading "entry wrongly remaining on the Register". These cases are (i) where the entry had been made in the Register without sufficient cause and is still remaining on the Register; (ii) where there has been no bona fide use of the mark for a conti nuous period of 5 years and one month before the date of application for rectification or a longer period; (iii) where the mark was validly registered but by reason of some circumstance arising after the date of registration has ceased to be distinctive of the goods of the registered proprietor; (iv) where the registered mark has been abandoned; (v) where the prescribed fee for renewal of registration has not been paid within the prescribed period; (vi) where the mark offends against the provisions of section 8 and is likely to deceive; and (vii) improper or invalid assignments and transmissions, etc. The discussion already made covers the cases falling within the above categories but we may however profitably advert to and dwell a little further over two of the abovementioned categories on account of their importance, namely, removal for non‑use/abandonment and loss of distinctiveness. (a) Removal for non‑use: As provided for in section 37 of the Pakistan Act a trade mark can be removed from the Register in respect of any of the goods for which it is registered on the grounds that there was no bona fide use of the mark by the proprietor for a period of at least 5 years ending at least one month before the date of application. Furthermore, registration can be limited to striking out only those goods for which the proprietor has not used the mark ‑Anglo Swiss Condensed Milk Co. v. Metcalf 64.' But when non‑use is due to special circumstances of the trade and not with any intention to abandon or not to use the trade mark in relation to the goods, such non -use is excusable and rectification not ordered. Connected with the case of non‑use of the trade‑mark is the case of its abandonment. There is no hard and fast rule for rectification of the Register on this ground as it largely depends upon circumstances of the case. As observed already the intention of the proprietor is material. Mere disuse for a short period does not amount to abandonment and the onus is on the applicant seeking rectification to prove by evidence that the mark has been abandoned. No particular length of time is required for abandonment of the mark. An application can also be filed by a person aggrieved seeking relief for striking out only those goods in respect of which the proprietor has abandoned and has no intention of using it in relation to those goods. (b) Loss of distinctiveness: The essence of a trade ma‑k is its distinctiveness. If a mark, although originally distinctive ceases to be so by reason of events subsequent to registration, it is liable to be removed from the Register subject to the provisions of section 27. The test N hether or not a mark has become publici juris has been discussed in several cases the earliest of which is the decision of Lord Justice Mellish in Ford v. Foster. 65 The proper test to decide whether a mark which was originally a trade‑mark has become publici juris, is to see whether its use by other persons is still calculated to deceive the public. If the mark has come to be so public and in such universal use that nobody can be deceived by the use of it or by its use be induced to believe that he is buying the goods of the original trader, the right to the trade‑mark must be gone. (Ford v. Foster). To say that a mark has become common to the trade is another way of saying that it has ceased to be distinctive of a particular traders' goods. This aspect has been explained in the Board & Son v. Thom & Cameron Ltd. 66 In these words: "The true meaning of a trade mark is the association of the mark with one person's goods. If you show that a large number of people have all been using the same mark, then it becomes a practical impossibility to say that the mark was associated with any one person's goods." The entry in the register of a trade mark which is publici juris at the time of original registration is, in fact, an entry made without sufficient cause and may be removed from the Register. Where a registered mark contains a common element in addition to distinctive matter, the Register may be rectified by the addition of a disclaimer of the common element. Rectification of the register is thus a means of ensuring the purity of the register and this is a matter of the highest importance. As observed by Bowen L. J. in Paine & Co. v. Daniell & Sons' Breweries Ltd. 67:‑ "The purity of the register of trade marks‑if one may use the expression is of much importance to trade in general; quite apart from the merits or demerits of particular litigants. If on a motion like the present attention of the Court is called to any entry on the register of a trade mark which cannot in law be justified as a trade mark, it seems to me that the Court's duty may well be whatever the demerits of the applicant‑to purify the register and to expunge the illegal entry in the interest: of trade, as was done in the Stone Ale case: 6 R P C 404. As a rule, the Court on being seized of the matter would doubtless put an end to the existence of a trade mark which could not possibly be justified by law." Distinctiveness being the essence of a trade‑mark if by the action of other traders it becomes impossible to associate the mark with a particular traders' goods it becomes imperative to purify the register. As stated at the outset of this paper, no one can pass off his similar goods as the "rose" of its original owner but if his "rose" becomes public lurk, it cannot remain the trade mark of any one particular person. Shakespeare's opinion: What's in a name! That which we call a rose. By any other name would smell as sweet68 is not apposite to rade arks. 1. (1842) 6 Beav, 66. 2. (18,40) 7 R. P. C. at p. 340. 3. (1938) R. P. C. 125 at p. 145. 4. (1886) 33 Ch. D. 392 (C. A.) at p. 396. 5. 1 Ch 331. 6. P L D 1970'Kar. 444. 7. (1965) R. P. C. 136. 8. Parker, J.‑Philiipart v. William Whiteley (1908 Ch. 274 at 297); approved in De Cordova v. Vick 68 R. P. C. 103 at p. 108 (J. C). 9. (1942) 59 R. P. C. 134, or gross (Orlwoola) in Orlwoola T. M. (1910) 1 Ch. 130, 26 R. P. C. 850 (C. A.). 10. In the matter of Application No. 4810 by Griffin Manufacturing Company to register a Trade Mark. 11. Exxon Corp, New York, U. S. A. v. Registrar of Trade Marks, Government of Pakistan P L D 1977 Kar. 781. 12. Boots Pure Drugs Co., Ltd. v. Registrar, Trade Marks P L D 1973 Note 7 at p. 15. 13. Solio Case (1898) 15 R. P. C. at p. 476. 14. Kodak v. London Stereoscopic (1903) 20 R. P. C. 337. 15. La Marguise's App (1947) 64 R. P. C. 27. 16. Mark Foys v. Davies Coop (1956) 95 C. L. R. 190 (H. C. Aust). 17. Dundas's App (1955) 72 R. P. C. 151. 18. Tastee Freez s App (1960) 67 R. P. C. 255. 19. "Weldmesh T. M. (1966 R. P. C. 220). 20. Tarzan T. M. (1970) R. P. C. 450 (C. A). 21. Madame T. M. (1966) R. P. C. 415. 22. In the matter of Application No.144005 by Development Corporation Ltd. to register a Trade Mark: Appeal No. 162 of 1951 in the Calcutta High Court. 23. (1913) A. C. p. 624. 24. In the matter of Application No. 107926 by W. A. Sheaffer Pen Company, U. S. A. to register a Trade Mark. 25. Crossfield's Appn. (1910) 1 Ch. 130; 26 R. P. C. 561; at 837 (C. A.). 26. In the matter of Application No. 8751 by Favre‑Leuba & Co., Ltd. to register a Trade Mark. 27. J & P Coats Ltd.'s App. (1936) 53 R. P. C. 355 (C. A.). 28. (1891) 8 R. P. C. 137. 29. (1891) 8 Re P. C. 137 30. York Trailer Holdings Ltd. v. Registrar of Trade Marks (1982) All E R 257. 31. P L D 1973 S C 104. 32. (1897) 14 R P C 621. 33. Civil Appeals Nos K‑37 and K‑38 of 1979. 34. ENO Ltd. s Appl. (1920) 37 R P C 1. 35. Swallow Raincoats App. (1947) 64 R P C 92 at p. 95. 36. Eve J. in Burford & Ca. Ltd.'s App. (1919) 36 R P C 139. 37. Bubble Up Company Inc. v. Up. U. S. A. P L D 1975 Kar. 582. 38. In the matter of Application No. 10601 by Tata Oil Mills Co. Ltd. to register a Trade Mark. 39. 1976RPC511. 40. P L D 1973 Note 7 at p. 15. 41. Zenith Laboratory (Pak) Ltd. v. British Drug House 20 D L R 1171. 42. P L D 1968 Kar. 369. 43. Sony Kabushiki Kaisha v. Registrar of Trade Marks P L D 1978 Kar. 161. 44. P L D 1973 Kar. 246. 45. Wagner Electric Corporation v. Paramount Oil Chemical Co. P L D 1973 Note 68 at p. 91. 46. 1980 S C M R 97. 47. Cooper's Incorporated (Now named Jockey International Inc.) v. Pakistan General Stores and another 1981 S C M R 1039. 48. (1894) 11 R P C 4, H. L. 49. (1884) 26 Ch. D. 48. 50. In re: Riviere's T. M. (1884) 26 Ch. D. 48; European Blair Camera Co.'s (1896) 13 R P C 600 ; Elaine Inescourt's T. M. 46 RPC13. 51. Pan Press Publication Ltd.'s Appln. (1948) 65 R P C 193 al p. 200. 52. [G. E. T M (1973) R P C 297 at p. 335 (House of Lords)]. 53. De Cordova v. Vick Chemical Co. (1951) 68 R P C 103 at pp. 108 and 109. 54. (1914) 31 R P C 385. 55. [Shredded Wheat Co. Ltd. v. Kellogg Co. of Great Britain Ltd. (1940) 57 R P C 137, H L.] 56. 54 R P C 161. 57. (1938) 55 R P C 253. 58. (1969) R P C 600 (H. L.). 59. (1886) 3 R P C 54. 60. (1937) 54 R P C 161. 61. (1965) R P C 381. 62. (1977) R P C 255. 63. (1891) R P C 137. 64. (1886) 3 R P C 32g. 65.(1872) L. R. 7 Ch 611. 66. (1907) 24 R P C 697 at p, 716. 67. (1893) 10 R P C 217 at p. 232. 68. Romeo and Juliet 11, 2.