2002 PLP 37 (CLD)

18‑10‑1989 Societe Generale written in square divided in two equal rectangles coloured gray and black. (3) 104373 18‑10‑1989 Square design divided in two equal rectangles coloured red and black. Show‑cause notice was issued by the respondent with reference to application mentioned at Serial No.2 above, as it was considered objectionable under section 6(1)(a) & (e) of the Trade Marks Act, and secondly that the goods were not precise. Through reply objections were refuted and it was clarified that goods are limited to Stationary, Calendar, Printed Publication, Debit and Credit Cards. The appellants were also heard and the orders impugned were passed operative part of the impugned reads as follows:‑‑ I, therefore, refuse the registration of trade mark applied for under section 6(1)(a) and (3) and 14(1) of the Act because the words SOCIETE GENERALE is the name of applicant firm which has not been used at all in Pakistan nor shown in a special or particular manner and according to my discretion the net impression of the mark is not acceptable. Mr. gazi Faiz Issa learned counsel for the appellant contended that the grounds of rejection are neither speaking nor reasoned it was further contended that the Registrar has misapplied the law inasmuch as the ground on the basis of which the registration has been refused is in fact the ground which is relevant consideration for registration. It is further urged that there is no consistency in the order of the learned Registrar as one of the marks mentioned at Serial No.3 in the preceding para. has already been registered, which is the square divided into two black and red rectangles it was further contended that the presumption of the learned Registrar that said trade mark is not being used by the appellant is erroneous. It was contended that the appellants are using said mark in Pakistan since, 1991 and has drawn my attention to the accounts for the period ended 31st December, 1991 which contains the same logo of which registration was sought. According to him proposed user can be subject‑matter of the registration, lastly it was urged that refusal merely at the whiness and fancy on the part of Registrar is not warranted, the discretion vested in a public functionary is to be exercised on the basis of sound principle in accordance with law, in support of his contentions he relied upon Abdul Aziz v. Seven‑up. Co., Karachi and another PLD 1978 Kar. 10; Messrs Colgate Palmolive (Pakistan) Ltd. v. Deputy Registrar of Trade Marks PLD 1992 Kar. 115, 1987 CLC 1286; Messrs Glaxo Laboratories Ltd. v. The Registrar of Trade Marks, Government of Pakistan PLD 1985 Kar. 630; Hyundai Motor Co. v. Deputy Registrar, Trade Marks 1987 MLD 2847; The Assistant Registrar of Trade Marks, Karachi v. Messrs Lakson Tobacco Company Limited 1992 SCMR 2323: Parke, Davis & Company v. The Deputy Registrar of Trade Marks, Karachi 1984 CLC 2623; National Detergents Limited v. Assistant Registrar of Trade Marks‑II 1989 MLD 1137. The respondent chose not appear though served on 28‑6‑2001 for hearing fixed on 6‑8‑2001. Parawise comments available on record were perused by me in the interest of justice. The respondent in support of impugned order cited decision from Chancery Division Re: British Milk Product Company Ltd. (Reported of Patent Design Trade Mark case Vo1.32) (1915) 32 RPC 453 where registration was declined by the Registrar in case where the company had applied for the registration of its name in ordinary hand or script, it was observed that the name of the company was not represented in special or particular manner the appeal was dismissed. In another case reported as Re: Price's Patent Candle Company (1884) g'7 Ch. Division 681, in this case the mark was refused on the ground that a mark applied for resembles nearly with a mark that already registered and it was found to be calculated to deceive, and also it was not a distinctive label within the terms of Patents Act, 1883, such rejection was upheld. In the case of Standard Camers Ltd., 59 RPC 125 the application for registration of name Robin Hood incorporating illustrative deceive of bow and arrow was refused by the Registrar. but in appeal it was held that the mark was registrable as the name represented in a particular manner. In case of Fanfold, Ltd. 45 RPC 199 application for the registration of Trade Mark in respect of paper forms, files and stationary, a mark consisting the word Fanfold Ltd., and the device of scroll was refused on the ground that such devise word was well known one which any printer might use nothing distinctive about words or device were found both had reference to the character and quality of the goods in connection with which it was sought to register such decision of the Registrar was upheld in the appeal and the appeal is also;, reported in 45 RPC

325. I have heard the arguments and perused the record and parawise comments. The orders impugned has already been reproduced in the narrative it appears that registration was declined under section 6(1)(a)(e) and section 14 of the Trade Marks Act, on the ground inter alia: (i) That it contains the name of the appellant i.e. "Societe Generale". (ii) That it has not been used at all in Pakistan. (iii) it is not shown in a special or particular manner. (iv) and lastly but not the least according to the discretion of the Registrar the impression of the mark is not acceptable. Under section 6(1) of the Act a mark is to be registered if it contains at least one of the essential as specified therein, section 6(1) is reproduced for ready reference: "

6. Distinctiveness requisite for registration. ‑‑‑(I) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely:‑‑ (a) The name of the company, individual, or firm, represented in a special or particular manner; (b) The signature of the applicant for registration or some predecessor in his business; (c) One or more invented words; (d) One or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification, a geographical name or surname or the name of a sect, caste or tribe in Pakistan; (e) Any other distinctive mark, provided that a name, signature, or any word, other than such as fall within the descriptions in the above clauses, shall not be registrable except upon evidence of its distinctiveness. As can be seen that name of the company represented in a special or particular manner is one of the relevant consideration or qualification and not the disqualification for seeking registration under section 6(1)(a) of the Trade Marks Act, 1.940. In the instant case as stated above the appellants have adopted the square shape device divided into two rectangles of gray and black colour with intervening white space in between. The word mark as defined under section 2(1)(0 of the Trade Marks Act includes "a device, print, heading label, name, signature, word letter, numeral or any composition thereof". The definition as can be seen is merely illustrative A and not exhaustive, it does not limit the composition of various variables which a person may employ to make his mark distinct and peculiar. The logo as adopted by the appellant is composite and compound mark, with particular get‑up and colour scheme, it is combination of company name placed in a particular manner in a square comprised of gray and black rectangles separated by white narrow space, adoption of such logo by all the standards falls within the definition of mark as provided for under 'section 2(1)(0 of the trade marks Act. As has been noted above, the trade mark applied for fulfils the requirement of subsection (a) to section 6(1) of the Trade Marks Act, 1940. It is indeed surprising to note that almost similar square mark/logo with a different colour scheme i.e. black and red without company name has already been registered by the respondent and the registration of mark/logo in question has been declined which bears in addition the name of the appellants on the pretext that it is purportedly hit by subsection (e) of section 6(1) of the Trade Marks Act, suffice to say that once 'mark' or logo qualifies any criteria laid down under sub‑clauses (1)(a) to (e) to section 6(1) of the Trade Marks Act, it must normally be registered. Other consideration that prevailed upon Registrar for declining registration was that name of the appellant has not been used at all in Pakistan. It will be advantageous to reproduce section 14(1) of the Trade Marks Act, which reads as follows:‑‑

14. Application for registration. ‑‑‑(I) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner, and subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit, (emphases added). From the bare perusal of the above section it is evident that any person claiming to be proprietor of a trade mark, used or proposed to be used by him is entitled to apply for the registration of the same. It is not merely that mark must be in use anterior to making of application but any proposed user thereof gives a right to the intending user to apply for the registration of a particular mark proposed to be adopted by him, provided it is otherwise qualified to be registered under the Act itself (see Abdul Aziz v. Seven‑up Co. PLD 1978 Kar. 10). For arguments sake even if it is presumed that the appellant is not carrying on business under the name which is part of the mark applied for, then mere application shows that they propose to use the mark. Registrar has not applied his mind to the above provision properly, rendering such reasoning untenable last but not the least reason for declining registration appears to be that since discretion vests in him to register or not to register a mark, which discretion has been exercised against the appellant. In the case of Abdul Aziz 1992 SCMR 2323 (supra) at page 2325 it was observed by apex Court that the discretion vested in the Registrar is to be exercised on sound principle in accordance with law and not arbitrarily, and in the case of Parke, Davis & Company v. The Deputy Registrar of Trade Marks, 1984 CLC 2623 at page 2625 regarding use of discretion after reviewing case‑laws it was observed that discretion is left in the Registrar to receive and reject the application but the discretion must be exercised upon judicial principles and affected neither by caprice nor over caution. In the instant case it is noted that learned Registrar; has declined the registration just because the discretion vests in him. Merely because a discretion vests in an authority does not ipso facto mean that such discretion is D to be exercised arbitrarily, at the whims and fancy or just because it vests in the authority. The discretion vested in the Registrar under subsection (1) of section 14 of the Trade Marks Act, is not arbitrary or fanciful, but a judicial one. Discretion it is to be and, must be exercised. fairly, equitably, with vigilant circumspection, care and caution, based on cogent, sound and supportive reasons in accordance with set principles of law, mere bald statement that a particular order has been passed because a discretion vests in the authority is nothing but erroneous exercise of discretion liable to be corrected and reviewed whenever it comes under judicial scrutiny. It is to be observed none of the cases referred to, by the learned Registrar in his parawise comments are attracted in the instant case and are distinguishable. As has been noted above under section 14 of the Trade Marks Act any person claiming to be proprietor of a mark used or , proposed to be used by him, may apply for registration what is required under section 6(1)(a) of the Act is that it may contain name of the company, individual or a firm F represented in a special particular manner. As discussed above the definition of the word "mark" as defined under section 2(1)(0 of the Act, is applicable to the logo/mark plied by the appellant being combination of the name of he appellant‑company inscribed in a square comprised of lack and gray colour rectangles separated by a white pace in the form of line in a particular manner and fashion such being a distinctive and composite devise qualifying the criteria laid down under section 6(1)(a) and so also qualifying criteria under section 14(1) of the Trade Marks Act. The discretion declining registration of logo, exercised by the learned Registrar was against the set principles of law applicable thereto, accordingly impugned order is set aside, the appeal is allowed. The Registrar is directed to process the Application No: 104372 filed by the appellant in accordance with the law. The appeal stands disposed of. Q.M.H./M.A.K./S‑134/K Appeal allowed.