1989 PLP 3786 (MLD)

"Lastly, even if these difficulties do not stand in the Applicant's way, this case is not one in which in the exercise of my discretion I should direct registration of these lables, nor as at present advised even of the word `Victor' under Section

21. While I do not in any way suggest that their extensive use of their `Victor' mark has been other than honest, the user in modern and the greater part of it certainly has taken place with full knowledge of the Applicants of this old `Victory' mark on Rossell & Co., the existence of which in 1910 they accepted as a complete impediment to the registration as a Trade Mark of their word `Victor'. In Alex Pirie & Sons Ltd. (49 RPC 195) an application was made for the registration of a trade mark in Part B of the Register writing paper included in Class

39. The mark consisted of the words "Abermill Bond Made in Gt. Britain". The application was opposed by the owners of a registered Trade mark applicable to writing paper and consisting of the word "Hammermill". The opponents had used this Mark in that country since 1920. The applicant had used the mark sought to be registered for about six years prior to the date of the application for the registration and their trade in the country under their mark was much greater than that of the opponents under their mark. The applicant's explanation of their travelers who derived it by contracting the words "Aberdeen Mill" by which name the applicant's mill at Aberdeen was known. Mr. Waterman admitted that he had heard previously of the Opponent's "Hammermill" mark, but he declared that their word was not present to his mind when he invented the word "Abermill". The Registrar expressed his conclusion on this part of the case as follows:-- "On the whole, I cannot find that the adoption and user by the applicants of the mark now put forward for registration has been lacking m good faith that, if they are otherwise qualified for registration under Section 21, I ought to refuse their application." He then considered the other relevant circumstances and decided in favour of unqualified registration. The opponents appealed and the matter came up before Clauson, J. He after stating that in estimating the hardship of either side the Tribunal ought to take into account the circumstances of the concurrent user as well as honesty continued: "I should be sorry to braend as dishonest a trader who adopts a trade mark which he honestly thinks to be sufficient distinctive as compared with a competing mark but which the Registrar or the Court, on mature consideration, decides to have such a near resemblance to the competing mark as to be calculated to deceive; but still, in considering whether to exercise in his favour the discretion conferred by Section 21, I should feel bound to give due weight to the circumstance that his mark must be taken to have been all along insufficiently distinctive though he erroneously thought otherwise. The man who in fact was ignorant of the existence of the competing mark is, as it seems to me, in a more favourable position as regards satisfying the tribunal of hardship than the man who knew of the competing mark and knew of, though he underestimated, the danger of the Court holding his mark to be calculated to deceive. Above all, I should deem it my duty so to weigh the competing factors as to avoid giving any colour to the idea that a trader, who knows of a competing trade mark and knows that he can get his trade mark registered only if he can show within Section 19 that it is not calculated to deceive, can put himself in a more advantageous position by taking the risk of building up commercial claims on his doubtful mark and, after due time, coming to the Court to claim indulgence under Section 21." The decision of the Registrar was reversed and the application was refused. From this order applicants appealed to the Court of Appeal. The Master of the Rolls, upon a consideration of all the relevant factors expressed himself in favour of allowing the appeal and restoring the order of the Registrar. In this conclusion Lawrence and Romer L.JJ. concurred. From the decision of the Court of Appeal, the opponent appealed to the House of Lords who dismissed the appeal (50 RPC 147). Lord Tomlin, who delivered the leading opinion after noting that the user by the applicants and its honesty were not in question, and that he could not doubt that Section 21 applied said: "My Lords, it has never been suggested throughout this case that the conduct of the Respondents has in the slightest respect been open to criticism, and I should be sorry to place upon this Statute a construction which would brand as statutory dishonesty conduct justified in the eyes of honourable men. There is in fact no ground for doing so. Knowledge of the registration of the opponent's mark may be an important factor where the honesty of the user of the mark sought to be registered is impugned, but when once the honesty of the user has been established the fact of knowledge loses much of its significance, though it may be a matter not to be wholly overlooked in balancing the considerations for and against registration." He further added: "I do not think that the Respondents, though aware of the Appellants' mark, had it in mind at all when they adopted their own mark." The appeal was dismissed and the judgment of the Court of Appeal was affirmed. In the present case, the first respondent filed counter- statement wherein they pleaded they are renowned manufacturers and merchants of soaps from a very long time in Pakistan. It is further pleaded that in year 1965 after making inquiries from the market that no mark similar to Trade Mark word "LIGHT" was in use in the markets in Pakistan, they adopted the Trade Mark word "LIGHT" in Urdu in respect of washing soaps and since then the said mark has been continuously used by them in Pakistan in respect of washing soaps manufactured and sold by their company. The adoption and original user of the mark "LIGHT" was not surreptitious. I do not attribute to the first respondent the deliberate intention of appellant's then existing trade but for developing their trade. The use of the mark "LIGHT" was bona fide. The appellant and the first respondent operated mainly in different fields. In Lallubhai-Amichand v. The Punjab Aluminium Factory, Gujranwala (PLD 1960 (W.P.) Karachi 545) Punjab Aluminium Factory applied for registration of device of 'Cycle' as their Trade Mark. They also applied under Section 37 of the Trade Marks Act, 1940 for taking off Lallubhai Amichand's device from the register of Trade Marks. The Registrar dismissed the application for rectification observing that use of the device in question by the Punjab Aluminium Factory was honest and concurrent user of the device. The appeal to the High Court against this observation failed. The application of Punjab Aluminium Factory for registration of the device as their own mark also failed by dismissal by the Registrar. Mr.S.A.Haq, J., (as he then was) held: "Now subsection (2) of section 10 of the Trade Marks Act clearly confers discretion on the Registrar to allow registration by more than one proprietor of trade marks which are identical or nearly resemble each other in case of honest concurrent user or `of other special circumstances' which, in the opinion of the Registrar, makes it proper so to do. Thus, it is not only in the case of established honest and concurrent user that subsequent registration of an identical trade mark is permitted but also in cases where other special circumstances may exist. No authoritative interpretation of the phrase `other special circumstances' seems to be available, nor does it appear desirable or even practicable to attempt any precise definition or exhaustive enumeration of circumstances and factors which may appropriately fall within its ambit. But the phrase is clearly wide enough to include diverse considerations relevant to the balanced development of industry, the relative degree of the convenience or inconvenience to the contesting parties in the event of registration or its refusal, and finally the interest of the consumer or the general public." He further held:-- "In the present case the holders of the registered Trade Mark have migrated to India and their goods are no longer available for sale or consumption in this country and in the vacuum so created a national firm of manufacturers has built up a sizable business by using the trade mark in question over the last eleven years. These arc circumstances which, in my view, should be regarded as `special circumstances' within the meaning of section 10(2) of the Trade Marks Act." It was further observed as under:-- "Refusal of registration would not have benefited the consumer nor even the previous registered holders of the trade mark, but would certainly have interfered with the growth of a useful local industry. I consider therefore that in the peculiar circumstances of the present case the registration has been rightly allowed and no case is made Cut for interference with the discretion exercised by the Registrar of Trade Marks." In Cooper's Incorporated (now named Jockey International Inc.) v. Pakistan General Stores and another (1981 SCMR 1039), the appellant was an American Company which used to manufacture and sell mens' and boys' underwears, shirts, under the Trade mark "Jockey". The appellant used to export its products under this Trade Mark to Pakistan in 1950 and 1951. Imports of underwears, shirts etc. were banned in 1951 and the appellant did not sell its products in Pakistan after 1951. The Registrar allowed appellant's application for the registration of its Trade Mark "Jockey" in Class

25. But despite registration, the respondent commenced selling men's and boys' underwears, shirts etc. under the trade mark "Jockey" and applied to the Registrar of Trade Marks for the registration of its Trade Mark "Jockey". The appellant contested the application and the application was dismissed. The respondent not only challenged the dismissal of the application but withdrew its own application. The respondent filed second application. The Deputy Registrar not only refused to allow the respondent's application for the registration of the Mark "Jockey" but also gave a categorical finding in his order that the respondent had dishonestly tried to copy the appellant's registered Trade Mark. The respondent appealed against this decision which was allowed by the High Court of Sind and Baluchistan. The appellant filed appeal before the Supreme Court. The appeal was allowed and the order dated 15-1-1967 of the Deputy Registrar was restored. In V.S.Subbiah Nadar, Administrator of Estate of the T.P.Sokkalal Ram Said v. E.P.Kumaraval Nadar and others (AIR 1946 P.C. 109), it was held that evidence of long concurrent user to the knowledge of the plaintiff in such circumstances that the plaintiff must be deemed to have acquired in such user and waived any right to object to it might suffice. In Pakistan Soap Factory v. Chittagong Soap Factory and another (PLD 1970 S.C. 460) the facts were that an application for registration of Trade Mark "1947" on Soap manufactured by the appellant and sold in market for a number of years, was opposed by another manufacturer of Soap (respondent) on the ground that he was proprietor of registered trade mark in respect of similarly shaped washing soap bearing numericals "1937". Registration was refused on the ground that similarity between the two marks both visual and phonetical was very close and likely to create confusion in the minds of purchasers. It was held by the Hon'ble Supreme Court that the Deputy Registrar and the High Court erred in refusing registration of appellant's trade mark. It was held: "We are also unable to agree with the Deputy Registrar and the learned Judges in their view that the numerals `1937' and `1947' in the two Trade Marks are phonetically identical." It was further held: "Again on the question of honest and concurrent use of their trade mark by the appellant, it seems to us that the evidence has not been duly appreciated by the learned Deputy Registrar whose view of that evidence has been accepted by the High Court without its proper analysis and appreciation. 1t will be recalled that the predecessors-in-title of the appellant had moved for the registration of their trade mark as early as the 27th February, 1949, a few months before the respondent lad moved for the registration of their trade mark. It can be reasonably presumed that the appellant's trade mark in question was in use since 1949, if not earlier. In any case, it was put into use by the appellant on their purchase of the concern in March, 1960, after which they renewed their application for registration in August 1960. The concurrent use of this trade mark by the appellant without any challenge from the opposite side for a long period of time is thus clear." In Aktiebolaget Jonkoping Valcan, Sweden v. Registrar of Trade Marks, Karachi and another (PLD 1975 Karachi 478), the appellant was. a Swedish Company and carried on business as manufacturer and exporter of safety matches which it sold under various trade marks. One of its marks in class 34 was registered. The respondent No.2 who carried business in Khulna applied for registration of its trade mark in Class 34 in respect of safety matches. The Registrar dismissed applicant's opposition and directed registration of respondent No.2's application. The appellant appealed against the decision of the Registrar. The appeal was dismissed. Mr. I. Mahmud, J. (as he then was) held:-- "The `other special circumstances' relied on in Lullubbai-Amichand's case were identical with those in the present case viz., that the goods of the foreign registered proprietor were not available for sale or consumption in Pakistan and in the vacuum so created, a national firm of manufacturers had built up a sizable business by using the trade mark in question over the last several years without any objection. These circumstances, in the view of the Court, were regarded as `special circumstances' within the meaning of section 10(2) of the Act." It was further held: "But this fact is not sufficient to outweigh the right of the respondent; which it has already built up in its trade mark on account of the special circumstances which have created such a right. The refusal of registration of the trade mark to the respondent now would, therefore, create a greater hardship to the respondent and inconvenience to the public." The Deputy Registrar found that the Mark "LIGHT" is visually and phonetically different. In support of this finding, reliance is placed on a case reported as PLD 1973 S C

104. The conclusion of the Deputy Registrar that the two marks are visually and phonetically different, is not wrong. The Deputy Registrar's view concerning the mark being visually and phonetically different is accepted as correct. In the present case the first respondent categorically stated in the counter-statement that after making inquiries from the market that no mark similar to Trade Mark "LIGHT" was in use in the markets of Pakistan, it adopted the word "LIGHT" in Urdu in respect of washing soaps. The definite finding of the Deputy Registrar is that the Mark "LIGHT" is in use since 1965. He also took the view that the documentary evidence of the first respondent having used the mark since 1965, has not satisfactorily been rebutted by the appellant. In the instant case, on appraisement of the documentary evidence produced by both the sides, the Deputy Registrar came to the conclusion that the first respondent proved concurrent and honest use of its Mark since 1965. He has given cogent reasons for this finding. The learned counsel for the appellant is unable to find out any infirmity. In the result, the appeal fails and is hereby dismissed but in the peculiar circumstances of the case, the parties are left to bear their own costs. H.B.T./U-55/L\ Appeal dismissed.