1989 PLP 1137 (MLD)

In order to appreciate the contentions of the learned counsel for the appellants, it is advantageous to reproduce section 6(1) (d) of the Act which reads as under:‑‑ "6 (1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely:‑‑ (a) ................ (b) ............... (c) ............... (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) ............... The Assistant Registrar observed that "the word `Delight' does point to the goods as it means something that gives great pleasure. Giving the meaning of the word `delight' I can optimistically say that it would not be fair to give the applicants exclusive rights over it. In holding so, I am sure I have not violated the principle set by Up case and Sun case cited by the applicants' agent and the Perfection case as reported in (1909) 26 R.P.C. 837". Mr. Salim Ghulam Hussain has submitted that the mark `ANGLE DELIGHT' is a word coined by the appellants and it has no obvious meaning as wrongly observed by the Assistant Registrar of Trade Marks. The learned counsel has further submitted that the mark was to be taken as one word and not to be dissected as has wrongly been done by the Assistant Registrar. The contention of the learned counsel is that it has no reference whatsoever to character and quality of the goods or products to which the mark is intended to apply i.e. biscuits, chocolates, sweets. In the case of M/s. Bubble‑Up Company Inc. v. M/s. 7‑Up U.S.A. (P L D 1975 Kar. 582), the word `Up' in `Bubble Up' was objected to for the reasons that it had reference to the character and quality of goods. Mr. Tufail Ali A. Rehman dispelled the objection with the following observations:‑‑ "It is true, of course, that the moment the word was thought of in combination with some other word such as "Bubble" the image of a liquid intended for drinking and contained in a transparent vessel through which the bubbles could be seen coming up to the surface was conjured up. But this was not the result of the word by itself but only in combination with some such suitable word as I have mentioned and such an association of ideas is bound up also with large number of other prepositions and I did not think it correct to say that on that account the word by itself conveyed any such meaning as is claimed." In the instant case, the word `ANGLE DELIGHT' would not have any reference to the quality or character of goods, but it will have reference to the person who consumes the products or goods. To my mind `DELIGHT' would not give the idea to a reasonable person about the quality of the products and hardly any one would be satisfied with a biscuit, sweet which is described as `DELIGHT'. The `ANGLE DELIGHT' appears to be a newly‑coined word and it has no direct reference to the quality or character of biscuits, sweets and chocolates by the use of `DELIGHT' when it is considered in the light of its dictionary meaning. Clause (d) of section 6(1) of the Act does not prevent the registration of a word which has reference to the consumer and not to the goods consumed. The learned Assistant Registrar has erred in holding that the word `ANGLE DELIGHT' resembles phonetically to word `DELIGHT' which means great pleasure by consumption. The words `great pleasure' relate to the consumer and not to the article consumed and as such the word `DELIGHT' shall not fall within the mischief of clause (d) of Section 6(1) of the Act. The word `ANGLE DELIGHT' being a newly coined word and not being descriptive of the goods in question, the application should not have been rejected under section 6(1)(d) of the Act. The other aspect of this case relates to the observations of the Assistant Registrar that the application was liable to be refused on the ground that the mark was objectionable under sections 10(1) and 8(a) of the Act. The mark enumerated below was cited as conflicting mark. ANGLO Application No.14304. The reasoning of the Assistant Registrar is that "tile words Anglo and Angle, though different dictionary words, have first four letters in common and emphatic syllable is also first viz. `ANG'. Therefore visually as well as phonetically they are very close to each other and the visual difference between last letters or phonetic difference of second syllable, which being last syllable is to be slurred during speech, does not help evolve a difference between the two words. The word Angle is likely to be mistaken by word Anglo in view of the principle of `Imperfect recollection'. The registration of the mark was refused on the ground that the registration is in contravention of sections 8(a) and 10(1) of the Act. Section 8(a) prohibits the registration of a mark, the use of which would be likely to deceive or cause confusion. Section 10(1) prohibits the registration of a trade mark in respect of goods or description of goods which is identical with a trade mark which is either already on the register or already registered in the name of different proprietor in respect of the same goods or description of goods. Thus section 10(1) prohibits the registration of a mark which is identical with or similar. Section 8 (a) prohibits the use of mark which is likely to deceive or to cause confusion. In considering the words `likely to deceive or cause confusion' Lord Denning in Parker‑Knoll Limited v. Knoll International Limited 1962 R.P.C. 265 at 273 observed as follows:‑‑ " ..first, the offending mark must "so nearly resemble" the registered mark as to be "likely" to deceive or cause confusion. It is not necessary that it should be intended to deceive or intended to cause confusion. You do not have to look into the mind of the user to see what he intended. It is its probable effect on ordinary people which you have to consider. No doubt if you find that he did intend to deceive or cause confusion, you will give him credit for success in his intentions. You will not hesitate to hold that his use of it is likely to deceive or cause confusion and was completely honest, then you will look carefully to see whether it is likely to deceive or cause confusion before you find him guilty of infringement." Secondly, "to deceive" is one thing, to "cause confusion" is another. The difference in this; when you deceive a man, you tell him a lie. You make false representation to him thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so." The Assistant Registrar observed that the first four letters are common and the emphatic syllabic is also the first viz. `Ang'. I am of the view that the prefix on both the words is `Ang' but this prefix of only a single letter cannot be enough to determine similarity of both these two words and suffixes of both these words are different. The conclusion of the Assistant Registrar appears to be wrong. No doubt the prefixes of the two marks are the same but phonetically the two marks `ANGLE DELIGHT' and `ANGLO' do not &Wear to be similar. The marks are to be judged as a whole and the totality of the impression made on the purchasers of the goods in question is the determining factor. The two marks i.e. `ANGLE DELIGHT' and `ANGLO‑XL' appear to phonetically dissimilar and in B my view the purchasers of the products of mark `ANGLO‑XL' are not likely to be deceived or confused by the products of the appellants bearing the mark `ANGLE DELIGHT' so as to consider that the products with mark `ANGLO XL' are in fact the products of the appellants. For the aforesaid reasons I am of the opinion that the trade mark `ANGLE DELIGHT' is a distinctive mark not likely to deceive or cause confusion and that the reasons given in the impugned decision cannot be supported by law. The appeal is allowed and the Registrar is directed to proceed with appellants' application No.87351 in clause‑30 in accordance with law. In the circumstances of the case the appellants shall bear their own costs. H.B.T./N‑178/K Appeal allowed.