P L D 1973 Karachi 567 (PLP)

14. One such test that was canvass, d at the Bar was to see whether the two different goods could be bought or would ordinarily be bought at the same shop. I am far from denying that this test would be of some value but I really cannot attach much weight to it and of course, as I have already said, no one test can tae conclusive. In the modern world land I am of course restricting myself to conditions in oar country for, as emphasized by Waheeduddin Ahmad, J. in the case which T have already cited it is registration in Pakistan which is in question) there are such places as super markets where almost any kind of goods that are available in the country at all are displayed for sale. Again by reason of short supply of imported goods, several shops formerly known to specialize in a particular kind of goods, have now found it convenient to add to their store almost anything else. If one goes into the interior of the country there are places which might have only one or two shops and these would be expected to stock almost anything that an ordinary resident of that place would expect to buy in his own place without venturing to even a nearby town. It is difficult, therefore, to say that the fact that the two different goods are available at the same shop is a real test. The maximum extent to which I could go towards adoption of this test is to ask the question: if the one goods are available at a particular shop is it likely that the same shop would be stocking the other ?

15. Upon this particular point, which was indeed the main point and upon which the Registrar mainly based his order refusing the appellant's application, I regret to say that his finding is not of any great help. All that he says on the question is the following two paragraphs :‑‑ "Since the Trade Mark 7 Up in application No. 47,327 is identical with‑ registered Mark 7 Up 9n the registered applica tion No. 46,175 of the Opponents and both these marks are used on the goods of the description, therefore, the above section bars registration of the applicants' mark. Besides the Opponents have yet another registered mark viz. Seven Up which also is in the same class and in respect of the same goods as the Applicants propounded mark 7‑Up in application No. 47327 and the claim of the Applicants for registration of their marks also come under the mischief of section 10(1) on account of the above registered mark of the Opponents also." It is clear from these paragraphs that the Registrar was treating the application of the respondent No. 2 made under class 30 for the Trade Marks 7 Up and Seven Up and it is on that basis that he is rejecting the application of the appellant Now, quite apart from the fact that Mr. Vellani made it clear that he was not relying merely upon these registrations, but also upon the earlier registrations in Class 32 and that, indeed, before me he argued mainly upon the earlier registrations the paragraphs which I have reproduced give no reasoning at all unless the reason is to be inferred from the use that he has made in the second of these paragraphs of the words "which also is in the same class". If that be the reason then clearly he is equating goods registered in the same class according to the rules with "goods of the same description" referred to section 10 and in effect interpreting section 10 by reference to the Fourth Schedule and that, as I have already held, is not permissible.

16. Before me Mr. Vallani, though indeed he did not give up the argument that the registration in Class 30 was a bar to the appellant's application, relied in the main upon his registration in Class 32, and almost the entirety of his argu ment was taken up in an effort to persuade me that the soft drink that his clients are now manufacturing and marketing are of the same description as the candies and hard boiled sweets in respect of which the appellants have made the application to the Registrar of Trade Marks. It is not clear from the order of the Registrar but it does seem to be implied that before him reliance was placed by respondent No. 2 only upon the registration in Class

30. Even if this be so, however, it is in law open to a successful respondent to attempt to support the judgment appealed against upon a point different from that which was the basis of the impugned order.

17. Turning again to the tests to be applied to decide whether goods are or are not of the same description Kerly on Trade Marks states at page 154 that the test would seem to be supplied by the question "are the two sets of goods so commonly dealt in by the same trader that his customers, knowing his mark in connection with one set and seeing it upon the other, would be likely to suppose that it was used upon them also to indicate that they were his goods ?" He does go on to say that the matter should be looked at from a business and commercial point of view. I am in entire agreement with these propositions for which indeed the learned author quotes high authority. Relying upon a case decided by Romer, J., (1946) 63 R P C 59 he classifies the various matters to be taken into account thus: (a) the nature and composition of the goods (b) the respective uses of the articles, (c) the trade channels though which the commodities respectively are bought and sold.

18. I accept these ‑tests as they have been accepted in a large number of cases but the difficulty still remains of applying them in a given case and there, as has so often been said each case must depend upon its own facts. In turning now, as I do, to a consideration of some of the cases I am not attempting to look for a case in which the identical goods were in question and, indeed, learned counsel on both sides assured me that, despite their researches, they could find none such, but for guidance on the approach that has been made by Judges before to this question.

19. I might note, however, in passing, that the manner in which Kerly formulates the test makes it plain that what is sought to be avoided is the purchaser believing that the goods are made by a certain manufacturer even though that manufacturer has not, so far to the knowledge of the customer, manufactured that kind of goods and not any question of confusion of the goods which he is purchasing with goods known by him to be manufactured by a particular manufacturer and having been previously bought by him. As I have emphasized before, a Trade Mark indicates merely the connection of the goods in the course of trade with a person who has the right to use the mark and not an indication that they are the goods in fact manu factured by that person.

20. The first of the cases to which I was referred is the one decided by the Court of Appeal in England and reported in 1959 R. P. C. 120 which might, for the sake of convenience, be referred to as the Hostess case. The respondent in that case had a Trade Mark "Hostess" In respect of "substances used as food or as ingredients in food but not including cordials (non‑alcoholic) and not including any goods of a like kind to cordials anon‑alcoholic)". The appellant had applied that the mark be cancelled for "ice cream and goods of the sane descrip tion" though later in Court they limited their request to ice cream only. The goods of the appellants themselves were jellies or rather tablets from which jellies could be made. Now in this particular case it appears from the judgment that neither the Assistant Comptroller nor the learned Judge of the High Court before whom the matter went on appeal had reached any definite finding that Ice cream and table jellies were goods of the same description but they were apparently of that opinion and the Court of appeal was therefore not prepared to differ from them. Even so, however, the tribunal had a discretion in the matter and since neither the tribunal nor the learned Judge of the High Court had exercised their discretion in the matter the Court of Appeal itself did exercise its own discretion and, allowing the appeal, made an order rectifying the register by excluding ice cream from the goods for which the respondents were registered. The vital question in the case, therefore, was whether ice creams and jellies could be described as 'teeing goods of the same description and there are passages in the judgment which, In my respectful opinion, afford some guidance in the search for a principle end it is these passages that I mean to quote. At page 125 Lord Evershed, Master of the Rolls, observed :‑ "There is one last matter of fact to which I should refer in regard to the goods themselves with which we are mostly concerned, namely, ice creams and jellies. In speaking of jellies sold by the respondents, what is in truth meant are concentrated cubes or tablets from which, after dissolution in water and setting, the jellies served on the table are male. Jelly tablets such as those sold by the respondents under name "Hostess" are commonly sold in grocers' shops. Ice creams need, I apprehended, no further description. As regards the places where they are commonly sold and the method of their preservation for the table, they, clearly do not closely correspond with jellies; but it does appear that ice creams may be made from ice cream powders, and that such powders at any rate would commonly be offered at the same counters in grocers' shops as jelly tablets; and the same is shown to be to some extent true even of ice creams in their ordinary form. Are. then, ice creams and jellies ''goods of the same description", within the meaning of the subsection 7" Now here of course the learned Master of the Rolls is not yet recording any finding of law; indeed, he expressly, says, he is still reciting the facts of the case. Nevertheless there is an implication in the paragraph that the fact that the goods in question would be offered at the same counters in grocers' shops General would be a relevant consideration.

21. At page 128 there is passage in his judgment which, while not attempting to lay down one or more specific tests that can be regarded as conclusive in any given case, does indicate the proper approach. This passage is :‑ "To all these cases the oft‑quoted proposition that each was decided on its own particular facts is to my mind, peculiarly applicable. In all cases of this kind regard will be had to such matters as the nature and composition of the to their respective uses and functions, and to the trade channels through which respectively they ore marketed or sold and in different cases as Mr. Levy observed one not always the same one of these characteristics may have greater significance or emphasis than the others. The mater falls to be judged, as Lindley, L. J., observed in the case already quoted, "in a business sense"; and this is to my mind made clear by considering the legislative background against which the problem has to he judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the good, and the restriction contemplated by section 26 is an incident of the general legislative purpose. The question whether goods are not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited, and particularly tic Dowell's case and the Australian Wine case, land some support to the view that the phrase "goods of the soma "description" ought not to be given too restrictive a construct not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other."

22. Incidently immediately after this passage, after having stated that the two things in question, namely, ice creams and jellies are riot in the same classes under the rules for registration of trade marks, the learned Master of the Rolls remarks that this admittedly irrelevant. This I think supports my view that any attempt to discover the meaning of the phrase "of the same description" from the classes enumerated in Schedule IV to the Act is unjustified.

23. Finally at page 130 his Lordship makes the following .observations:- "Further, the discretion in the proviso should, in my judgment, be exercised as a matter of common sense "in a business sense" (to cite again Lindley, L. J .'s, phrase) In the light of all the circumstances of the case, which will, of course, include the mature of the mark itself and the relevant business history of the applicants and the registered proprietor respectively. Again, however, regard must in my view be had to the legislative purpose of the Act, as I have earlier attempted to define it. In other words, the tribunal, bearing in mind all the circumstances of the case, will have to ask itself the question, whether the grant of the application would unfairly or unjustly restrict or invade the statutory monopoly acquired for its trade by the registered proprietor?" This last passage I think in emphasizing one of the two main considerations which I have earlier mentioned, namely, the right of the proprietor of the trade mark in question.

24. Romer, L. J., in a concurring judgment observed at page 133:- "As to the first of these matters, both Mr. A1doLS and Mr. Levy were in agreement in suggesting that in order that two kinds of goods may be treated as being goods of the same description there must at least be some expression or known description which is applicable to each kind. The Assistant Comptroller thought that table jellies and ice creams are both comprised within the expression "dessert", by which I under stand him to mean the sweet course of a meal. It is true that; each of the two commodities do appear on the table as a sweet course, though probably embellished or accompanied by something else as well, but so might a Christmas pudding or suet roll, and it would be difficult to say that either of these delicacies could be regarded for that reason alone as being goods of the same description as ice cream. However, from a narrower aspect it is fair to say that both jellies and ices are commonly provided at such functions as children's parties. For the purposes of such parties they could both be fairly described as "confections", and if a would‑be hostess were unable to procure a sufficient quantity of one she might well make good the deficiency by ordering more of the other. In this regard the two kinds of goods might be considered ay alternatives to one another, a which seems to have appealed to Byrne, J., in re: Leiner's Apolication (1905) 20 R P C

253. But both that and other cases show that other matters have to be taken into consideration in inquiries of this nature, for example the nature of the two kinds of goods, their user and the channels of trade. As to this, "nature" means composition in a business rather than in a scientific sense; for example. two weather proof garments might, as Mr. Aldous conceded in argument, be rightly regarded as being of the same nature although one was made of real, whilst the other was made of synthetic, rubber. Up to a there is a similarity in the "nature" of table jellies and ice creams in that they both contain the common ingredients of sugar, water and materials for inducing colouring and flavour. However, I do not think that this aspect of the matter carries the respondents very far. As to the user of the two goods there is considerable identity, for, as I have already pointed out, both would normally appear among a fairly limited list ‑of comestibles at such affairs as children's parties and In a sense might be regarded as alternatives to each other. The trade channels of the two kinds of goods are not dissimilar, and it was conceded before the learned Judge "that both table jellies (in the form of packed ingredients for conversion by hot water and subsequent cooling and ice cream could find their way to the public through the medium of grocers' shops." As I understand the passage, the learned lord Justice is first emphasizing that there must be at least some expression or known description which is applicable to both the kinds of goods. Even accepting ‑a formulation of a narrower kind, by implication though not expressly, the learned lord Justice would appear to be inclined to regard the goods as being of the same description If one could be used as an alternative to the other so that a deficiency in one could be made up by supplying more of the other. He does not, however, regard this as by any means, a conclusive test for he expressly holds that "nature" of the goods would refer to their composition in a business rather than in a scientific sense and finally he has some regard to the fact that the trade channels through which the goods are bought and sold are not dissimilar.

25. But although so far no reference has been made to what might be called the public interest, the final paragraph in his judgment would clearly indicate that the possibility of the deception of the public is a factor which he had ail the time in mind for he states:‑ "In my opinion neither the respondents nor the public will suffer any hardship or disadvantage at all if the registration of the respondents' trade mark were to be rectified by excluding ice cream from the specification of goods in respect of which it is registered, whereas it would be an unwarranted inconveni ence to Lyons to refuse their application for rectification in that regard. I would accordingly allow the appeal."

26. Finally Ormerod, L. H., also concurring, observed that "it is necessary to consider all the circumstances and to decide whether as a matter of business and fair dealing it would be proper to take from the respondents some part of their monopoly".

27. The case of Ernest Marshall, reported in volume 64 R P C 147 was also quoted to me. Here the competition was between the word "Honomol" applied for as a trade mark in respect of "semi‑liquid food preparations of honey and malt" and the word "Honyol" which had been registered as a trade mark in respect of "substances used as food or as ingredients in food", at page 149 the learned Comptroller‑General observed:‑ "The use of the expression "goods of the same description" in a specification of goods, however, tends to make the scope of the specification obscure. And if a registration including the registration of a similar mark under section 12(1) of the Act, the question for the registration of a similar mark under section 12(1) of the Act, the question of the goods in respect of which it could be effectively quoted against the application would be more difficult still, since such a quotation can be properly made, not only where the goods of the registration and of the application are the same, but where they are goods of the same description. The enquiry might thus have to extend to the question what goods can be said to be goods of the same description as goods which are themselves described only as being of the same description as certain named goods in the present case, edible fat emulsions. The question of the specification of goods for which Crimony's mark should be left on the Register was discussed hearing, and it was suggested that, if I found it necessary to cut down Crimony's registration at all, it should be allowed to retain "Sweetmeats and preparations for use in the manufacture of bread and confectionery". It does not appear to me that Crimony are entitled to retain sweetmeats is in their specification of goods, and I think that in view of the considerations I have just set out, my proper course is to limit their specification to "Edible fat emulsions, gingerbreads and preparation for use in the manu facture of bread and confectionery."

28. This passage really does no more that state the question rather than to answer it. On page 150, however, Ire proceeds to say:‑ "In the light of the numerous decisions, it seems to me clear that Marshall's semi‑liquid food preparations of honey and malt are goods of the same description as Crimony's edible fat emulsions or some of them. Both substances contain or may contain honey and both are or may be used by bakers and confectioners in making bread and confectionery. They would thus both be purchased by and used by the same class of persons, and no doubt they are, or in the future might be, distributed through similar trading channels. In these circum. stances, Marshall's goods are included in the goods for which, as I say, Crimony are in strictness alone entitled to retain that registration, namely, gingerbreads and edible fat emulsions and goods of the same descriptions as edible fat emulsions. Equally they are included in the actual specification of goods to which I have decided to limit Crimony's registration namely, "Edible fat emulsions, gingerbreads, and preparations for use in th3 manufacture of bread and confectionery."

29. It seems to me that the decision has proceeded partly upon the nature of the goods and partly upon the criterion that they are purchased by w id used by the same class of persons and probably distributed through similar trading channels. Considera tions of the public interest, rather than monopoly rights. were I think the basis of this decision.

30. I turn next to a case In 7 R P C 311 where the decision was to refuse au application made for the purpose of registering a label for baking powder containing conspicuously the words "fruit‑salt baking powder" on the ground that the word "fruit salt" was already registered as a trade mark and had acquired considerable reputation. Incidently a feature in common between that case and the case which I am now considering is that in both cases of the two words which together constituted the trade mark were words known to the English language bat in combination had no particular meaning. Both the words "fruit" and "salt" are common words in the English language but the combined expression does not mean anything at all unless as is suggested in the judgment it might be an implication that the preparation has in some way been derived from fruit. In the present case the words "7" and "Up" are also, each of them, words of common use in the English language and neither can be said to be an invented word but in combination, they have no intelligible meaning and might therefore, in such combination, be described as an invented expression. The decision of the House of Lords was rendered by a majority consisting of Lords Watson, Herschell and Macnaghtan while the Lord Chancellor and Lord Morris, were of the contrary view. The following passage in the speech of Lord Watson, is I think relevant to my present purpose :‑ "These prohibitory clauses cast upon the applicant the duty of satisfying the Comptroller, or the Court, that the trade marl which he proposes to register does not come within their scope. In an inquiry like the present, he does not had the same position which he would have occupied if he had been defending himself against an action for infringement. There, the 'onus of showing that his trade mark was calculated to mislead, rests, not on him, but upon the party alleging infringement ; here, he is in petition, and must justify the registration of his trade mark by showing affirmatively that it is not calculated to deceive. It appears to me to be a necessary consequence that, in dubio, his application ought to be disallowed. I think the present case roust be dealt with under the provisions of the 73rd section. If the use of the words "Fruit Salt" in the trade mark, which the respondent asserts his right to register, would be calculated to deceive the public, such use is expressly forbidden by that clause. Whether it would or would not have a misleading effect is, according to my apprehension the only question arising for decision. I do not think it necessary to refer to the evidence in detail. It appears to me to establish conclusively that although the words "fruit" and "salt" are in common use wherever the English tongue is spoken, they have in combination no technical air scientific meaning, and, before the respondent entered the field, were never applied in popular language, to any known substance other than the article manufactured and sold by the appellant under the name of "Eno's Fruit‑Salt". That circum stance does not give the appellant a right of property in the words "Fruit‑Salt" or entitle him to use them, by themselves, in a registered trade mark; but it is, nevertheless, a material circumstance in considering whether the use which the respon dent proposes to make of them in his trade mark would be calculated to mislead. I have come to the conclusion that the proposed use of the term "Fruit‑Salt" by the respondent might, and in many Instances probably would, have the effect of deceiving the public. It to no doubt said that the respondent's trade mark is for a baking powder, to be used in the manufacture of bread, whereas the appellant's mark is for a powder to be used in producing an effervescing drink ; and that there can be no risk of any member of the public confounding the two things. To a certain extent the criticism is well‑founded. I do not suppose that persons intending to bake would invest in Dunn's Fruit‑Salt Baking Powder. But I do think that there would be a supposed connection between the two articles in the minds of many persons, who would naturally assume that the baking powder had been manufactured with the appellant's Fruit‑Salt, and purchase it in that belief; so that a batch of badly made baking powder might seriously injure the credit of the effervescing powder. Having regard to the uncandid statements made by the respondent with respect to his selection of the words. I cannot avoid the conclusion that he adopted then as they now stand in his trade mark, with the deliberate purpose of obtaining pecuniary advantage from the wide reputation of the appellant's manufacture, and the probability of purchasers connecting it with his own baking powder. I do not for a moment suggest that everybody would be misled. Skilled chemists and persons of intelligence who gave heed to the matter might incur no risk of error, but I cannot assume that these are the only classes who may be expected to purchase packets of baking powder and Eno's Fruit‑Salt."

31. It will have been noticed of course that the judgment is not upon the provision of the English Act corresponding to section 10 but rather to the one corresponding to our section 8.

32. Lord Herschel also decided the question upon the basis that the proposed trade mark was calculated to deceive. To the same effect was the speech of Lord Machaghten but I am tempted to reproduce from his speech a passage which brings out lucidly what I have earlier endeavoured to say in regard to what I have described as the public interest: "Unfortunately in the competition for business a trader not unfrequently endeavours to attract custom by representing that the goods which he offers for sale are different in origin, composition, or character from what they really are. The public are constantly tempted to buy one thing when they think they are buying another. It is riot, as has been observed, the province of the Court to protect speculations of this kind. Between rival traders the application of the principle is necessarily a matter of extreme difficulty. But as between the innocent public and a trader seeking registration of a proposed trade mark, there is, I think, no‑ room for hesitation or doubt. The statute allows any person to oppose an application for registration, whether he has or has not a personal interest in the result. It declares that it is not lawful to register as part of or in combination with, a trade mark, any words, the exclusive use of which would, by reason of their being calculated to deceive, be deemed disentitled to protection in a Court of Justice. It seems to me that in registering trade marks the principle to which the enactment so plainly refers ought to be applied without any qualification whatever, and that the Comptroller, to whom in the first instance is committed the "discretionary power", as it is termed, in the Act, of registering a trade mark, ought to reject words which involve a misleading, allusion or a suggestion of that which is not strictly true, as well as words which contain a gross and palpable falsehood."

33. Now it is true that two of the noble Lords, including the Lord Chancellor, came to a different conclusion but it is clear from their speeches that it was not the principle which they were doubting but its applications to the case before them. Although therefore the decision is by a majority, so far as the operative part of the judgment is concerned, inasmuch as ft lays down any principles of law It has I think the same weight as a unanimous judgment and the judgment is in any case of great authority as being that of the highest tribunal in England, namely, the House of Lords.

34. I am nest referred to the Player's Trade mark case, 1965 R P C 363 where the competition was between the Trade Mark "players" already registered in respect of manufactured Tobacco and an application to register the same to confectionery cigarettes; the following passage on page 365 is relevant. "The opponents' goods are tobacco cigarettes and the applicants' goods are imitation cigarettes made of confectionery. The uses of the goods are clearly different, the one being smoked and the other eaten. The nature of the goods are also In my opinion quite different in spite of the fact that their appearance is the same. They are undoubtedly sold through the same trade channels. In view of the fact that the nature and the use of the goods are so different I have come to the conclusion that tobacco cigarettes and confectionery cigarettes are not goods of the same description. In view of this conclusion the opponents' case under section 12(1) fails." It would be seen here that regard being had to the fact that the nature of the goods was wholly different, though similar in appearance, the test of their being sold through the same trade ,channels was not accepted.

35. The case reported in 15 R P C 105 which may be conveniently called the Kodak case, has an interesting set of facts. The Eastman Photographic Materials Company Ltd. and one associated Company had for a long time been manufacturing cameras under the name "Kodak" while the opposite party had obtained registration of the word "Kodak" as a trade mark in Class 22, In which the Eastman Company had no registered trade mark, for bicycles. The case arose by way of art action for infringement and for passing off and therefore the main question in the case one whether the continued use of the trade mark by the company which was manufacturing bicycles would be calculated to deceive. There were some special facts involved. The Camera Manufacturing Company had not indeed ever manufactured bicycles but had manufactured cameras of a special kind which were intended to he used by bicyclists and that "Bicycle Kodaka" had been extensively advertised. The crux of the matter nevertheless, was whether a person would be induced to believe that the goods had been manufactured by the Company which manufactured Kodak cameras and upon this question Romer, J., as he then was, observed at page 111 as follows:‑ "On the findings of fact above‑mentioned, it is clear that if the application for registration had been known to the plaintiff Company and had been opposed, no registration ought to have been made, and if an application had been made to the Court by the de"endant Company when applying to register the word "Kodak". I think that application would have been refused on the same grounds which form the decision in the case of word "Kodak" as the Trade was likely to deceive. If the public into the supposition were the same as a Trade Mark, as the title of Company, except for purpose of connecting themselves in some way with the plaintiff Company and its business; and, as I have said, I think the facts show that that was their real and sole object."

36. I was next referred to a case from the Indian jurisdiction reported as Sunder Parmanend Lalwani v. Caltex (India) Ltd. (A I R 1969 Bom. 24). The judgment is a long one but the two passages which I am quoting below, both parts of paragraph 49 of that judgment, are I think of considerable help on the facts of the case before me. The material facts sufficiently appear from the passages which I am reproducing,‑‑ "In this case, the goods are totally different. There is no trade connection between them. There is no connection in the course of trade, nor any common trade channels. There are factors against holding that there would be any danger of deception or confusion. But we must consider the factors which tend to show that there is a likelihood of creating deception or confusion. The opponents have been using their mark on a very large scale since 1937. Their sales in 1956 exceeded Rs. 30 crores. Their publicity is wide spread and large. In 1956 they spent over a million rupees on adver tisements. The goofs in respect of which they use the trade mark "Caltex" are mainly petroleum, kerosene and lubricants like greases and oils etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seeks registra tion is wider than watches and watches can be both costly and cheap. It cannot go without notice that the goods in respect of which the applicant in fact used the mark before he applied for registration were very cheap watches. The goods of the opponents are used by persons all over India, in cities and in villages, in different walks of life, rich or poor literate or illiterate. The goods of the applicant are different to nature. But they are watched. They can be cheap watches. The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man. Now, so far as the word "Caltex" is concerned, it 13 common to the opponent's mark as also to the opponents' name. To mention the mark "Caltex" is also to mention the name of the owner. The mark is up like the 'Lion' or the "Stag" mark and the name of its owner. The opponents are a large company known try many as having large resources, and therefore, capable of starting any new industry or trade. Because of that reason there in a greater probability of the public believing that any goods with the mark "Caltex" on them would be the goods of the opponents." "But, un fortunately for the applicant, it is also his evidence that Degoumors & Co, had other marks in respect of their watches. As a matter of fact, on the first order which dated 60 April 1955, the make originally selected by him in respect of the categories of watches covered thereby was "Sandy", which also was a mark of Degoumois & Co. He got the mark "Sandy" changed to "Caltex" only subsequently. Why he made the change has Clot been explained. It would be legitimate to infer that be selected the mark "Caltex" to take advantage of the reputation of that mark as used by the opponents in connection with their goods. The applicants selection of the mark was made, to use the words of Lord Denning in 1962 R P C 265 (H L) with intention to deceive and cause confusion, and he must, therefore, be given credit for success in his intention and we should no; hesitate to hold that the use of that mark is likely to deceive or cause confusion." It will be observed that in the Bombay case as in the present case the goods in respect of which registration was sought were not goods manufactured at all by the registered owner of the trace mark and were indeed as different as they possibly could be Nevertheless the learned Judges of the Bombay High Court pointed out that the articles in Question, like those manufactured by the owners of the registered trade mark, were used by people all over the country in different walks of life rich or poor, literate or illiterate and that therefore the potential market for them was similar to that of the existing market of the owners of the registered trade mark in the sense that the goods of both the parties were not special goods. It was not, and indeed it could nor be claimed that the goods were of the same description. There could be no question also that they would be normally old at the same kind of shops. Emphasis was however, ibid upon the fact the of the registered trade mark were a large company known to have large resources and therefore capable of starting any new Industry or trade. The position in the case before me is much the same except that in one registration, respondent No. 2 stands upon an even better footing than Caltex did in the Bombay case ; it is much more probable that a company manufacturing non‑alcoholic beverages would also go into the business of manufacturing and selling candies than that a company engaged in manufacturing petroleum, kerosene and lubricants would branch out into manufacturing and selling watches. Of course the learned Judges were considering section 8(a) and the learned Judges were not considering section

10. It does not seem to me that merely because they described the potential market of the two different goods as being the same they implied teas they were goods of the same description.

37. There are then some cases of our own Court which are of help upon the question and the first of these is the case of Bandenawaz Ltd. v. The Registrar of Trade Marks (P L D 1967 Kar. 492). In this case the goods in question were undoubtedly of the same description since the appellant had applied for the registra tion of a certain device as a trade mark for use in connection with lubricating oils and greases and the device closely resembled a registered trade mark used by the Shell Company of Pakistan Limited which also used it in respect of the same kind of goods. Nevertheless the argument before the learned Judge proceeded both upon the basis of section 8(a) and section 10(1) of the Trade Marks Act and Mr. Justice Noorul Arfin, in deciding the case, observed "the consideration which has to be kept in mind is whether a member of the public buying the products of the appellant's was likely to be deceived into believing that he was buying the products of the Shell Company" (page 494). Clearly the element of possible deception of the customer was something which the learned Judge was paying great attention to.

38. Again in the case of Mosanto Company v. Gul Ahmed Textile Mills Ltd. (P L D 1968 Kar. 369), Qadeeruddin Ahmad, J., as his Lordship then was, observed: "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 manu facturer of the other ; or the products of one manufacturer might have been used 1n the production of the goods of the other manufacturer. From this point of view, there is a likelihood of deception and confusion if the chemical liquid, which is used for giving a finish to textiles and for protecting them against shrinkage has the same name as the textiles themselves, because the impression can easily be created that the textile piece goods which bear the name of "Resloom" may have been treated with the chemical preparation of the other manufacturer." Plainly the learned Judge was placing far greater emphasis upon the possibility of deception and confusion than upon the question whether the goods belonged to the same class or to different classes.

39. Upon a consideration of the various statutory provisions and the circumstances of the case 1 have come to the conclusion that the goods of the contending parties are of the same description inasmuch as they are normally sold through the same trade channels and that, while both are items for human consumption and edible, neither is a food in the sense that either would be used for the purpose merely of satisfying hunger. Each is used in the form of a refreshment, a substance from which some enjoyment of taste and referesh ment is to be obtained rather than the satisfaction of a physical appetite. In that view of the matter section 10(1) would clearly debar the appellants from registration of the trade mark. It is to be observed that even in section 10 the likelihood of deception or confusion is an element.

40. So for as the grievance of learned counsel for the appellant is concerned that the Registrar did not consider section 10(2) I think the clear ans over !s that no concurrent use had been established inasmuch as evidence had not been placed before the Registrar ; I have dealt with that aspect of the matter earlier in this judgment. I deliberately refrain from considering the word "honest" at the present moment for I shall presently revert to it. There is of course no question of any special circumstances made out in the present case.

41. But even more strongly would I reject the case of the appellant by reason of section 8(a). Now there is no question in section 8 of goods being of the same description or not and the emphasis is purely, so far as clause (a) is concerned, upon the likelihood of deception or the causing of confusion. The Trade Mark of respondent No. 2 has already acquired not only in the rest of the world but also in this country which establishes in the mind of the common consumer a connection between goods bearing the Trade Mark and respondent No.

2. It is true of course that the appellant adds the words "Montgo mery" and "candies" before and after the expression "7 Up" respectively but, nevertheless, that expression figures prominently and there is, therefore in my view every likelihood of deception and confusion.

42. Now as I have said before although the two words separately "7" and "Up" are words of the English language in combination these are as it were, an invented expression. One naturally wonders why, of all possible expressions that the appellants might have chosen, they hit upon this particular combination. I cannot agree that this is a coincidence ; it indicates quite clearly I think that there was an intention to capitalize upon the reputation of respondent No. 2. is for that reason that I cannot agree that, even if section 10(2) other wise applied, this was a case of "honest" concurrent use and, if for no other reason. I would hold upon this ground alone that that subsection has no application. It is in any case no defence against section 8.

43. I have, therefore, come to the conclusion though for reasons somewhat different, that the decision of the Registrar of Trade Marks was right and must be upheld. I, therefore, dismiss this appeal with costs. K. B. A. Appeal dismissed.