P L D 1973 Karachi 24 (PLP)

"It is the non‑registration of Weston by Sangamo that would at all events permit deceit or confusion. For if Newark were to begin to advertise and sell their goods in the United Kingdom on any substantial scale I think there would be inevitable confusion between those goods and other goods entirely designed by Sangamo which have for many years been sold in the United Kingdom by Sangamo and English Weston under the mark Weston. Accordingly, in my judgment Sangamo has discharged the burden which lies on it, So far as my discretion under section 17 is concerned, I am content to adopt the Registrar's reasons as my own. Accordingly, in my judgment, the opposition fails and I direct that the application proceed t o registration." The observations in this case, therefore, do not advance the case of the appellants.

9. In Kaiser Jeep Corporation v. Saber Saleem Textile Mills Ltd., the respondents bad sought the registration of the Trade Mark "Jeep Brand" in words and the device of a Jeep, in Class XXIII, in respect of thread and 3 am of all kinds. The opposition filed by the aforesaid appellants was on the ground that they were proprietors of the said Trade Mark "Jeep" with the device of a motor‑car in respect of their automobiles, automobile parts, internal combustion engines, aircraft, water craft, and the complete identity of the respondents' device was with the avowed object of creating deception and confusion in the public mind, in regard to the trade source. The opposition failed before the Deputy Registrar. The only point which came up for consideration in appeal was, whether the Trade Mark if registered, would cause any deception or confusion, and it was held that in spite of the identity of the mark, there was no trade connection between their goods ; they could not form part of each other ; were not put to the same use ; nor were they dealt with in the same course of business, or sold in the same kind of shop. Mr. Shaukat Ali, however, relied on the following observations: "But in my opinion, section 14 is not an independent of the other provisions of the Trade Marks Act, 11940. The accept ance or refusal of the Registrar to register a Trade Mark has to be determined in accordance with those provisions." Section 14 reads as under :‑ "Section 14.‑(1) 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 Regis trar 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. (2) In the case of a refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat. (3) The tribunal may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his applica tion upon such terms as it may think fit."

10. The language of section 14 clearly indicates that subject to the provisions of the Act, the Registrar may refuse the application, or may accept it absolutely or subject to certain modifications, and limitations as he may think fit Shavaksha in his Commentary on the Trade Marks Act, 2nd Edn., p. 70 writes: "There is no absolute right under the Act, enabling an appli cant to register his Trade Mark." As Lord Herschel said in Dnn's Tm. 7 R P C 311, certain sections "prohibit the registration of a Trade Mark in certain specified cases, but there is no duty cast upon the Comptroller of register ing every other trade Mark that may be applied for. On the contrary, whilst he is in certain cases prohibited from registering, a discretion, whether to register or not appears to me to be in all other cases plainly conferred," A distinction has to be made between what is a matter of adjudication and what is a matter of discretion". Further on at page 71, he says, "The Registrar's discretion usually arises in a case in which as a matter of adjudication, the applicant is entitled to registration, but nevertheless owing to certain circumstances, the Registrar in his discretion refuses registration. The Regis trar's discretion, will not be upheld if it is unreasonable. as for instance where the circumstances of the case do not sup port the reason given by him for exercising his discretion, or be may have been overcautious in exercising his discretion against the applicant".

11. The learned Deputy Registrar was of the opinion that the Trade Mark of the respondents had not acquired a reputa tion in this country, so as to find in their favour, under section 8 (a) of the Trade Marks Act. What, however, weighed with him was that the appellants used to import radio parts and kits, under the Crown mark and used these marks on their own sets which they assembled in Pakistan. They could not, therefore, arrogate the proprietary rights to themselves. He sought support for his view from In re : Vitamin's Ltd. Application for a Trade Mark (73 R P C 1). In that case the question, whether the applicants were making a proper representation to the Trade Mark Registry, was duly considered by the Assistant Registrar who found against them. This was approved in appeal. As for the second consideration mentioned by the Assistant Registrar, in reaching his conclusion, Lloyd Jacob, J., observed: "There is a second factor which it seems to me to be right that I should have in mind when exercising a discretionary jurisdiction, and that is that the evidence discloses that the mark has been used by the appellant upon and in relation to a remedy or an alleged remedy for arthritic conditions in human beings. The fact that the application was made in respect of pharmaceutical substances indicates that it is in a similar field that user by the respondents is contemplated. Having regard to the fact that the evidence discloses a genuine business on the part of the appellants in their country of origin and that advertisements of such are reaching this country and appearing in libraries or places of reference to which medical men may resort, it seems to me that I am bound to consider the possibility that, with the passage of time, some conflict may occur between the use of the mark by the present respondents and the advertisement and user of the mark overseas by the present appellants. Having regard to the international character which medicine and the allied sciences have assumed and increasingly assumed over atom the last two decades, it seems to me that the Court must Radio be particularly careful to see that in exercising its discretion under the Act the public interest is not in any way imperilled. For my part I am not satisfied that, in allowing to be used by manufacturers in this country as a brand name for a pharmaceutical substance a word which is in fact used by an American Corporation in respect of the same material and advertised in journals, which on the evidence are received into this country and referred to, the public interest will be best served by permitting registration. Accordingly, on both those grounds it seems to me that it is my duty to indicate that in the light of the fuller consideration which the matter has received in this Court the application should; not be permitted to proceed."

12. In the matter of Application by the Appollinaris Co. Ltd. Fry L. J. observed: "We are not concerned here with a case in which an importer may use the mark of a manufacturer with an addition indica tive of the goods having been imported by him, but the mark of a manufacturer pure and simple cannot rightly be assumed by an importer from that manufacturer, or by a person who buys from that manufacturer, unless indeed where all the goods of the manufacturer go to that importer or that dealer." Further on it was observed : "Again, if the mark registered had been one which indicated the importer ft might have been maintained, but an importer has no right to appropriate to himself a mark which, as in this case, both by user and express statement on its lacer asserts itself to be a mark of the producer or of the owner of the place of origin, because at the time of the registration the mark was an old one, and of course could not be registered as a new one; it was an old one of Kreuzberg's, and therefore could not be registered as an old one of the Appollinaris Company. It was the mark of the producer, and could not be registered as the trade mark of the importer, who had no right to the whole produce of the spring."

13. The case of Bengal Immunity Co. Ltd. v. Denver Chemical Manufacturing Co. and others, will not be strictly relevant, but the following observations will show that the Registrar's discretion has to be exercised where t e was a taint of fraud or dishonesty :‑ "As I read the section, the intention of the Legislature clearly was that in two classes of cases registration would be permitted when there is identity or resemblance likely to deceive or cause confusion‑the first class to consist of cases of honest concurrent use and the second class to consist of cases where there are special circumstances not being cases of dishonest concurrent use. It is well to remember that the whole idea behind the law of registration of trade marks is to prevent fraudulent use of the marks of one proprietor by another proprietor."

14. I therefore venture to think that under section 14 of the Trade Marks Act, the learned Deputy Registrar, was competent to exercise his discretion, and in the circumstances disclosed, he had exercised it judiciously.

15. In the result, I will affirm the order, and dismiss the appeal with costs. S. A. H. Appeal dismissed.