1987 PLP 91 (MLD)

Woodies TM case (1905) RPC

366. Handerson's case (1969) RPC 218; TAB case (1972) RPC

79. Granada's case (1973) RPC

49. Dunlop's case 16 RPC

12. Besides the afore-stated cases the appellant's Advocate has referred to the following judgments of our Court: Monsanto Company v. Gul Ahmad Textile Mills Ltd. P L D 196, Kar.

369. Kaiser Jeep Corporation v. Sabar Saleem Textile Mills Ltd. Pl, 1969 Kar.

376. Messrs Montgomery Flour and General Mills Ltd. v. Registrar Trade Marks, Karachi P L D 1973 Kar.

567. The Seven UP Co. U.S.A. v. Abdul Aziz Noor Muhammad P L 1976 Kar.

895. Sony Kabushiki Kaisha v. Registrar of Trade Marks Karachi an another P L D 1978 Kar.

161. In these judgments of our Court almost all the leading authorities cited by the learned counsel for the appellant seem to have been discussed. I would, therefore, refrain discussing those authorities again and will refer them whenever necessary. Section 8 provides guideline for exercise of discretion by the Registrar. The grounds for refusing registration enumerated in section 8 are not exhaustive. Besides confusion and deception, the registration can be refused for any reason which may disentitle the applicant protection in a Court of justice. This may include such acts of omission or commission of the applicant which may be dishonest, male fide, fraudulent, harmful and prejudicial to the social and moral interest of public and its welfare. In granting registration of a trade mark the Registrar has to keep in view the social and economic conditions which though not decisive considerations are very important. The changing conditions in market and varying habits of customers seem to be the outcome of publicity and exploitation of the products through media unknown previously capable of introducing and popularising them in various countries within the shortest possible time, thereby gaining enormous goodwill and reputation. All these factors have to be kept in mind before granting registration of trade mark particularly in respect of similar or same marks. The design and marks which are scandalous, immoral, unlawful, cause confusion, deception or hurt the religious feelings and sentiments of any class of citizens of Pakistan cannot be registered. There seems to be growing trend in the judgments of higher Courts .of various countries that before granting registration it should be ensured that it is not against public interest. All Government functionaries are required to act according to law in the best interest of public. The provisions of Trade Marks Act are also designed to protect the public and pains have been taken. to see that it is not deceived, confused, hurt or defrauded. Therefore, while granting registration of a trade mark the Registrar has to see that public interest is safeguard. One way of affording this protection is to refuse such marks which cause confusion and deception in respect of goods, source of production or reputation attached to the goods or the manufacturer. The Courts have not hesitated to extend this protection in respect of cases where despite absence of trade connection between the different goods confusion or deception could exist. In this regard frequently quoted case of Radio Corporation Proprietary Ltd. v. Walt Disney and others (1937) 57 CWLR 448 has been referred in which the High Court of Australia extended this protection in respect of goods which were completely different. In this case Walt Disney had invented 'Micker Mouse' and 'Mini Mouse' the two amusing cinema characters which had attained universal popularity. These two characters became so popular and famous that various manufacturers and traders obtained licence from Walt Disney on payment of fee, to use the name of figure of these characters, in connection with their goods. The respondent applied for registration of 'Mikki Mouse' and 'Mini Mouse' for their radio receiving sets and kits. On opposition the application was rejected and in appeal the High Court observed: "The opponents have, in my opinion, known that names and the figures are so clearly associated in the public mind, in Australia and elsewhere, with Walter E. Disney and his activities, that the use of either the names or the figures in connection with any goods at once suggests that the goods are 'in some way or other connected' with Walter E. Disney (see, per Lord Macnagten (Eno v. Dunn). This the evidence shows, would be the case whatever the nature of the goods to which the names were attached. It is very seldom indeed that there can' be a world wide association of ideas in connection with a particular name or figure, but the evidence shows that this should not be registered if it involves 'a misleading allusion or a suggestion of that which is not strictly true' (Eno v. Dunn). Thus, in my opinion, these marks should not be registered. I do not decide this appeal upon the basis that the opponents have any exclusive right of any kind to the use 'of the words and figures in question whether by way of trade mark or under a copy right or otherwise. My opinion is based solely upon the ground that, as against the public, the applicants should no; be granted the exclusive right to use the words in connection with any goods for the reason use that the use of the words by them as a trade mark would be likely to deceive (Section 114)". In Sony Kabushiki Kaisan v. Registrar of Trade Marks P L D 1978 Kar. 166 Mahmud, J. observed as follows; "Section 8(a) of the Act is designed for the protection of the public against deception or confusion and must, therefore, be given a wide scope and should not be limited to any kind confusion, such as arising by reason only of any trade connection between the competing goods. Once it is established on the evidence that deception or confusion is probable, the Registrar is bound to prohibit registration of the proposed trade mark in the public interest. The learned Judge has relied on the above Australian decision and Sunder Permnand v. Caltex (India) Ltd. 1969 Bom.

24. In Seven UP Co. U.S.A. v. Abdul Aziz Noor Muhammad P L D 1967 Kar. 895 disagreeing with the rule laid in Caltex case the learned Judge was of the view that the registered owner is in no better position to object to the registration of the same or similar mark for different goods under section 8(a) and section 8(a) should also be given a limited meaning as otherwise section 10 will be redundant. However in Sony's case Mahmood, J. has disagreed in the following manner: "But with the utmost respect, the question is not of the right of a registered owner to object to registration under section 8(a), but the question is one of public protection against deception or confusion." In support of this observation reliance was placed on Fruit Salt case (1890) 7 RPC 311 where Lord Macnaghten observed that "The question is one between Mr. Dunn and the public, not between Mr. Eno and Mr. Dunn. It is immaterial whether the proposed registration is or is not likely to injure Mr. Eno in his trade. Equally immaterial, as it seems to me, is the fact that for a considerable time Mr. Eno had on the register, as his trade mark, the words FRUIT SALT. Mr. Eno may have gained some advantage to which he was not properly entitled, but that is hardly a reason for permitting Mr. Dunn to practise a deception upon the public." In Bali Trade Mark 1969 RPC 472 rule laid down in Fruit Salt case was followed by stating that 'section 11 (our section 8) and its forbears were designed not so much for the protection of other trader in the use of their marks or their reputation but for public interest.' Similar observation was made in Transfermatic Trade--y Marks case (1966) RPC 568 which has been relied upon by Mahmud, J. In Seven Up case P L D 1976 Kar. 895 Dorab Patel, J. (as he then was) did not seem to entirely reject the plea that the Act affords protection to public interest as he observed that 'Although this section (section 16) prohibits the imitation of trade marks, Legislature had not imposed a total prohibition. That the prohibition is conditional manifests the anxiety of the legislature not to confer on the owner of a registered trade mark a wider monopoly than is required lit public interest, and thus the section also furnishes a guideline for the exercise of the Registrar's discretion under section 8.' In case for registration of trade marks, whether it is similar to any registered mark or relates to similar or same class of goods or not, the law enjoins a duty upon the Registrar to consider whether registration of such mark will in any manner affect public interest. In order to determine whether any confusion or deception will be caused several facts including whether there is close resemblance between the two rival marks and whether there is some trade connection between the two marks leading to the impression in public that both the goods originate from the same source have to be kept in view. It has also to be seen whether the proprietor of a registered mark has attained wide reputation and will it be capitalised by any other party after obtaining registration of a similar or same mark for other goods. The rule has been laid down by late Chief Justice Tufail Ali A. Rehman in Montgomery Flour and General Mills Ltd. v. Registrar of Trade Marks P L D 1973 Kar. 567 as follows:-- "While of course the Courts will give full meaning to every section and every word in every section of the law, I think it would be right to say that the Court ought, in construing the provisions of the trade marks Act, have regard both to public and to private rights, the first consisting of protecting the unwary customer from purchasing goods in the belief that they are manufactured by a company or firm in the quality of whose goods he has acquired confidence and the latter consisting of protecting the proprietors of registered trade marks against the infringement thereof and against the use of the trade mark by other persons wishing to capitalise upon the reputation of the owner of the trade mark." In the present case the appellant manufactured aerated water which has attained popularity the world over. The trade mark of the appellant is so popular that it establishes in the mind of common consumer a connection between the goods bearing the trade mark and the appellant. The nature of the respondent's product though different seems to be similar to the appellants so far, its use is concerned as both are for human consumption as refreshment and enjoyment of taste. They are not taken as a food. Both the products are sold through the same trade channel. These goods are consumed by general public of all ages and almost from every class of society. In these circumstances in using the 7-Up by the respondent No. 2 there is not only actual probability but real tangible danger of deception and the consumers are likely to believe and think that both the products originate from the same source. In this regard reference can be made to the following observations in the case of Montgomery Flour and General Mills Ltd. P L D 1973 Kar. 567 where the appellant had applied for registration of 'Montgomery 7-Up candies', which was refused:-- "Upon a consideration of the various statutory provisions and the circumstances of the case I 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 same enjoyment of taste and refreshment 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. 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 mar 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 'Montgomery' 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. 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 a coincidence; it indicates quite clearly I think that there was an intention to capitalise upon the reputation of respondent No.

2. It is for that reason that I cannot agree that, even if section 10(2) otherwise applied, this was a case of 'honest' concurrent use and, if for no other reason. I would hold upon this ground alone that subsection has no application. It is in any case no defence against section 8." These observations equally apply to the present case. Mr. F.W. Vellani has referred to Hindustan Lever Limited v. Radha Products (1977) 1 P L R Vol. 2 No. 2, page

72. The appellants were the proprietors of a trade mark containing a device of a lotus and the word 'Lotus' in respect of hydrogenated vegetable oils and edible vegetable oils (refined). They opposed respondent's application for registration of device Lotus and word 'Lotus' in respect of 'honey'. Tile Registrar dismissed opposition, but the appeal was allowed in view of the fact that 'the appellant's trade mark has acquired a reputation and that the reputation is likely to be affected by the deception or confusion which is likely caused by the user of the mark sought to be registered by the respondent.' The learned counsel next relied on another case of Indian jurisdiction Jugmaug Electric & Radio Co. v. Telerad Private Ltd. 1978 1 P L R Vol. 3 No. 2 page

73. The respondent was the registered proprietor of the trade mark TELERAD in respect of Radio and Television. The appellant got its trade mark Telerad registered in respect of hot plates for cooking, electric heater, table lamps, heating apparatus and parts of the aforestated goods. The respondent applied for cancellation of the appellant's marks which was allowed. The appeal filed before Single Judge was dismissed and further appeal to a Division Bench was also dismissed with the following observation:-- "It was argued for the appellant that reputation is attached to goods and not to the trade mark as such. This very argument recoils on the appellant. It is because the goods of the appellant are in the same trade channel as the goods of the respondent is that the probability of the appellant exploiting the reputation of the respondent arises. What the customers know is that the respondent manufactures radios. The reputation of the respondent is certainly attached to those radios. But the customers are also likely to think that the respondent also manufactures and/or sells domestic electrical appliances firstly, because it is common practice for one firm to manufacture both these types of goods and for shops to sell both these types of goods are sold under the same trade mark 'TELERAD'. What more assurance is needed to a customer to think that 'TELERAD' domestic electrical appliance is made by the maker of 'TELERAD' radio than the common name 'TELERAD' under which both of them are sold." Mr. Shaukat the learned counsel for the respondent attempted to distinguish this case on the ground that TELERAD was an invented word. It is true 'that the case does not turn entirely on this ground. The main reason for cancellation seems to be the common trade name, possibility of exploitation of reputation, common trade channel and the confusion in customers regarding source of the goods. Similar observations were made in Meerani Electrical v. Registrar of Trade Marks, 1981 1 P L R Vol. 6(1)

8. In Lloyds (Southempton) Ltd. 29 R P C 433 the appellant has existed as a society of underwriters for the last 200 years. The name 'Lloyds' used in connection with marine insurance and shipping intelligence and maritime affairs generally, has practically throughout the shipping and mercantile world come to mean the appellant society. The respondent formed the company for business relating to shipping and other purposes. In appeal injunction was issued against the respondent. Referring to the defence Buckley, J, observed: 'they say they thought it was a suitable name. I have not the least doubt that it was a suitable name for their purpose, and that purpose was .................. an impudent attempt to pretend they are that which they are not. The defendants say and with reason, that a plaintiff coming to this Court must prove his case. I entirely agree, but when you have facts such as stare one in the face in this case, it does not require very much evidence to assist one to arrive at the proper conclusion. Mr. Shaukat the learned counsel for the respondent No. 3 contended that no evidence of actual deception has been produced and, therefore, it cannot be concluded that the respondent's mark is likely to cause deception and confusion. Reliance has been placed on T. B. & Sons v. Prayag Narain A I R 1940 P C

86. In that case the competing marks were similar and not the same. The Privy Council ruled that the vital element is the probability of deception. It is true that the appellant has mainly produced evidence of world wide user, consumption and production of its products, progressive increase in sale and the expenses incurred on publicity. These facts establish the goodwill and reputation the appellant has earned for its name and trade mark 7-Up. From the appellant's evidence the wide publicity and its reputation is fully established and 7-UP is associated with it. The respondent claims that he has, been selling scented Supari under 7-UP trade mark from 1970. No account book, stock register or document relating to the expenses incurred on its preparation, publicity, and advertisement have been produced. The only evidence is respondent's affidavit in which vague statement has been made and the letters received from his customers. One letter is of November, 1971 and all other letters seem to be bearing dates after the filing of the application for registration. Such letters can hardly inspire confidence to establish user muchless honest user from the year 1970. The copies of reply to the questionnair issued by the respondent seem to be directed on the point that 7-UP soft drink is made in U.S.A. whereas 7-UP scented Supari is made in Pakistan. The impression seems to be that 7-UP soft drink is associated with the appellant although it is manufactured by its bottlers in Pakistan according to the appellant's formula. The appellant's product carries with it the goodwill and reputation which the appellant's trade mark 7-UP has earned world over. Only few persons have replied that when any one asks for 7-UP Supari it is understood to be a product of the respondent. This statement is an obliging one as in the absence of evidence proving large sale, popular demand and huge publicity it is difficult to believe such statement. As discussed above in view of the reputation and goodwill the appellant has acquired, there is every likelihood of deception and confusion as to the source of the goods sold under the respondent's trade marks. Furthermore, the positive chances of taking advantage of the appellant's reputation cannot be ruled out. The respondent has not explained why he has adopted the trade mark 7-UP. Such explanation may not be necessary in case where similar mark has not been registered in earlier. But where similar mark has been registered in respect of the same or similar nature of goods then such- explanation is necessary to establish honest concurrent user. In cases where the goods are completely different and have no similarity such explanation may be necessary if the registered trade mark has attained such acclaimed and universal reputation that if any other person associates the same mark with' his own goods, the customer/purchaser will immediately think that both the goods originate from a common source. The respondent No.2 has chosen trade mark 7-UP when it has been actually used by the appellant and attained wide reputation the world over. Could such.............. therefore in one way or the other be attached to the respondent's goods. In G.E. Trade Mark (1973) RPC 297 Lord Diplock observed:- The essence of a trade mark is the association that it bears in the mind of a potential buyer of the goods to which it is applied I can see no reason for differentiating between cases where the confusion arises because the trade mark is associated with the name of a manufacturer to which some other manufacturer's name is similar, and causes the association with a design or with descriptive words and the confusion arises because some other manufacturer uses design or similar descriptive words to indicate the origin of his goods. In my view, section 11 is wide enough to embrace 'confusion' resulting from any of these kinds of association. In the present case there is identity of appellant's and respondent's marks. The goods of both the parties though different are used for similar purpose, sold through the same trade channel and consumed by persons of all ages and walks of life. No doubt the colour scheme of the respondent's marks different arid respondent's monogram is also added to it but the expression '7-UP' designed similar to appellant's mark appears so prominently that there is every likelihood of deception and confusion as to source of the products. The innumerable customers of the, appellant and many others who know the appellant's name, trade marks and product are likely to associate the respondent's products to the appellant. This may probably happen as the appellant has acquired universal notoriety and reputation for its name and product.' The appellant's reputation is established by the evidence of the respondent also as in almost all the questionnairs the 7-UP drink has been attributed to the appellant. The learned counsel for the respondent has referred to 'Panda's cases 163 RPC 59. (In the matter of an application by Ladislas Jellinek) where the appellant had applied to register the device of a 'Panda' with the word 'Panda' in class 3 for shoe polish. The application was opposed by a proprietor of similar mark in respect of shoes. The opposition was also dismissed and appeal filed by the opponent was dismissed and it was held that shoes and shoe polish were not goods of same description and the registration would not .offend against section 12(1)(our section 10). This opposition was rejected inter alia on the ground that the opponent had not established any reputation amongst the public for shoes under the mark 'Panda' and that there was no likelihood of confusion. In the present case the appellant has established the world wide reputation for its trade mark 7-UP. A party can not be allowed to capitalise and exploit the reputation of any other proprietor of trade mark. This is not so to merely protect the proprietor of registered trade mark but to safeguard the interest of public which should be protected from deception and confusion. The impugned order is set aside and both the appeals are allowed with no order as to costs. M.Y.H./S-8/K Appeals allowed.