1992 PLP D (MLD)

(b) the signature of the applicant for registration or some predecessor in his business; (c) one or more invented words; (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 a surname or the name of a sect, caste or tribe in Pakistan; (e) any other distinctive mark, provided that a name, signature, or any word, other than such as fall within the descriptions in the above clauses, shall not be registrable except upon evidence of its distinctiveness remark nor part .. .

8. No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would‑‑‑ . (a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; or (b) ......................................... (c) ......................................... Upon hearing, .the learned Registrar (Dy. Registrar under section 4 of the Act) found that even in England the mark in dispute was registered subject to special but unspecified circumstances as also a disclaimer. The appellants were required to submit details as to the circumstances of registration in England and the limitation imposed on them but they failed. Resultantly,. registration of marks in both the applications was refused. Appellants appeal here and the contention,' in the first place, is that law has been misapplied by the Registrar and, at any event, neither rules of procedure have been followed nor equal treatment has been accorded to the appellants in relation to another application for the same mark by people who, allegedly, were no more than importers/licensees in relation to the appellants' goods in Pakistan. They have also attempted to explain that the special circumstances attaching to registration in their home country with reference to section 18(1) (proviso) of the (English) Trade Marks Act, 1938, related to user and that the disclaimer pertained to the name "Richards!' for the same reason. Even if so, it is regrettable that the clarification was not addressed where it was due namely, before the learned Registrar, involving as it did a pure question of fact fundamentally determinable at that level. As to the larger question of registration of the mark, it would seem that the, name of an individual, firm or company is registrable only if such name is represented in a special or particular manner. By way of illustration, Mr. Muhammad Ali Sayeed, appearing for respondents, has aptly referred to the case of Standard Cameras Limited, (1952) 69 RPC 125, where the name "ROBIN HOOD" was allowed to proceed to registration upon grant of an appeal in the Chancery Division of the High Court of Justice in England, such name being represented in a special or particular manner, the specific representation itself appearing in the report. Section 9(1)(a) of the English Act of 1938 is identical to section 6(1)(a) of the Trade Marks Act, 1940. Indeed sections 6(1) and 9(1) in the two enactments are similar, the only distinction lying in clause (d) of subsection (1) of either section, as will be seen below. Now, in so far as the appellants are concerned it is nobody's case that they have sought registration in any special or particular manner and in fact their move, admittedly, was for registration of the mark in capital letters alone. Besides no user was claimed nor any evidence on that score was led. On this very premises the applications could have been rejected at the level of the Registrar and there could be little question about it. However, I have heard this matter at length because what is involved here are not merely the impugned orders of the Registrar but some pending proceedings on which the findings in such orders are bound to reflect, something that perhaps may not be apposite. Thus, in so far as the concept of "name" is concerned a name sought to be registered in terms of section 6(1)(a) or the Act could be a bare name the only requirement being that 'such should have been represented in the invocation in a special or particular manner. Admittedly, even according to the contention of Mr. Muhammad Ali Sayeed, who represents the Registrar, MORPHY RICHARDS is part of the name of the appellant‑company, which is a registered entity. In so far as the suffix "limited" in the name is concerned, the position has been clarified by Mr. Muhammad Ali Sayeed himself by citing the, KWIK KOPY case, 1982 RPC 102, where an English Court found . that words such as "limited" or "incorporated" etc. even if omitted for the purposes of seeking registration of name mark by a company using that name have no significance whatever and the applicant must be deemed to have applied for registration of its own name as a company. The reason is obvious: such ingredients in a name are merely descriptive of the nature of the entity or constitute a disclosure of the extent of liability of its members. It would thus appear and there could be little question that what was being sought to be registered by way of Trade Mark in the instant case was a name falling within and covered by section 6(1)(a) aforesaid. Unless the name was represented in a special or particular manner, as enjoined in the referred statutory provision, no registration of such name as a trade mark could be sought or allowed. In that due representation of the kind was palpably missing, the Registrar was substantially right. However, where that officer, inter alia, went wrong was his failure even to apply his mind to the question whether the appellants could be allowed to suitably modify the mark so as to satisfy the requirements of representation of a special or particular character in section 6(1)(a) of the Act. This, by itself, .is a good ground for interference in these appeals which are being disposed of through this common order. On his part, however, Mr. Chughtai Mirza Jamiluddin, for the appellants, urges that the matter is more appropriately approachable in terms of‑section 6(1)(d) of the Act rather than with reference to section 6(1)(a) ibid and according to the learned counsel the trade mark could be registered as a word mark in terms of the former provision, since it has no direct reference to the character or quality of the goods. and is not, according to its ordinary signification, a surname or the name of a sect, caste or tribe in Pakistan or even a geographical name. As to this, Mr. Muhammad Ali Sayeed has referred to and placed on record some names, appearing in the London Postal Area telephone directory where MORPHY RICHARDS, as regards its two ingredients, MURPHY & RICHARDS seems to be finding due reference, both as distinct surnames though Mr. Chughtai Mirza Jamiluddin has quickly distinguished the spelling part of the ingredient MORPHY which, in the directory, only appears as MURPHY. In this context, what Mr. Chughtai Mirza Jamiluddin says may first be noted. Learned counsel urges that the referred two .ingredients of the proposed mark being at worst surnames no distinctive treatment in line with section 6(l)(a), meaning thereby special or particular mode of representation, is required and, in terms of the postulates of section 6(1)(d) supra, all that has to be shown is that such surnames have no direct reference to the character or quality of the goods proposed to be covered by them, if registered as marks and further that, according to their ordinary signification the same or either of them are not surnames in use in Pakistan. If so, according to counsel, registration as a word mark would be unexceptionable. This question, evidently, did arise before the Registrar and some argument on the subject was addressed from the side of the appellants but the matter in view of what has been said about name marks under section 6(1)(a) of the Act may not have been fatal. It seems to have been conceded before the Registrar that RICHARDS was a surname though the appellants insisted that MORPHY was not. I think that the slight distinction in the words MORPHY and MURPHY may not have been crucial. As indicated above MURPHY is reflected as a surname too and so could be MORPHY, the slight spelling or even phonetic difference being insignificant and possibly confusing. In fact, MORFEE is listed as a surname. Either MURPHY or RICHARDS may thus have been a surname and the Registrar so finds but upon insufficient material. At the same time either of these could be a personal name and taken together could constitute the name of an individual, firm or company. If so, section 6(1)(a) rather than section 6(1)(d) of the Act would get attracted in turn, necessitating representation "in a special or particular manner", a question already addressed. However, and even though there is no disjunctive or conjunctive between the words MORPHY and RICHARDS Mr. Chughtai Mirza Jamiluddin claims that each may be treated as a surname covered by section 6(1)(d) supra and the matter be decided accordingly. Learned counsel for the appellants, in context, relies upon an apparently, unreported Supreme Court case namely, Hoechst Aktiengesellschaft v. The Assistant Registrar of Trade Marks, CA. Nos.K‑37 and ‑K‑38 of 1979, where the word‑mark KALLE was allowed registration on the simple ground that such word even though it may connote a geographical name in world context was not a geographical name prevalent in this country, a circumstance found foreclosing the prohibitory clause incorporated in the permissive postulates of section 6(1)(d) aforesaid. As, against this, Mr. Muhammad Ali Sayeed has contended that once a matter is covered by section 6(1)(a) any further recourse ' to a supposed entitlement under section 6(1)(d) of the Act would not arise. As an abstract proposition of law, it may be pointed out at once that section 6(1) ,of the Act commences with a negative and an express prohibition commanding that no Trade Mark shall be accorded _registration unless it satisfies one or more of the permissive clauses (a) to (e) of subsection (1) of section 6 which clauses themselves, at times, envisage added preclusions. Simply put, a mark may qualify under any one of clauses (a) to (e) aforesaid or may qualify under more such clauses than one or may qualify under one and simultaneously be negatived by the other or others. However, if a mark qualifies under any one of such clauses (a) to (e) its non‑conform by or even conflict with another or others would not be fatal. This arises because all that subsection (1) of section 6, at its commencement, mandates is a cover under "at least one of the following particulars" and thereupon ensue clauses (a) to,(e) under reference. Reverting, all that need be stated here, and there can be little cavil with the proposition, is that whereas section 6(1)(a) ibid confers exclusive right of registration of a mark represented in a special or particular manner, if such involves the name of an individual. firm or company section 6(1)(d) of the Act treats wits word marks and relevantly involves, inter alia. a surname but such surname is subject to the controlling phrase "having no direct referee,:;, 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". In turn, relying on the KALLE case ibid from the Supreme Court jurisdiction it is claimed that a word. mark is registrable if according to its "ordinary signification" it is a surname such as is not common in Pakistan notwithstanding its routine commonality elsewhere. Now, there is obviously a distinction between a personal name and a surname, the former restricted to acid involving what is usually termed as a first name or Christian name and the latter merely referring to that ingredient, of an individual's name which the family, group or brotherhood to which the individual belongs commonly carries. In turn, an individual's name falling within section 6(1)(a), usually, would conjoin a personal name and a surname, Individual's name, therefore, is the genus of which the personal and surnames are species. The first or Christian name particularises a person whereas the surname represents the connection of the person with the family, group, clan or tribe from which he hails. If registration of an individual's name is sought the matter would fall to be governed by section 6(1)(a) but if surname alone is sought to tie registered it will not be registered unless the applicant surmounts the prohibition in section 6(1)(d) of the Act. Thus stated, it appears that in so far as the full name of a person (individual's name) is concerned no registration is permissible unless there is a representation in the way of the mark in a special or particular manner. That restriction does not apply to such portion of the individual's name as may be termed his surname. In the last‑mentioned case, however, the surname should have no direct reference to the character or quality of the goods proposed to be covered by the mark nor should such, in "its ordinary signification" be a surname as such. This is how the law stands in England. Section 9(1)(d) of the (English) Trade Marks Act, 1938, which was the precursor of section 6(1)(d) in our statute stood thus: "9(1)(d) a word or 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". Now, reproducing section 9(1)(d) above, in the promulgation of the Trade Marks Act, 1940, the phrase, "or the name of a sect, caste or tribe in India" was added in section 6(1)(d) thereof, the word "India" being substituted by "Pakistan" in 1949. The Supreme Court of Pakistan in the KALLE case ibid has opined that the words "in Pakistan" occurring in section 6(1)(d) of the Act control not merely the words "sect, caste or tribe", limiting these to Pakistan only but also the pre‑existing words in the English statute upon which our enactment draws namely, "a geographical name or a surname" and restrict each of them also to the terrain of Pakistan. With all respect, it is humbly submitted that such may not be correct either on the phraseology used or on principles of construction. It would seem that the word "or" is used as a disjunctive before the phrase "the name of a sect, caste or tribe in Pakistan" and it is only the name of a sect, caste or tribe in Pakistan registration of which is precluded and correspondingly not that subsisting exclusively outside this country. This becomes clearer when the words "in Pakistan" are focused. If the .legislative intent was also to restrict registration to surnames prevalent in Pakistan only wordy like prevalent, in use etc. could be grammatically in order. Besides, an enactment on Trade Marks is essentially an international statute, catering to national and international sensibilities and a surname is a surname wherever it is in vogue. We are living in an information age where the Earth has veritably become a global village. Similar may be the connotations of "a geographical name" and there may be hardly anything as, a pure and simple, geographical name in Pakistan. This country plausibly shares a common geography with the rest of the world. Further, by the substitution of the word "Pakistan" for the word "India" could the legislature have intended that what was non‑registrable till the 1949 amendment namely, a well known geographical name in India had upon the amendment also become registrable? Perhaps no. In my most humble view, it may be a total disregard of international norms to allow registration of well‑known geographical names prevalent abroad. This should be equally so regarding common‑place surnames current in the outside world. Such, therefore, may not have been the legislative intent. Even so pursuant to Article 189 of the Constitution all Courts in Pakistan are bound to follow the law declared by the Supreme Court. The error, if any, can be corrected at the level of the apex Court only. For the present and for our purposes, accordingly, a surname prevalent in Pakistan alone is, precluded from registration and neither MORPHY nor RICHARDS, in its ordinary signification, is a surname prevalent in Pakistan. However, what has been sought to be registered is a combination of two names and either or both could be a personal name as well as a surname and conjointly may be employed as name of an individual, firm or a company. Thus, while it may be debatable that two surnames could be registrable as one mark, in spite of the Supreme Court dictum, being non -prevalent in Pakistan, only one surname being logically permissible the fact remains that the appellants can still fall back on registration of their own name pursuant to section 6(1)(a), if they so choose and offer it, as expressed in a special or particular manner. Another aspect of the case pertains to the Registrar ordering the application of a rival, involving the same mark, to proceed for registration through the media of advertisement in the Trade Marks Journal, when the appellants' application, admittedly, was earlier and the appellants were also, though only allegedly, the manufacturers of the goods. In answer, Mr, ' Muhammad Ali Sayeed says that the application was based on user where the one filed by the appellants was not on the ground of user at all. Even so in terms of Rule 23 of the Trade Marks Rules, 1963, it would seem that an obligation is cast on the Registrar in relation to every application seeking registration of a mark to have a search made whether a similar mark (or marks) is or is. not registered or is not one which is the subject‑matter of another pending application, the object obviously being to forestall deception or confusion in the context of section 8(a) of the Trade Marks Act. In that objection was raised pertaining only to the appellants' earlier mark "MORPHY RICHARDS" and an identical mark to that of the appellants, may even a later arrival, was not even traced and allowed to proceed for advertisement in the Trade Marks Journal are no small matters. More than that I do not wish to say. Thus though the order of the Registrar may to some degree be justifiable, the appellants having failed in the supply of information antecedent to registration in England and contesting the matters on a misconceived footing, non‑compliance of the requirements of Rule 23 is basic to the concept of registration of Trade Marks and cannot be ignored. In addition, it is now stated that the appellants have also preferred Objections after being confronted with the questioned advertisement in the Trade Marks Journal and those objections are pending. Correspondingly, the appellants are said also to have applied on the grounds of user which application too awaits adjudication with the Registrar. Besides, it will yet be for the Registrar to examine as to how the mark MURPHY in relation which objection under section 8(a) was raised against the appellants found its way to the register and whether it satisfied the mandates of section 6 ibid. If not what options are open in the matter. Then alone the objection under section 8(a) supra against the appellants can adequately be touched. In such circumstances, I think the best course would be to admit and allow these appeals, full hearing having been accorded to both sides upon issuance of‑pre‑admission notices and comments, replies and affidavits having been duly filed. Dismissal of the appeals subject to the above observations will not do because of two reasons: firstly, such would not result in continuity of proceedings and secondly, unless the appellants' applications are revived their claims would lose ground in the order of priorities. Accordingly, the impugned I orders are set aside and the matters are remanded to the learned Registrar for being considered more fully alongwith those which are still pending with him. This would be in consonance with law and more particularly in line with the observations occurring above. There will be no costs in these appeals. Order accordingly. A.A./M‑1690/K Case remanded.