1989 PLP 2005 (CLC)

Munawar Ghani for Appellant. Khalil Kazilbash for Respondent. Dates of hearing: 22nd February; 5th March and 2nd April, 1989. One A.R. Rizvi, proprietor of M/s A.R. Rizvi filed an application on 18th February, 1978 for registration of word `Antelope' in class 16 which was proposed to be used for ball‑point pen and pencil. The office raised objection that it was a geographical name and a notice under Section 6(1)(d) of the Trade Marks Act was issued to him to show cause why the application should not be rejected. Besides replying this objection Mr. Rizvi sought to add the device of an `Antelope' to the mark. This request for amendment was allowed and the application was ordered to be re‑examined. The Examining Officer reported that there were two other similar marks under serial Nos.22640 and 28764 for similar goods in favour of M/s. Indus Pencils Industries Ltd., Karachi, the respondent. It was also reported that word `Stag' and device of stag stand registered at serial No.39397 for playing cards being the goods of the same class, in favour of another party. The device of `Stag' with words John Deer is also registered at serial No.56141 for printing and publication material in favour of John Deer & Company of America. Objection was thus raised by the Registration Office under sections 8, 9 and 10 of the Trade Marks Act. The appellant submitted a reply but before the application could be processed further A.R. Rim, assigned his rights in this application in favour of M/s. Crescent Pencils Limited, the appellant. The Mark as applied was ordered to be published in the Trade Mark Journal with notice to the respondent and M/s. John Dear & Co. of America. Both filed objections. The respondent objected that it was the owner of registered trade mark at serial No.22640 for the word `Deer' and No.28764 for `Stag' in respect of pen, pencil, ink and allied goods. It was stated that these marks are being used from 1955 and were registered in 1958. Goods under these marks are very popular because of high quality and the sale has been around Rs.35 million. The impugned order is in respect of the opposition filed by the respondent which was allowed and registration was not granted to the appellant. Mr. Munawar Ghani the learned counsel for the appellant has contended that mark `Antelope' is different from `Deer' and `Stag' and as the purchaser of pen, pencil and ball‑point pen are all educated persons there is no likelihood of any confusion. It has also been contended that as `Antelope' is phonetically different from `Stag' and `Deer' there can be no deception. Mr. Kizilbash the learned counsel for the respondent has contended that the mark sought to be registered is similar to the respondents registered marks in respect of the same goods, therefore, it will cause confusion and deception and the appellant is not entitled to get the mark registered. Section 8 of the Trade Marks Act provides that any marks which contains scandalous design or any matter which is likely to deceive or create confusion shall not be registered. Confusion can be caused by similarity of mark, words, design or device for the same kind of goods. If the mark sought to be registered is likely to deceive the public due to its similarity with a registered trade mark, then the Registrar would be entitled to reject such application. It has, therefore, to be considered whether mark `Antelope' is similar to `Deer' and `stag' and is likely to cause confusion and deception. `Antelope' `Deer' and `Stag' are names of animals of the same species and resemble to each other in essential characteristics and appearance. In Chamber's 20th Century Dictionary `Antelope' has been defined as:‑ "a fabulous fierce horned beast any one of a group of hollow horned ruminants closely related to goats." In Oxford Universal Dictionary its meaning is "any species of the deer like ruminant genus Antelope (Pallas) characterised by Cylendrical, annulated horns, and the possession of a lachrymal sinus, and grouped as `True Antelopes' `Deer' has been defined as follows:‑‑ (1) In Oxford Universal Dictionary as: "The general name of a family (cervidae) of ruminant quadrupeds, distinguished by the possession of deciduous branching horns or antelers and by presence of sports on the young: the genera and specis being distinguished as reindeer, moose deer, red deer and fallow deer:" (2) In Chamber's 20th Century Dictionary: "As any kind of animal, any animal of the cervidae, a family of even toed ungulates characterised by the possession of antlers by the males at least including Deer:" "Stag is male of a deer specially the red deer." There can be no dispute that the meaning of these words and their appearance are common and similar. If such mark and device appears on pen, pencil or ball‑point pen or similar goods unwary public and purchaser majority of whom may be school and college‑going boys and girls can hardly distinguish it from each other. A look at the marks will illustrate the likely confusion and deception due to similarity in essential features. Section 8 which is much wider in scope and application than Section 10 of the Trade Marks Act takes into account the possibility and likely deception and confusion which may be independent of similarity. The learned counsel for the respondent has referred to James Chodwick and Bros. Ltd. v. The National Sewing Thread Co. Ltd. AIR 1951 Bom. 147 where word and device of Vulture was held similar to word and device of Eagle and registration was refused as it was similar to Eagle and was likely to 'create confusion and deception. This judgment was upheld in National Sewing Thread Co. Ltd. v. James Chadwick Bros Ltd. AIR 1953 SC

357. The learned counsel has also referred to PLD 1967 Kar. 492 Bandenawaz Ltd. v. Registrar of Trade Marks Karachi and others where mark depicting device of deer in standing position with curling horns and facing to left was registered. The application for registration of deer in rampart position with straight horns with face to the right was refused registration mainly on the ground that it was likely to create confusion. This case is very similar to the present one. Here the device of `Antelope' is similar to `stag' and `deer' and is likely to create confusion and deception. It is well‑settled that the test for ascertaining the likely confusion and deception is not to compare the two marks side by side but to ascertain whether the applicant's mark is likely to create an impression upon a man of average and ordinary intelligence that goods bearing its trade mark are the goods of the respondent. If the essential features or the main idea underlying the trade mark sought to be registered is the same as that of a registered trade mark then registration should be refused. The respondent's goods with trade marks of `Deer' and `Stag' are in production from 1955 and have attained goodwill and reputation. Their enormous sale speaks of their popularity amongst their consumers. The similarity of `Antelope' with `deer; and `stag' is likely to create deception and confusion and purchasers of average intelligence will take appellants' goods as goods of the respondent without little caring to differentiate or distinguish them. Now coming to section 10 it is clear that it prohibits registration of identical or similar trade marks in respect of any goods or description of goods which is identical with a trade mark belonging to different proprietor. The only exception is that in case of honest current user or other special circumstances the Registrar may permit registration. The appellant has applied for registration of mark in respect of ball‑point pen whereas the respondent's marks are registered for pen, pencil, ink and allied goods which are used by the same consumers and marketed At the same point. Therefore, in order to succeed the applicant should establish honest concurrent user or any other special circumstance to compel the i Registrar to exercise his discretion in its favour. The respondent has been using its marks and producing goods from 1955 and its sale runs in millions of rupees whereas the application filed by the appellant is in respect of proposed user which means that there was no user on its part much less concurrent user for a definite period. Therefore, the appellant's case is not covered by the exception provided by subsection (2) of Section 10 of the Trade Marks Act. The learned counsel for the appe113nt has referred to 33 R.P.C. 357 but the entire observation is in respect of extensive use of the mark which clement is lacking in the appellant's case. Mr. Khalil Kazilbash has contended that when A.R. Rizvi applied for registration of the trade mark he had no bona fide and honest intention, as required by Section 14 of the Trade Marks Act. In this regard the learned counsel has referred to the facts that A.R. Rizvi applied for registration of the proposed mark which he had not used earlier, during scrutiny he got it amended by adding device of `Antelope' and while it was under objection he assigned and transferred the amended mark to the appellant for a petty sum of Rs.100 as per assignment deed dated 31‑5‑1980 which was engaged in manufacturing, pen, pencil and ball point pcn

5. According to the learned counsel for the respondent A.R. Rizvi had no bona fide intention to use the mark himself but indulged in trafficking by assigning the said mark and, therefore, the appellant is not entitled to its registration. Bona fide intention and honesty of the applicant is the hallmark of the principles governing grant of registration. The object of the Trade Marks Act inter alia is to protect the purchaser and consumers from being defrauded and, also to avoid confusion and deception caused by similarity of marks. Honesty and bona fide are preconditions for grant of an application for registration of trade if mark. A party is entitled to apply and obtain registration in respect of goods he is manufacturing or proposes to manufacture provided he complies with all the requirements of law. But to apply with the intention to assign it should be looked .t with caution and suspicion as such action is bound to develop unhealthy and corrupt practices which may lead to filing application or obtaining registration of dummy trade marks for the purpose of trafficking in trade mark which may lead to several complications and even blackmailing. Such unhealthy practices should be discouraged as they are bound to frustrate the intention of the legislature to protect tile goods and products and the consumers alike. I may clarify that assignment of a pending application for registration or a registered trade mark which has all the significance of a property is permissible in law. But where application for registration of a trade mark has been filed in respect of goods not yet manufactured and the mark is proposed to be used, the assignment should be allowed provided the applicant satisfies good faith bona fide. and honesty. Mr. Kazilbash has referred to "In The Matter of An Application by Magdalena Securities, Ltd., For Registration of A Trade Mark and In The Matter of An Opposition By Logy' Temperature Carbonisation, Ltd.," 48 R.P.C.

477. In this case the appellant had applied for registration of the word `Ucolite' as a trade mark for partially coked coal. The respondent opposed this application as the mark would conflict with its mark `Coalite'. The application was rejected as besides similarity it was calculated tp deceive and there was no bona fide intention on the part of the appellant on the date of application to use the mark applied for upon or in connection with goods in question. The main purpose of obtaining registration of trade mark is to show that the goods manufactured by the applicant belong to him and have been manufactured by him. Therefore, there is a nexus between the mark and the goods manufacture but where an applicant without any intention to manufacture the goods applies for registration of a trade mark it must be established that the applicant is in a position to produce such goods which can be said to be his own goods with registered mark. Sections 36 and 37 fully support this conclusion. Section 37 provides that any trade mark registered without bona fide intention to use it in respect of the goods for which it was registered, may be taken off the register. In this context it is pertinent to note that under section 38 defensive registration of well‑known trade mark consisting of any invented word in respect of a goods can be registered in respect of other goods which is not manufactured or proposed to be manufactured by the registered proprietor of a trade mark. And such trade mark cannot be taken off the register on the ground of non‑user. The bona ride intention to use the mark for the goods applied for should exist before filing the application for registration of the mark and after registration user in respect of the same goods should be continued. The question of bona ride intention is a question of fact which has to determine on the basis of evidence and circumstances of each case. The fact that there is no prior user of the mark nor the applicant is in a position to produce goods for which he has applied for registration of trade mark may lead to the conclusion that there is a lack of bona fide on the part of the applicant. The principles enunciated above apply to the facts of this case as A.R. Rizvi applied for registration without any bona fide intention to use it in relation to the goods applied for and while under objection he assigned it to the appellant who is engaged in manufacturing pen and pencil. The application lacked bona fide and honesty and was, therefore, liable to be rejected on this ground as well. The learned counsel for the appellant contended that similar mark has been registered for playing card in the name of John Deer & Co. of America under registered mark No.56141 in class

16. Playing Card is a different goods and there is no evidence to show that the trade mark same has ever been used in Pakistan. Similarly device of `Stag' with words `John Deer & Company, in class 16 is registered for printing material which is different from pen, pencil and ball point and there is no evidence of its user in Pakistan. The learned counsel for the respondent has pointed out that mark 39397 and 56141 are lying abandoned in Pakistan and the respondents trade marks bearing Registration No.22040 and 28764 for `Deer' and `Stag' respectively were registered earlier in point of time. The appeal is, therefore, dismissed with costs. H.B.T./C‑112/K Appeal dismissed.