1980 PLP 625 (SCMR)

A. L. A. Shakoor, Advocate Supreme Court and A. Aziz Khan, Advocate‑on‑Record for Petitioner. Date of hearing : 21st January, 1980. ASLAM RIAZ HUSSAIN, J. ‑This petition is directed against the judgment dated 28th May, 1978 of the Sind High Court accepting the respondents' appeal against the Order of the Assistant Registrar of Trade Marks in a case under the Trade Marks Act, 1940. The facts giving rise to the present petition are as follows: Dae Health Laboratories Limited of England (Respondent No. 1) are manufacturing, through their licensees, a hair removing cream under the name and trade mark of ' VEET' which has been got registered by the said Company under No. 6718 since 21st December, 1942. Ekhlas Ahmad, Proprietor of Ks. International Trade Linkers (Petitioner herein) applied for the registration of a Trade Mark for a similar product, under Trade Mark No. 55826 comprising of the picture of a carton bearing the name of 'VEST' as well as other decorative design similar to those on the carton of the product being marketed by respondent No.

1. Before the Trade Mark was advertised in the Trade Marks Journal, the Registrar of Trade Marks (Respondent No. 2) served a notice on the petitioner to show cause as to why the aforesaid application for registration of Trade Mark of his product under the name of VEST should not be refused on the ground that it is objectionable under the provisions of sections 8 (a) and 10 (1) of the Trade Marks Act, 1940. In his reply to the said notice the petitioner satisfied the Registrar of trade marks that the aforementioned objection did not apply to his application. The petitioner's application for registration of the trade mark was thereafter advertised in the Trade Marks Journal. Thereupon the Dae Health Laboratories (Respondent No. 1) filed an `opposition on the ground that the Trade Mark applied for was deceptively similar to their Trade Mark `VEST' which had already been registered as far back as 1942, and as such the registration for the Trade Mark applied for by the petitioner for the same product (i.e. a hair removing cream) was barred under section 10 (1) of the Trade Marks Act. The matter was heard by the Assistant Registrar of Trade Marks. By way of proof in support of their `opposition' the Dae Health Laboratories submitted affidavits of its Secretary Miss Vera Shrive and Sh. Muhammad Yahya, partner of the licensee firm manufacturing and selling their pro ducts under the name of `VEST'. VEET Ahmad (petitioner herein) neither took part in the proceedings nor filed any affidavit nor lead any evidence in support of his application. The learned Assistant Registrar dismissed the 'opposition' of M/s. Dae Health Laboratories (respondent No, 1 herein) and accepted the Trade Mark application of the petitioner for registration, holding that there was no such close resemblance between the two Marks as were likely to cause deception or confusion amongst the purchasers because the sound as well as the meaning of the words 'VEST' and VEST' were different. Aggrieved by this Order, Dae Health Laboratories filed an appeal before the High Court under section 76 of the Trade Marks Act, 1940, which, as already mentioned, was accepted vide the impugned judgment. Hence (he present petition. We have heard the learned counsel for the petitioner as well as the respondents. The main question before the High Court in this case was as to whether or not the Trade Mark sought to be got registered by the present petitioner was hit by section 10 (1) of the Trade Marks Pet. This subsection provides that no Trade Mark shall be registered in respect o any goods or description of goods which is identical to a Trade Mark belonging to a different Proprietor and is already on the Register in respect of the same goods or description of goods or which so nearly resembles to such trade mark as would be likely to be deceptive or cause confusion. As mentioned by Parker, J., in the case of Pionotis Co. Ltd. (1906) 23 P P C 774 (at paga 777) a number of factors have to be taken into consideration while deciding such matters. One has to compare the two words and judge them by their appearance as well as their sound. One must consider whether they relate to the same or different kind of goods as also the nature and the kind of customers who are likely to purchase those goods. As a matter of fact, one has to consider all the surrounding cir cumstances and judge as to what is likely to happen if each of the two Trade Marks is to be used for selling the same goods in the market. As observed by the learned High Court each of the aforementioned circumstances has ultimately to be decided on the evidence produced before the Court. We agree with the learned High Court that whereas respondent No. 1 Dae Health Laboratories have produced some evidence in support of their assertions by way of affidavits of Miss Vera Shrive and Sh. Muhammad Yahya, and have at least made out a prima facie case of likelihood of deception or confusion because of similarity of the two words taking into account their structure, such as common prefix, common suffix with the same number of letters and also that the appellant (herein Respondent No. 1) has, by long and substantial use acquired reputation in respect of the VEET' depilatory hair removing cream. The High Court, therefore, rightly held that the petitioner had not been able to prove the objections raised by him and set aside the Order of the Assistant Registrar. Apart from the fact that, as mentioned by the learned High Court, the petitioner had not led any evidence in support of his assertions while respondent No. 1 produced two affidavits by way of proof to show that the registration of the Trade Mark applied for by the petitioner was likely to cause confusion. We have ourselves come to the conclusion after having a look at the photostat of the cartons being used by Respondent No. 1 and that of the carton sought to be got registered by the petitioner under the name of `VEST' that the Trade Mark under the name of Vest is certainly likely to cause confusion and deception in the minds of the prospective customers specially in view of their visual phonetic similarity. As such we find no force in this petition, which is, therefore, dismissed as being without merit. Petition dismissed.