P L D 1977 Karachi 858 (PLP)

Ebrahim Ahmad for Appellant. Iqbal Kazi for Respondent No.

2. Date of hearing : 10th January 1977. This is an appeal under section 76 of the Trade Marks Act, 1949, from the decision of the Assistant Registrar of Trade Marks dated 17‑6‑1974 whereby he dismissed the Opposition filed by the appellant against registration of the trade mark of the respondent No. 2 and ordered it to proceed to registration.

2. The respondent No. 2, Meiji Seika Kaisha Ltd., a Japanese pharmaceu tical manufacturing company of Tokyo Japan, filed an Application No. 52890 on 19‑1‑1970 for registration of its trade mark, word 'Vistamycin' in Class 5 in respect of "drugs and medicines, particularly antibiotics" under the Trade Marks Act, 1940 (hereinafter referred to as "the Act"). It was stated in the application that the said Trade Mark was "proposed to be used" When this application was advertised for opposition purposes in the Trade Marks Journal No. 242 dated 1‑3‑1971, the appellant, Glaxo Laboratories Ltd. lodged a Notice of Opposition. The main grounds of opposition were that the appellant had earlier obtained registration of its Trade Mark, word "Crystamycin" as of 8‑9‑1952 for all goods in Class 5 ; that the said Trade Mark "Crystamycin" has been extensively used and widely advertised in respect of antibiotic products throughout Pakistan, as a result of which the appellant had acquired a valuable goodwill and reputation in respect of its business in the said products; that the Paid respondent's proposed Trade Mark "Vistamycin" so nearly resembled its registered Trade Mark "Crystamycin" both visually and phonetically, that its registration and use in respect of the same products would be likely to deceive and cause confusion in the course of trade and among the purchasing public and that its registration should be refused under sections 10(1) and 8(a) of the .Act as well as in the exercise of tile Registrar's discretion. The appellant. therefore, prayed that the respondent's Trade Mark application be refused.

3. The respondent No. 2 in its counter statement denied the alleged visual and phonetic resemblance of the Trade Marks or that there was any real or tangible likelihood of deception or confusion arising by the simultaneous use of the respective Trade Marks. It further denied that its Trade Mark offended the provisions of sections 10(1) and 8(a) of the Act and prayed that the Notice or Opposition filed by the appellant should be dismissed and its application be ordered to proceed to registration.

4. In support of its Opposition, the appellant submitted the affidavit of Khwaja mansoor Mukhtar Shah dateu 27‑3‑1973, Attorney of the appellant and the Secretary of Glaxo Laboratories (Pakistan) Limited, the registered user of the Trade Mark of the appellant Company. Therein, he deposed that his camping had been manufacturing, stilling and distributing antibiotic products, under the Trade Mark "Crystamycin" continuously since the year 1954 when the Trade Mack was first introduced in the Pakistan market. That the said products manufactured by his company were sold to the public through chemists and drugists' shops throughout the main cities of Pakistan, to whom they were distributed for sale by the company. In paragraph 8 of the affidavit were set out the rupee value of all sales effected annually commencing from 1954/55 through 1971/72. The sales in the year 1954/55 were of the value of Rs. 30,360 but they rapidly increased and in the relevant year that is. on 19th January 1970, the date of the opposed application, they were well over Rs. 8,00,

000. The deponent further deposed that his company's "Crystamycin products had been advertised extensively in Pakistan. and in paragraph 11 of the affidavit, he mentioned the approximate yearwise expenditure incurred by the company in each publicity. In the relevant year, the advertisement expenses were Rs. 7,

598. It was further stated that in view of the large sale; and publicity, the Tirade Mark 'Crystamycin' is now well‑known throughout Pakistan to doctors, pharmacists and the trade, and that the sale of "Vistamycin" antibiotic preparations would cause confusion and/or deception among them, particularly in the case of medical prescriptions which are written illegibly by the doctors.

5. In support of the application, the respondent No. 2 filed the affidavit of Takeshi Nakagawa. its President, dated 21‑5‑19

73. This deponent adopted the contents of the counter statement and repeated legal arguments and submissions, although the same are not strictly permissible in affidavit evidence, in support of the assertion that the respective 'prude Marks were different both visually and phonetically. The deponent, however, denied they accuracy of the facts and figures regarding sales and publicity of the 'Crystamycin' products deposed in the affidavit of Khawaja Mansoor Mukhtar Shah and put the appellant to strict proof thereof. Therefore, the latter submitted a reply affidavit which only served to confirm what was stated earlier in his main affidavit.

5. The Assistant Registrar heard counsel for the parties and by the impugned decision dated 17‑6‑74, he dismissed the opposition filed by the appellant and order the respondent's Trade Mark 'Vitamycin' to proceed to registration. He held that as the Trade Marks had a common suffix 'mycin', the earlier portions of the marks assumed importance for purposes of comparison and distinction and he relied on case‑13w in support of this proposition. He observed that in the instant case, the first syllable 'Cry' was dissimilar from the first syllable Cry of the proposed mark and. therefor, in his view, the marks as well as there pronunciations were dissimilar and different. Further, as medicines are sold by chemists on medical prescription, the likelihood of confusion amongst the public would be eliminated.

7. As the appellant has strongly relied on sections 10(l) and 8(a) of the Act, it will‑ be convenient to quote the relevant portions thereof :‑ "

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, disentitled to protection in a Court of Justice ; or "10 ‑(1) Save as provided in subsection (2) no Trade Mark shall be registered in respect of any goods or description of goods which is identical with a Trade Mark belonging to a different proprietor already on the register in respect of the Ram,,* goods: or description of goods or which so nearly resembles such Trade Mark as to be likely to deceive or cause confusion."

8. Two matters are not in dispute. Firstly, that the proposed Trade Mark 'Vistamycin' of the respondent No. 2 is not identical with the Trade Mark 'Crystamycin' already registered in the name of the appellant. Secondly, the koods in respect of which the 'Vistamycin' mark is proposed to be registered, Piz., "drugs and medicines particularly antibiotics" are the same goods covered by the 'Crystamycin' registration. Therefore, in considering the statutory bar of section 10;1) of the Act to the registration of the Trade Mark 'Vistamycin' because of the prior registration of the Trade Mark 'Crystamycin', the only question is whether the Trade Mark 'Vistamjcin' so nearly resembles the Trade Mark 'Crystamycin' as to be likely to deceive or cause confusion. The same question arises for determination under ground of opposition based on section 8(a) of the Act, which prohibits registration of a Trade Mark, the use of which would be likely to deceive or cause confusion and thus be disentitle to protection in a Court of justice. The distinction between the two subsections, however. is that under section 10(1), the opponent may rely purely on his statutory right obtained by registration of his Trade Mark and no user of the mark need be shown by him. Under this section, the question of likelihood of deception or confusion becomes purely a question of comparison of the marks themselves for similarity; whereas, under section 8(a), the opponent, who alleges similarity of the marks, must further show that having regard to his user, the use of the mark by the applicant for registration for the same goods would be likely to deceive or to cause confusion. The nature and scope of the enquiry under each of the two sections 8(a) and 10(1) of the Act, have now been well‑settled. To this connection, reference may be made to Karly's Law of Trade Marks and Trade Names", 10th Edition, 1972, Article 10‑02 which summarises the scope of the enquiry under each of the corresponding sections 11 and 12(1) of the U. K. Trade Marks Act, 1938. and the case of Smith Hayden & Co. Ltd's. Application ((1946) 63 R P C 97) where Everashed, J. formulated these questions, which have substantially been approved by the House of Lords in the case of 'Bali' Trade Mark (1969 R P C 472).

9. Referring to section 10(1) of the Act, the submission of Mr. Ebrahim Ahmad, learned counsel for the appellant, is that the Assistant Registrar erred in his approach to the question of similarity of the Trade Marks. In the first place, in breaking up the words, not only did he wrongly assume that the first syllable of each of the two words was 'Cry' and 'Vie' instead of 'Crys' and 'Vis', but he left out of consideration there maining and major portions of the words and, further failed to compare the Trade Marks as wholes. In fact, the Assistant Registrar's approach was that as each of the two words had common suffixes, regard had to be paid to the earlier portions of the words for purposes of comparison and distinction and, in his view, as the first syllable of each of the two words, 'Cry' and, 'Vie' were different, he held that the marks were dissimilar and, accordingly, decided the question of conflict and likelihood of deception and confusion in the negative. No doubt, the rule relating to comparison of Trade Marks, particularly word marks, applied by the Assistant Registrar is well‑settled and has recently been approved by their Lordships of the Supreme Court in Abdul Wahid v. Haji Abdul Rahim and another (P L D 1973 S C 104 ) while comparing similarity of the Trade Marks 'Daigon' and 'Saigon'. But, it is an equally well established rule of comparison of Trade Marks that common marks shall be compared as wholes. It is stated in Kerly's 'Laws of Trade Marks ant Trade Names" Articles 17‑19, as follows :‑ "Where common Marks are included in Trade Marks to be compared, or in one of them, the proper course is to look at tire marks as wholes, and not to disregard the parts which are common." The rule is well‑illustrated by Farwell, J., In re : An Application by William Bailay Birmingham Ltd. ((1936) 52 R P C 136). In that case, an application for registra tion of the Trade Mark "Erectiko" in Class 49 for Toys was opposed by the proprietor of the Trade Mark "Erector" registered for contractual toys. The Assistant Registrar left out of consideration the common portion of the Trade Marks, viz., 'Erect' and held that as the suffix 'or' in 'Erector' and 'iko' in 'Erectiko' were different, the two words were dissimilar. This approach of the Assistant Registrar was criticised by Farwel1, J, who observed at page 151 as follows :‑ "There are two other matters in the Decision of the Assistant Registrar which appear to me to indicate that in dealing with this question he dealt with it not quite on the right lines. The first is a matter of more importance than that with which I have just dealt, He takes the two words 'Erector' and 'Erectiko' and divides them into two; be eliminates 'Erect' from the two words and then proceeds to compare the suffix 'or' and 'iko'. In my judgment, that is wholly wrong attitude to adopt in considering a case of this kind. I do not thinly it is right to take a part of the word and compare it with a part of the other word one word must be considered as a whole and compared with the other word as a whole. In my judgment, it is quite wrong to take a portion of the word and say that, because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. There may be two words which ins their component parts are widely different but which, when read or spoken together, do represent something which is so similar as to lead inevitably to confusion. I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word:'

10. That the marks should be compared as wholes despite the difference in the prefix, is well‑illustrated in the case of Aristoe Ltd. v. Rysta Ltd. ((1945) 62 R P C 65) cited by Mr. Ebrahim Ahmad, in which the registration of the word 'Rysta' for stockings was refused in view of the earlier registered Trade Mark 'Aristoe' also registered for stocking, on the ground that the marks were substantially similar in sound. A reference may also be made in this connection to the case of Bristol‑ Myer' Company and others v. Bristol Pharmaceutical Company Limited (1968 R P C 259) in which it was held that the defendant's Trade Mark 'Bristacyn' closely resembled the plaintiff's Trade Mark 'Pristacin' on the ground that the marks were almost identical in sound and could very easily be confused and a temporary injunction was accordingly granted. That was, however, a case of passing off and infringement, but the issue relating to confusing similarity of the two Trade Marks was the same as that in a Trade Mark opposition case.

11. Mr. Iqbal Kazi, learned counsel for respondent No. 2, on the other hand, supported the Assistant Registrar's view and went further by suggesting that each of the two words has to broken‑up into two parts. namely, "Crysta‑mycin" and "Vista‑mycin" and that the latter part 'myein' was common to the trade and non‑distinctive while the earlier parts "Cryeti"and "Vista" were different in sound and meaning. According to counsel, 'Crysta' in the appellant's mark suggested "Crystal, Crystalisation", while Vista' in the respondent's mark means a "Narrow passage between trees, perspective". This argument, in my view, is unreal and fanciful. It cannot be denied that the majority of persons, who are likely to have any connection with the products sold under the Trade Mark, are persons who have poor knowledge of the English language and are not likely to be impressed with the meaning or association of meaning of the broken‑up words. Counsel referred to the Supreme Court decision in Daigon v. Saigon, Trade Marks case mentioned earlier, which were held to be dissimilar because of dissimilarity in the first syllables. That case, however, in my opinion, is distinguishable for more than one reason. It related to two syllabic words which are more easily remembered than four syllabic words as in the present case ; the word 'Saigon' is well known geographical name and finally the prefixes are more emphatic and hard.

12. I am, therefore, inclined to agree with Mr. Ebrahim Ahmed that the learned Assistant Registrar did not correctly approach the question of comparison of the two Trade Marks. In the first place, in breaking up the words, he wrongly considered the prefix syllable of the respective marks as 'Cry' and 'Vie' instead of ',Crys' and 'Vis' and left out of consideration the remaining and major portions of tae words and also further failed to compare the words as wholes. A close scrutiny of the words shows that their Structure is almost the same. Each word has four syllables, the major portion of each is identical in sound and appearance, vie., "tamycin" while the prefix syllable 'Vis' and 'Crys' sound similar, 'V' and 'C' being soft consonants. When the words are imperfectly hard, specially on the telephone or are carelessly pronounced, the prefix syllable is likely to be missed. The words, in my opinion, when pronounced bear close resemblance.

13. Reverting now to the appellant's case under section 8 (a) of tile Act, the appellant has established prior user and publicity of its Trade Mark 'Crystamycin' since the year 1954, arid in view of the substantial sales and advertisement expenses mentioned in the affidavit of Khwaja Minsoor Mukhtar Khan, above‑mentioned, which I have no reason to disbelieve, it would appear that the mark has acquired popularity among the concern persons throughout Pakistan. The products and the customers are the earn & and, as I have held earlier, the marks are similar, there is no difficulty in hold ing that if the mark of the respondent No. 2 is permitted to be registered and used, there would be a tangible danger of likelihood of deception and confusion in the trade and among the purchasing public. No other circum stance has been urged by Mr. Iqbal Kazi which would easure avoiding the .likelihood of deception or confusion. However, the Assistant Registrar considered the other circumstances, namely, that the antibiotics would be sold on medical prescription and that the chemists, who ware well‑versed with Trade Mark of medical products would be extra‑cautious. But there is n evidence on record to suggest that this product can be sold only on medical prescription when the fact is, that in this country, they can be purchased over the counter at chemists shops. Even assuming that the antibiotic preparations are sold on medical prescriptions, it is well‑known that they are generally Illegibly written and the possibility of mistaking the one for the other cannot be excluded. In the case of pharmaceutical products, the public mast be protected from possibility of confusion. And, in the second place, it is the ultimate purchasers who have to be taken into consideration and who are likely to be misled by an imperfect recollection of the appellant's mark, and not the so‑called expert chemists.

14. The respondent's Trade Mark 'Vistamycin' being a new mark, no yet in use, the burden of proof was on the respondent No. 2 to satisfy the Tribunal that registration and use of its Trade Mark 'vistamycin' would not be likely to deceive or cause confusion, which it has failed to discharge. As the respondent No. 2 has failed to discharge the burden of proof and the case being in dubio, the application must be refused as held in Eho v. Dunn (7 R P C 311).

15. For the foregoing reasons, I would allow the appeal, set aside the impugned judgment of the Assistant Registrar and order that the Trade Mark Application No. 52890 be refused registration. There will be no order as to costs. S. A. H. Appeal allowed.