P L D 1975 Karachi 582 (PLP)

11. Learned counsel, however, referred me to another Privy Council case namely Wheat Co. v. Kellog Co. (AIR 1938 P C 143). The facts of this case are some what complicated but it is not necessary for my purpose to burden this judgment with a recital of those facts and it suffices to quote the passage upon which learned counsel placed reliance :‑ "By section 13 it is provided that after registration the proprietor "shall have the exclusive right to use the trade mark to designate articles manufactured or sold by him." By section 11 however registration may be refused "if the so‑called trade mark does not contain the essentials necessary to constitute a trade mark properly speaking." The effect of this provision is that a word is not registrable under the Act as a trade mark which is merely descriptive of the character and quality of the goods in connexion with which it is used : (1911) A C 78 and (1924) S C R

600. It is however clear that such a descriptive word may possibly have acquired a secondary meaning, and have come to mean or indicate that the goods in connexion with which it is used are the goods of a particular manufacturer; in other words that the word in question has its secondary meaning become indicative of origin : (1910) 1 Ch.

130. But the onus on the person who attempts to establish this secondary meaning is a heavy one. If in addition to being descriptive of the goods in connexion with which it is used, it is in fact the name of the product of which those goods are composed, then it would seem to their Lordships that a state of affairs exists which makes it extremely difficult that the word should ever become indicative of origin, so a: to render it capable of registration as a trade mark. The difficult) may sometimes be overcome in a case where the alleged trade‑mark is in fact a description of the goods, but is not recognized by the trade or the public being such, and is taken by them as being a fancy name, e. g. where a chemical description not generally known to the public has been adopted, or where an unusual substance unknown to the public has been adopted, or where an unusual substance unknown to the public is being used in the manufacture. Where the words are purely descriptive and in common use, it is even more difficult to conceive a case in which they could acquire a secondary meaning. It is, however, contended that in the present case such extreme difficulty has been surmounted, and that the evidence has established the fact that the words "shredded wheat" have acquired a secondary meaning, and when applied to biscuits mean shredded wheat biscuits manufactured by the plaintiff and by no one else. Their Lordships therefore proceed to consider the evidence, calling attention, however, to the fact that the oral evidence was in point of time not specifically directed to the date when the trade mark was registered, but referred to the time at which each particular witness was speaking and was therefore more strictly relevant to the general question of passing off." I am wholly unable to see how this case is of any assistance to counsel. It is true, of course, that we are concerned in the present case both with the primary and the secondary meaning of the expression in question. In regard to the primary meaning I have already given my reasons for rejecting the meaning sought to be put upon the word. As to the secondary meaning the only evidence, as I have already stated, available for establishing such a secondary meaning is the one to which I have referred, namely, the usage in the United States of America.

12. Learned counsel, however, argued that in view of the increasing trade between different countries of the world and the growing phenomenon of a Trade Mark or Trade Name acquiring international reputation I ought not to take so narrow a view of the growth of a secondary meaning as to confine my inquiry to the limits of Pakistan. He relied upon a passage in the well known treatise "Karly on Trade Marks, 9th Edition" which reads thus:‑ "Provided, however, that the claim of proprietorship is made in good faith, it is difficult to see how it can be objected to, notwithstanding that the application (or a registration based on it) may later be held open to some objection. In particular, it is difficult to see what objection there can be to a claim to proprietorship of a mark which is not in use and has no reputation in this country, whoever makes it, provided at least that he genuinely means to use it. There has, nevertheless, been a tendency in recent years to disqualify on this ground applications for the registration in the United Kingdom of marks which do have reputation (in some other proprietor) elsewhere. With the revival of international trade and the growth of international publicity, it may well be that our law ought to make greater pro vision that it does for safeguarding the rights of the owners of foreign marks. It does not follow, however, that section 17 (1) is the right tool for the purpose." I do not need to disagree with the learned commentator for, as he himself observed, the remedy lies in the amendment of law and not in, as it were, an expanded interpretation of the statute. The law is no doubt a growing instrument of the administration of justice and, within certain limits, inter pretations do change by reason of changed conditions but such change as can legitimately be brought about by interpretation must be confined strictly within the statute. Anything more is the proper prerogative only of the Legislature.

13. My view that I must give to the word the meaning which the ordinary person would attach to it is supported by a number of cases in England and I propose briefly to refer only to three. In 14 R P C 900 Mr. Justice Kekewich began his judgment thus :‑ "In considering the question whether a particular word has reference to the character or quality of the goods, one must not regard the word from an etymological point of view, such as the point from which a man of high education would regard it, but from the ordinary point of view which would be taken by the ordinary British subject dealing with the particular goods."

14. If the word "Pakistani" be substituted for the word "British" I think, with respect, that the passage correctly states the law in Pakistan.

15. The House of Lord's case (15 R P C 476) : in the matter of an application of the Eastern Photographic Materials Company for its Trade Mark the question no doubt was somewhat different, namely, whether or not the word involved was an invented one. But nevertheless a passage from the speech of Lord Herschell is, I think, instructive: "I do not think the combination of two English words is an invented word, even although the combination may not have been in use before, nor do I think that a mere variation of the orthography or termination of a word would be sufficient to constitute an invented word, if to the eyes or ear the same idea would be conveyed as by the word in its ordinary form. Again, I do not think that a foreign word is an invented word, simply because it had not been current in our language. At the same time, I am not prepared to go so far as to say that a combination of words from foreign languages so little known in this country, that it would suggest no meaning except to a few scholars, might not be regarded as an invented word. It is in this respect that I desire to qualify my assent to Lord Justice A. L. Smith's proposition that an invented word can never have a meaning."

16. I refer to the emphasis that is laid on excluding meanings that would suggest themselves only to a few scholars.

17. Finally, in In re : Trade Mark of Keystone Knitting Mills Ltd. (45 R P C 421) the Court of Appeal observed:‑ "Can it be said that the word "Charm" fulfils that test? I think one has to look at the word which is registered, not in its strict gramma tical significance, but as it would represent itself to the public at large who are to look at it and to form an opinion as to what it connotes."

18. Then again in order that the word be held objectionable by reason of clause (d) of section 6(1) of the Trade Marks Act it must have "direct reference to the character or quality of the goods" Mr. Ajmal Mian argued that the reference might be slight and I do not disagree but, however slight, the reference must be direct. Although it might be difficult in some cases to apply the distinction there is yet I think a definite difference between a word which is merely suggestive and one which refers directly to the character and quality of the goods. In In re: Burroughs Welcome cfc Co.'s Trade Mark (21 RPC217), an observation was made which is I think relevant although the word in question there was an invented one. Vaughan Williams. L. J. said:‑ "I do not myself think that having regard to the judgment in the "Bovril" case, it could be said that a word is to be treated as a descriptive word because it might suggest some idea to the hearer. It seems to me that the Trade Mark which was under discussion in the "Bovril" case proves the contrary. It is perfectly impossible to say that the word "Bovril" used in respect of an extract of meat did not suggest beef, or an ox, as the materials from which the extract was made. But the mere fact that the word Bovril did contain such a suggestion, to my mind is inconsistent with the idea that the fancy word must be absolutely unsuggestive it must not be descriptive, but it need not be absolutely unsuggestive."

19. In the matter of the application Comagnie Industrlelle De Petroies (24RPC585) to register a Trade Mark Warrington, J. said:‑ "There is a second application which has to be mentioned and that is the application by the applicants that the opponent's mark "motorine" may be struck off the Register as not being properly registrable under the Act of 1905. Now the Act of 1905 defines a registerable mark as follows: it say it "must contain or consist of at least one of the following essential particulars," and the particulars which I think are material for the present case are "a word or words having no direct reference to the quality or character of the goods". The word "direct" is inserted in this Act for the first time. In the previous Acts it was "a word or words having no reference to the character or quality of the goods". The ward "direct" is now inserted. Now is the word "Motorine" a word which has direct reference to the character or quality of the goods? The goods in question consist of lubricating oil. I cannot see how the word "Motorine" has any direct reference to the character or quality of those goods. No doubt it suggests that in some way they are oils which are either to their character or their quality, and such reference as the use of the two syllables of the word "motor" in the word "Motorine" as to the character or quality seems to me not to be that direct reference which the present Act contem plates."

20. The second contention that was raised by learned counsel for the appellants was that the word "Up" being a common word of the English language must be allowed to remain, as it were, public property and not monopolized by any one particular trader and he referred to the general tendency in big companies to attempt to appropriate for their own exclusive use what ought properly to belong to the public domain. Here again a number of cases were cited to me but before I consider these I should like to adopt what Das, J. said in A I R 1955 Cal. 519:‑ "Reference to cases is not of much help in finding out whether or not a particular word has direct reference to the character and quality of goods unless the decision lays down a principle of construction. The cases merely indicate the length to which the Courts have gone in construing the expression `direct reference to the character and quality of the goods'." Reliance was first placed on In re : "Uneeda" Trade Mark ((1901) 1 Ch. 550.). The word involved here was, in a sense, invented being "Uneeda" but, as is obvious, it is really compounded of three ordinary words, namely, "You need a". It was claimed in that case that it was also the name of an aborigine Indian maiden but with that aspect of the matter I am not at present concerned. The passage upon which stress was laid reads thus‑‑ "The word, therefore, I take it, was and was intended to be a misspelling of the words "You need a" made into one word, the sound remaining identical. Now, is that an invented word within the meaning of the Act? As I read what was sad in the House of Lords in the "Solio" Case, it is impossible for me to hold that it was an invented word, "Phit‑essi". "Is that an invented word?" "Was asked and Lord Herschell in an interlocutory observation stated. Probably not, ` because it is mere misspelling. It suggests at once the English word". Mr. Moulton is quite entitled to say that that was a mere interlocutory observation, and that no Judge ought to be bound by any observation which he makes in the course of an argument; but when I come to the considered judgment of Lord Herschel], when he is dealing distinctly with the question of what is the meaning of "invented word" in this subsection, he says this (2)L "An invented word is allowed to be regis tered as a trade mark, not as a reward of merit, but because its regis tration deprives no member of the community of the rights which he possesses to use the existing vocabulary as he pleases."

21. With respect I cannot see, however, so far as the statute is concern ed, why such a word cannot be registered as a Trade Mark. Although learned counsel for the appellants did not expressly say so, quite clearly underlying his argument was the requirement of clause (e) which requires "any other distinctive mark" and reference was made to the Calcutta case (A I R 1955 Cal. 519) for the proposition that this concept of a distinctive, mark is to be imported in every one of the clauses of section 6(1) of the Trade Marks Act. Reference was made to this passage in that case:‑ "The above observations clearly support the view that distinctiveness must be proved to exist in respect of the clauses (a) to (e) of section 6(l). It does not appear as S. R. Das Gupta, J. thought that Lawrence L. J. pointed out that the above question which was answered in affirmative by Lord Hanworth, did not arise in that case. Reference to the judgment of Lawrence L. J. at p. 333 would indicate that he merely reserved his opinion on this question. The same view as to the effect of section N(5) corresponding to section 6(1) was taken in (1937) 54 R P C 161 at p. 179(G). In Kerly on Trade Marks at page 105, it is stated that‑ Although the paragraphs of section 9(1) are to be considered as in dependent, in each case the mark proposed to be registered must not only fall within the terms of at least one paragraph, but must also be distinctive. The case above cited has been followed by a Bench of this Court. Harries, C. J., and Chatterjee, J. in their decision in `B. C. L. Ltd. v. Bangodays Cotton Mills Ltd., Appeal No. 66 of 1947 D/23‑6‑1949 (Cal.)(O). It was laid down that no trade mark can be validly registered unless it contains at least one of the particulars enumerated in section 6(1), Indian Trade Marks Act, 1940 and that to comply with the subsection the ,particulars relied on must also be distinctive". My conclusion there ‑fore is that even if the word "Rasoi' cannot be said to have such direct reference to the character and quality of the goods within section 6,1)(d) of the Act, the mark "Rasoi" must still be proved to be distinctive in order to be eligible for registration."

22. I regret I am wholly unable to agree. Upon a plain interpretation of section 6(1) each of the clauses lays down a different requirement and the subsection insists upon compliance with any one. Indeed in 15 R P C 476, a case to which I have already made reference, Lord Herschell said:‑ "Addressing myself, then, to the terms of the substituted section, I am unable to find any justification for qualifying the provision (d) an invented word "or words" by the condition that they shall have no reference to the character or quality of the goods. By the words which introduce the section, the particulars designated under the headings (a) to (e) are treated as separate and distinct. "A Trade Mark must consist of at least one of the following essential particulars". What warrant is there, then, for transferring words found in any one of these particulars to any other of them. With all deference to the learned Judges who have thought otherwise, I can see none."

23. Reliance was then placed upon In re : Joseph Crossfield & Sons ((1910) 1 Ch. 130) in which the word in question was "perfection". The word had been used as a Trade Mark for soap; having referred to the names of various soaps including Perfection Soap, Fletcher Moulton L. J. observed:‑ "These names or brands are widely known to the makers of soap, and many of them are so widely known to the public that it may well be that no maker could honestly put out soap for sale in the general market under one of these well‑known names. But that by itself is not sufficient to establish the case of the applicant. The name he bas selected is the ordinary laudatory term "Perfection". Speaking only for myself, I am not much impressed by the argument that such a word ought not to be allowed to become a trade mark because a more perfect method of making soap might be invented, and that in such case the use of the trade mark would tend to deceive the public. The use of inordinate laudation of his goods by a trader is too deeply rooted and too ineradicable not to be well known to all the public, and I do not believe that any person buying soap would suppose that pit was perfection merely because the maker calls it so. But to my ,mind this tells against the applicants. It shows that the word is one that probably. and I might almost say naturally, would be used by" others in the. description of their soap. To me there is not much difference in this respect between the noun "perfection" and the adjective "perfect". Therefore I think we ought not to allow it to become a trade mark. I regret to have so to decide, because I feel that there has grown up a vast trade round the word which cannot be protected by the agency of the Trade Marks Act, but must be defended so far as it can by other and less efficient methods. But it is the con sequence of the applicants having been so unwise as to choose a mere laudatory word for their brand. Had the word been less objectionable in its nature the case that has been proved before us would have influenced me greatly, for it shows to my mind that throughout about half of England the past user of the word has identified it in the eyes of the public with the goods of the applicants."

24. It is to be observed that, as the learned Lord Justice himself said, he: came to the conclusion reluctantly and was greatly influenced by the fact that the word was laudatory in character. If I were to apply this case to the present it would only be upon the basis of accepting the appellants' conten tion that the word "Up" is descriptive and I have already held that I cannot accept that meaning of the word.

25. Learned counsel then cited the case of Yorkshire Copper Works v. Registrar of Trade Marks ((1954) 1 A E R 570) and really the quotation from another case which. appears at .page 576:‑ ".. . . there seems to me to be one principle applicable to them all, a. principle which is stated in the Perfection Soap case by Sir Herbert Cozens Hardy then the Master of the Rolls, and by Farwell, L. J. The principle is thus put by Sir Herbert Cozens Hardy (26 R P C 854) `Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure.' 'Farwell, L. J., observes (ibid 890): `The Court is careful not to interfere with other persons' rights further than is necessary for the protection of the claimant, and not to allow any claimant to obtain a monopoly further than is consistent with reason and fair dealing'."

26. In my view, what I have already said in reference to the case in. (1901) 1 Ch. applies here also.

27. Reference was then made to two Indian cases, the first being Ram .Rakhpal v. Amrit Dhara Pharmacy (A I R 1957 All. 683) the relevant passage reading thus:‑ "Just as a word is not necessarily qualified for registration merely because it is an invented word or a word ha‑ring no direct reference to the character or quality of the goods and must in addition be a trade mark, as defined in the Act, so also any other distinctive mark must be a trade mark before it can be registered. When the distinctive mark is an ordinary plain word heavy onus lies. upon the applicant to prove that it has acquired distinctiveness; see then "Perfection case" at page 128 and the "Classic" case (D) at page

297. Paragraph (e) deals with words which are not registerable under the previous paragraph and particularly paragraph (d) and, in the words, of Farwell, L. J. in "Boardrnas's Mixture" case (B) "when the Legislature has shown that certain words are prima fade not included the Court ought to be careful in exercising a discretionary jurisdiction to enlarge such area and should remember that the owner of a trade mark under the Act enjoys a monopoly after seven years for all time". The reason for the rule as given in the Restatement of the Law, Volume III, paragraph 715, at page 555, is : "Ordinary words were deemed inappropriate because they conveyed a meaning unrelated to the source of the goods and because, as common words of the language, they were deemed to be of the public domain and not subject to exclusive appropriation which might tend to improvish the language and impede competition." Here again I think, with respect, that the learned Judge is unduly importing considerations involved in clause (e) into clause (d).

28. The other Indian case that was relied upon is Bengal Immunity Co. Ltd. v. D. C. Manufacturing Co. (A I R 1959 Cal. 636) from which the following observations were emphasised:‑ "(12) But argued Dr. Gupta, a refusal of the applicant's prayer for registration of the mark "B. I. Phlogiston" on the ground of its resemblance to "Antiphlogistine" would amount practically to a recognition of the opponent's monopoly in a common English word "Phlogiston". No person has a monopoly in common words of the language and he cannot obtain the monopoly in such a word by merely corrupting the ordinary form of the word. Dr. Gupta drew our attention to the decision of the House of Lords in Yorkshire Copper Works Ltd v. Registrar of Trade Marks (1954) 1 W L R 554 and the observation of Lord Cohen therein, where the importance of the Court being careful not to allow any claimant to obtain a monopoly further than is consistent with reason and fair dealing was emphasised. There Lord Cohen quoted with approval the statement of the principle by Sir Herbert Cozens Hardy in these words in the Protection Soap case ; In re : Crossfield & Sons Ltd., (1910) 26 R P C

837. Wealthy traders are habitually eager to enclose art of the great common of the English language and to exclude the general public of the present day and of the future from access to the inclusure," and to Farwell L. J.'s observation in the same case: "The Court is careful not to interfere with other person's right further than is necessary for the protection of the claimant to obtain a monopoly further than is consistent with reason and fair dealing." (13) Of the wisdom of the principle laid down in these words, there can be no doubt. The provisions of section 6 of the Indian Act are intended to protect all common words of the language from the mono poly that would result from registration as a trade mark. The Yorkshire Copper Works Ltd. case (1954) 1 W L R 554 to the observa tions in which Dr. Gupta has drawn our attention was itself concerned with the question whether the word "Yorkshire" was registrable as a trade mark. It did not come within paragraph (a), (b), (c) or (d) of sec tion 9(1) of the English Act which is almost word for word the same as section 6 of our own Act. What had to be decided was whether it fell within section 9 (1)(e), on the ground that it was a distinctive mark. The Court held against the contention that it was so distinctive and it was in this connection that the observations of Sir Herbert Cozens Hardy and Farwell L. J. were quoted with approval by Lord Cohen." This again really is a case on clause (e).

29. I was then referred to the passage in Kerly on Trade Marks and I think it unnecessary to deal with that any further.

30. Learned counsel then brought to my notice two cases of the Supreme Court in which, according to him, their Lordships have frowned upon what he described as the enforcement of a monopoly upon any person in a common word of the language. The first of these is Pakistan Soap Factory v. Chittagong Soap Factory (P L D 1970 S C 460) where the dispute was on the registration of the numerals 1947 there being a prior registration in respect of numerals 1937. Learned counsel did not refer me to any particular passage in the judgment and I have read the judgment carefully but in vain to find any such observa tion as would support his claim.

31. The other Supreme Court case is the one reported in Abdul Wahid v. Abdul Rahim (P L D 1973 S C 104) where the dispute was in relation to three words, namely, Saigon, Daigon and Dragon. The judgment turns entirely upon the question of a similarity or otherwise between these words and again I can see nothing to support any wider proposition such as the learned counsel asserted.

32. It was finally argued that the Registrar would at least have exercised a sound discretion by refusing to decide the application of the respondents until the appellant's own application for registration of their trade mark namely "Bubble Up" had been decided for rather to hear the two matters together. It was claimed that in acting as he has done he has prejudiced the appellants in that other case. Now, admittedly this was a question of discretion and I would be justified in interfering only if I thought that the discretion was improperly exercised.

33. Reliance was placed by learned counsel upon a case of this Court reported as Basra Soap Company v. Punjab Soap Factory (P L D 1973 Kar. 279). Reliance was specially placed upon this passage: "The further objection to the procedure adopted in the Trade Marks Registry is that, though Basra Soap Factory's application was pending for registration, and in these proceedings the opposition filed by the Punjab Soap Factory had not been decide:, still, without waiting for such decision, the Trade Marks Registry, registered the trade mark of the Punjab Soap Factory, even though, as the aforesaid notice would show, the Registry was fully aware that a prior application of Basra Soap Factory for registration of an identical or similar trade mark was then pending. It should also be presumed that the Registry was also aware that in the proceedings on Basra Soap Factory's applica tion, the Punjab Soap Factory had filed opposition which had yet to be decided. Still, the Registry did not wait and proceeded to register the trade mark of the Punjab Soap Factory, and when the Basra Soap Factory's application and the opposition of Punjab Soap Factory filed therein came to be heard, the opposition was accepted and the application of Basra Soap Factory was rejected only on the ground that Punjab Soap Factory was proprietor of an identical or similar trade mark already on the register. This whole procedure, to say the least, was irregular and has caused prejudice to the Basra Soap Factory. In such cases, the proper procedure to be followed by the Registry would be to connect and bear together the various applications and oppositions with regard to identical or similar trade marks, if applica tions for these trade marks are pending in the Registry. Further, it would have been proper for the Registry to decide the opposition of the Punjab Soap Factory, fir, t and then proceed to consider the application of the Punjab Soap Factory or of the Basra Soap Factory, as the case may be, for registration of their respective trade marks."

34. These remarks, I think, cannot be properly understood without those which immediately precede it in which the learned Judge refers to rule 23 of the Trade Marks Act. He observed:‑ "Implicit in this rule is the principle that notice should be sent to all the persons or applicants who either have a registered trade mark or have sought registration of a trade mark whenever an application is made for registration of a trade mark which is identical with, or resembles, a trade mark already on the register or amongst the pending applications. In fact a notice under rule 23 was sent to the Punjab Soap Factory with regard to the trade mark offered for registration by the Basra Soap Factory. But no similar notice was sent to Basra Soap Factory that another party, that is the Punjab Soap Factory had offered for registration a trade mark identical with or resembling tae trade mark of Basra Soap Factory, Mr. A. A. Zari stated that Punjab Soap Factory's trade mark was advertised under the rules, and there fore Basra Soap Factory should be deemed to have notice of the application made by the Punjab Soap Factory. It may be so, but notice should also have been sent to the Basra Soap Factory, as such notice was in fact sent to the Punjab Soap Factory, when the trade marks Registry proceeded to consider the registration of the Punjab Soap Factory on an application which was later in time to that of the Basra Soap Factory, and without waiting for decision of the opposi tion of the Punjab Soap Factory in the proceedings pending on the application of the Basra Soap Factory."

35. Really, therefore, what the learned Judge was impressed by was the fact that a party which would have been affected never really had an oppor tunity to present its case before the Registrar of Trade Marks. In the present case also it is true that no notice was given to the appellants but it is admitted that the appellants did file an opposition and were fully heard. The question of the issue of a notice to them, therefore, is academic. The purpose for which a need for notice is emphasised was duly and substantially fulfilled in this case and reliance, therefore, upon the reported case is, in my view, misplaced.

36. I am dealing after all in an appeal against an official whose daily business is to consider matters of this kind and I think it would be wrong for me to up‑set his decision unless it is clearly and manifestly erroneous. In P L D 1973 S C 104 to which I have already referred their Lordships observed: "It has been repeatedly held by the Superior Courts that the Registrar in coming to the conclusion whether a trade mark should or should not be registered, exercises the discretion vested in him by statute and the Court in appeal should always be extremely loath to interfere with that discretion. Such discretion should not be interfered with unless the Court comes to the conclusion that the Registrar in coming to the conclusion that he did was clearly wrong or patently in error."

37. In my view, therefore, this appeal fails and I hereby dismiss it with costs. S. A. H. Appeal dismissed.