P L D 1986 Karachi 371 (PLP)

The appellant Company, who deals in cosmetic products, filed an application, dated 23‑11‑1978 for registration of the trade mark "Lady Manhattan" with the device of a Bower in Class

3. By the impugned order, dated 31‑10‑1979 of the Assistant Registrar of Trade Marks the application was rejected. I have heard Mr. A. A. Zari, learned counsel for the appellant‑Company. None appeared for the respondent, Assistant Registrar of Trade Marks.

2. According to the impugned order, the applied mark comprises of two words namely "Lady" and "Manhattan" and the word "Lady" has been declared common to trade in respect of all goods in Class 3 and the word "Manhattan" is a geographical name in its ordinary significance. According to the impugned order Manhattan is a village, a city and also a town and that Manhattan and New York are virtually synonymous. The contention of the appellant that the mark "Lady Manhattan" is a fanciful and imaginary word was not accepted on the ground that when written together these two words do not make out a single, fanciful and imaginary word. According to the Assistant Registrar, the words have separate entity and have different meanings and their combination does not make out an imaginary and fanciful word and that the idea conveyed by the two words is noticeable to a common man. According to the impugned order, the mark consists of one word being common to trade and the other word of the mark is a geographical name in its ordinary significance. The mark was found objectionable under section 6(1)(d) of the Trade Marks Act, 1940 and was refused registration. In section 6(1)(d) of the Trade Marks Act, 1940, it is inter alia pro vided that a trade mark shall not be registered unless it contains 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 in Pakistan. Mr. A. A. Zari, learned counsel for the. appellant, in his challenge to the impugned order, submitted that the Assistant Registrar erred in taking into consideration the fact that Manhattan is a village and a city and a town in U. S. A. and made this fact as a basis for refusing registration on the ground that one of the two words in the mark, for which registration was applied, was a geographical name. According to the learned counsel, if the name of a village or town or city of a foreign country i.e. a place outside Pakistan, is used in the mark, this by itself cannot be made a ground for refusing registration under section 6(l)ld) inasmuch as sec tion 6(1)(d) refers to "geographical name . . . . . . . . in Pakistan", and Manhattan is geographical name of a place outside Pakistan. The learned counsel relied upon the case of Hochest Aktiengesellschaft v. The Assistant Registrar of Trade Marks. a judgment of the Supreme Court in Civil Appeals Nos. K‑37 and K‑38 of 1979, dated 22‑9‑1981. The relevant passage of the aforesaid judgment of the Supreme Court is reproduced hereinbelow :‑ "Clearly the word "Kalle" is not a word commonly understood in Pakistan and if at all, it can have only one signification, of referring to the name of a place outside Pakistan. Since in terms of section 6(1)(d), the prohibition relates to geographical names, in Pakistan, it appears to us that no valid objection could be raised to the registration of this word as a Trade Mark." The contention of Mr. A. A. Zari, learned counsel for the appellant, is correct that mark "Lady Manhattan" could not be refused registration on the ground that "Manhattan is a geographical name i.e. the name of as village or town or city in U. S. A. as in the relevant law under considera tion i.e. section 6(1)(d) of the Trade Marks Act, 1940, the geographical name is restricted by the words "in Pakistan". The contention of the learned counsel for the appellant is also correct that the mark "Lady Manhattan" should have been looked at as a whole i.e. in its totality and not in parts i e. the word "Lady" considered separately and the word "Manhattan" also considered separately. The mark "Lady Manhattan" taken as a whole is apparently a coined word. Learned counsel has also placed on record photostat copies of the relevant pages of the Trade Marks Journal showing that the marks : Swiss Miss, Mademoiselle De Paris, Gala of London, Medora of London, Roman Holiday, Evening in Paris and Spring Time in Paris have been registered in Pakistan as trade marks under the Trade Marks Act, 1940. Registration of such marks also supports the contention of the learned counsel that the mark "Lady Manhattan" is a mark capable of being registered and application for registration of which mark was not liable to be rejected as being objectionable under section 6(l)(d) of the Trade Marks Act, 1940. This appeal is to be allowed.

3. Miscellaneous Application No 4, of 1980 is allowed, the impugned order, dated 31‑10‑1979 of the Assistant Registrar of Trade Marks. Karachi, is set aside and the respondent is directed to proceed with the application No. 68433 for registration of trade mark "Lady Manhattan" in accordance with law. There will be no older as to costs. A. A. Appeal allowed.