P L D 1970 Karachi 604 (PLP)

(c) A distinctive device, mark, brand, heading, label, ticket, or fancy word or words not in common use. (2) There may be added to any one or more of these particulars any letters, words or figures, or combination of letters, words or figures or of any of them. (3) Provided that any special and distinctive word or words, letters, figures, or combination of letters or figures or of letters and figures used as a trade mark before the thirteenth day of August one thousand eight hundred and seventy‑five may be registered as a trade mark under this part of this Act."

9. The Patents, Designs and Trade Marks Act, 1888 substi tuted a new section for section 64 of the 1833 Act. The material part of this substituted section is subsection (1), which was as follows :‑ "64 (1).‑For the purposes of this Act, a trade mark must `consist of or contain at least one of the following essential particulars. (a) A name of an individual or firm printed, impressed, or woven in some particular and distinctive manner ; or (b) A written signature or copy of a written signature of the individual or firm applying for registration thereof as a trade mark ; or (c) A distinctive device, mark, brand, heading, label, or ticket ; or (d) An invented word or invented words ; or (e) A word or words having no reference to the character or quality of the goods, and not being a geographical name'."

10. The Patents, Designs & Trade Marks Acts of 1883 and 1888 we a repealed by the Trade Marks Act, 1905. The material provision of this Act is section 9, the relevant parts of which were as follows "

9. A registrable trade mark must contain or consist of at least one of the following essential particulars :‑ (1) The name of a company, individual or firm represented in a special or particular manner ; (2) The signature of the applicant for registration or some predecessor in his business; (3) An invented word or invented words ; (4) A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname ; or (5) Any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in the above paragraphs (1), (2), (3) and (4) shall not, except by order of the Board of Trade or the Court, be deemed a distinctive mark Provided always that any special or distinctive word or words, letter, numeral, or combination of letters or numerals used as a trade mark by the applicant or his predecessors in business before the thirteenth day of August one thousand eight hundred and seventy‑five, which has continued to be used (either in its original form or with additions or alterations not substantially affecting the identity of the same) down to the date of the application for registration, shall be registrable as a trade mark under this Act. For the purposes of this section 'distinctive' shall mean adapted to distinguish the goods of the proprietor of the trade mark from those of other persons. In determining whether a trade mark is so adapted, the tribunal may, in the case of a trade mark in actual use, take into consideration the extent to which such user has rendered such trade mark in fact distinctive for the goods with respect to which it is registered or proposed to be registered."

11. The 1905 Act was replaced by the Trade Marks Act, 1938 which is still in force. Section 9 of this Act, which corresponds to section 6 of our Act, is as follows :‑ "9.‑(1) In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register in must contain or consist of at least one of the following essential particulars ; (a) the name of a company, individual, or firm represented in a special or particular manner ; (b) the signature of the applicant for registration or some predecessor in his business ; (c) an invented word or invented words ; (d) a word or words having no direct reference to the character or quality or the goods, and not being according to its ordinary signification a geographical name or a surname ; (e) any other distinctive mark, but a name signature, or word or words, other than such as fall within the descriptions in the foregoing paragraphs (a), (b), (c) and (d) shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness. (2) For the purposes of this section 'distinctive' means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally, or where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration. (3) In determining whether a trade mark is adapted to distinguish as aforesaid the tribunal may have regard to the extent to which‑ (a) the trade mark is inherently adapted to distinguish as aforesaid ; and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid.

12. It will thus be seen that before 1905, there was no statutory test of distinctiveness of a mark for the purpose of registration. It was the Trade Marks Act, 1905 which required I the Tribunal to take into consideration the extent of user as the test of distinctiveness. But this distinctiveness was distinctiveness in fact, and to this requirement the 1938 Act added the further condition of inherent adaptation of the mark to denote any particular goods. Thus the decisions before 1938 are no longed good authority for the proposition that distinctiveness in fact by, long user is sufficient compliance with the statutory tests for the registration of a trade mark.

13. The correct principle, in my opinion, has been enunciated in Registrar of Trade Marks v. W. & G. Du Cros (LR (1913) A C 624) in which Lord Parker said But the tribunal is not bound to allow registration even if the mark be in fact distinctive. A common law mark is still not necessarily registrable. If the tribunal finds that a mark is anywhere, or among any class of people, in fact distinctive of the goods of the applicant, it may be influenced by this fact determining whether it is adapted to distinguish these goods from those of other persons, but distinctiveness in fact is not conclusive, and the extent to which the tribunal will be influenced by it must, in my opinion, depend on all the circumstances, including the area within which and the period during which such distinctiveness in fact can be predicated of the mark in question.

14. Two other cases which are directly applicable to the determination of the point under consideration are :‑ (1) A. Bailey & Co. Ltd. v. Clark, Son & Morland, Ltd. (1938) 55RPC253. (2) Yorkshire, Copper Works Limited's Application (1954) 71 RPC 150.

15. In A. Bailey & Co. Ltd. v. Clark Son & Morland, Ltd. the question was of the expungement from the register of the trade mark "Glastonburys". Glastonbury is the name of a town and this word with the addition of "s" was registered as the respondent's trade mark for sheepskin goods. It was assumed that the word had become associated by user with the respon dent's goods. But it was held that distinctiveness in fact is not conclusive upon the question whether a mark is distinctive. Both Lord Atkin and Lord Russell of Killowen said that though the word was distinctive in fact, it was not "adapted to distinguish". Lord Russell of Killowen further observed :‑ "With the Mark on the Register, no person who manu factured slippers in Glastonbury or sold slippers manufactured by some one else in Glastonbury, could advertise his goods as being what in fact they were, namely, Glastonbury slippers. It is no answer to say that the appellants can notwithstanding the registration, continue their practice of making their goods as `made in Glastonbury'. They, and any future manufacturers of slippers in Glastonbury, and their respective retail customers, ought not to be hampered or restricted, by the presence of this Mafik upon the Register, in selecting the particular form of words by which they desire to describe their goods as being products of a town which enjoys a reputation in connection with the manufacture of sheepskin slippers,"

16. In Yorkshire Copper Works Limited's Application, Lord Asquith of Bishopstone, referring to section 9(3) of the English Trade Marks Act, 1938, observed as follows :‑ "Subsection (3) is designed to help the Registrar to deter mine when the requirements of subsection (2) are satisfied. It provides that in so determining the Registrar `may' and I think `may' here means `must' or the subsection in nugatory must have regard to two factors and to their `extent' : the extent, namely, to which (a) the trade mark is inherently adapted to distinguish as aforesaid ; and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid". The noble Lord further observed that distinctiveness as a whole would depend on the combined answers to factors (a) and (b). Section 9(3) of the English Act is in identical terms with sub section (3) of section 6 of our Act. I would venture to state that the observations of Lord Asquith would be the correct enunciation of the rule as to distinctiveness under our law also.

17. In the present case, the Assistant Registrar has assumed that the mark acquired distinctiveness by user, but he has taken the view that the mark was not adapted to distinguish, by which I understand him to mean that there was no inherent distinctive ness in the mark, and that the word "Punjab" was not inherently adaptable to distinguish the appellant's goods. It is clear from the above discussion that the name of a geographical place, unless it be the name of an insignificant place, is generally incapable of being appropriated as a trade mark because it is not adapted to distinguish the goods of one producer in that area from that of another in the same area. The Assistant Registrar had the discretion to decide whether inherent distinctiveness was present in the word "Punjab" in relation to the appellants's goods and I cannot say that in determining that there is no inherent, adaptability in this word, he has come to a wrong conclusion.

18. For these reasons I dismiss the appeal but make no order as to costs, because no appearance was made by the Registrar in these proceedings. A. E. Appeal dismissed.