2000 PLP 2057 (MLD)

(v) Tektronic Incorporated v. M. Abdul Mannan (PLD 1973 Karachi 14). (vi) Muhammad Ismail through Mst. Shamim Akhtar and 8 others v. M/s. Soofi Soap Factory (PLJ 1973 Lahore 208). (vii) Sony Kabushiki Kaisha, Japan v. The Assistant Registrar of Trade Marks, Karachi (PLD 1974 Karachi 136). (viii)Glaxo Laboratories Ltd., England v. Assistant Registrar, Trade Marks, Karachi and another (PLD 1977 Karachi 858). (ix) Ekhlas Ahmad v. Dae Health Laboratories Ltd., London and another (1980 SCMR 625). (x) Seven‑Up Company v. Deputy Registrar of Trade Marks and another (1987 MLD 91). (xi) Kabushiki Kaisha Toshiba (also trading as Toshiba Corporation v. Ch. Muhamamd Altaf (trading as Murad Industries (Regd.)) and another (PLD 1991 SC 27). (xii) Zakauddin v. Muhammad Zahid and 2 others (PLD 1993 Karachi 766). (xiii) Messrs Chas A. Mendoza v. Syed Tausif Ahmad Zaidi and 2 others (PLD 1993 Karachi 790). (xiv) Indus Pencil Industries (Private) Limited v Vikar Industries (Private) Limited (PLD 1999 Karachi 281). Apart from the above‑referred reported judgments, he also placed on record photo copies of the unreported judgments in Civil Suit No.393 of 1988 decided by High Court of Sindh at Karachi involving trade marks "Calpol" and "Kaypol" and Civil Petition No. 414 of 1989 in which leave to appeal was granted by the Hon'ble Supreme Court of Pakistan to consider the question of similarity of the trade names of the same drug, one called "Septrim" and the other "Septrex".

5. A perusal of the impugned order shows that the appellant in opposition to the application filed by respondent No. l for registration of his Trade Mark "DISCO", had raised a number of points and cited case‑law referred to at page 3 of the impugned order. Similarly on behalf of respondent No. l it was urged that under section 24 of the Trade Marks Act rights of a person using certain trade mark are protected after the lapse of seven years. There. is no discussion of the respective contentions of the learned counsel for the parties in the impugned order. Similarly the case‑law cited before respondent No.2 has not been adverted to. He has passed a stereotype order and suddenly jumped to the conclusion that he was not convinced that "DESCON" and "DISCO" were identical/similar or registration of "DISCO" was likely to create confusion and deception as alleged by the opponents. The order appears to be totally arbitrary. The Registrar, respondent No.2 had failed to advert to the tests and the criteria P` laid down by the Courts for determining the question of identity of a trade mark with another and the possibility of confusion, and deception, in accordance with the law.

6. The learned Deputy Attorney‑General referred to the judgment in the case of "New Light Chemical Industries v. Registrar of Trade Marks and another (PLD 1963 Dacca 75) and urged that while deciding matters touching upon the rights of citizens a Court must exercise its discretion. properly. He has also referred to the following judgments which highlight the objective criteria for deciding the question of similarity of trade marks and the possibility of deception/confusion on the part of the general public:‑‑ (i) Bandenawaz Ltd. v. Registrar of Trade Marks, Karachi and another (PLD 1967 Karachi 492). (ii) Midland Electric Manufacturing Company Ltd. v. The Registrar of Trade Marks and another (1987 CLC 1539). (iii) National Detergents Limited v. Assistant Registrar of Trade Marks‑II (1989 MLD 1137). (iv) Unilever Ltd. v. Sultan Soap Factory Ltd. and another (1989 MLD 3786). (v) Nippon Paint Co. Ltd. v. Registrar of Trade Marks (1993 MLD 1094). He has no objection if .the impugned order is set aside and the case remanded to the Registrar for a fresh decision. Learned counsel for respondent No. l was unable to justify the terse order passed by the Registrar.

7. Therefore, the appeal is accepted, the impugned order dated 23‑2‑1989 passed by the Registrar of Trade Marks, respondent No.2 is set aside and the case remitted to him for passing a fresh order on merits in accordance with the law and the observations made inr this order. He will duly consider and discuss the relevant case‑law in his order (not necessarily each and every judgment cited by the learned counsel for the parties). Respondent No.2 is further directed to decide the case within a period of six months (after the receipt of the order). The parties are left to bear their own costs. Q.M.H./M.A.K./D‑14/L