P L D 1988 Karachi 396 (PLP)

This Misc. Appeal is directed against the order of the learned Deputy Registrar of Trade Marks dated 15‑1‑1986, whereby he refused registration of the trade mark of the appellants.

2. The facts leading to this appeal are, that the appellants made an application on 25th May, 1982, bearing trade mark No.77021 for the registration of the mark consisting of word "DIAROHL" in respect of intestinal antiseptic pharmaceutical or veterinary preparation claiming user since 1969. The application was advertised in Trade Marks Journal No.408 of January, 1985, issue whereupon the respondent No.l, who is an Italian Company, gave notice of their intention to oppose the registration of the appellants' trade mark on the ground, that they were proprietors of the trade mark "DIAROHL" which had been registered under No.75975 in respect of pharmaceutical preparation for the prevention and treatment of bacteria, enteritis in new born babies and infants. The learned Dy. Registrar after hearing the parties came to the conclusion, that the trade mark of the appellants was phonetically and symbolically similar to that of opponent No.l, which was already registered and was with regard to the same class of goods and was, therefore, liable to create confusion in the market.

3. I have heard Mr. Khalil Kazilbash, learned counsel for the appellant. Respondent No.l has remained absent in this appeal, though served by publication. Respondent No.2 also remained absent.

4. Mr. Kazilbash has assailed impugned order on the ground, that the goods of the appellants were in use in the market since 1969, whereas the goods of opponent No.l, have still not been used in the market, and are only proposed to be used and as Such the conclusion of the learned Deputy Registrar, that the registration, of trade mark of the appellant would create any confusion was only presumptive and was not based on any evidence but was based on conjectures. further more, he claimed, that the user of the trade mark since 1969 entitled the appellant to the registration of his mark under sections 10 and 25 of the Trade Marks Act. It is further submitted, that when the appellants moved application for registration of the trade mark, the application of respondent No.l for registration of his trade mark, was still pending as such the learned by. Registrar should have disposed of both the applications, simultaneously, and should not have disposed of first the application of opponent No.1, and then refused application for registration of the appellant, on the ground, that the trade mark of the opponent No.l was already registered. It is further submitted, that admittedly, another trade mark "DIAROL" was registered in respect of the similar goods prior to the applications for registration of the marks of the appellants and respondent No.l, and therefore if the registration of the trade mark of the respondent No.l could cause no confusion in the market, then the learned Dy Registrar could not hove come to the conclusion that confusion would be caused, if the trade mark of the appellants had been registered

5. It may be pointed, that facts of the case appear to be admitted and apparent from the impugned order of the learned by. Registrar. The appellants have produced copy of the show‑cause notice under section 14(1) of the Trade Marks Act, issued to him by the Registrar to show‑cause, why his application should not be refused on the ground, that it was objectionable under sections 10(1) and 8(a) of the Trade Marks Act, on the basis of conflicting marks particularly which are given is notice. Ii shows; that trade mark "DIAROL" was registered under No.27536 in tablets for care of indigestion diarhol etc. and application No.75975 for trade mark 'DIARCONOL" of the respondent No.l for pharmaceutical, veterinary and sanitary substance etc. was pending.

6. The order of the learned Dy. Registrar shows, that the owner of the trade mark 'DIAROL" did not raise any objection to the registration of trace mark of respondent No.l. Mr. Kazilbash has pointed out from the record, that notice in respect of application of the appellants was also issued to the owners of the said registered trade mark, but they did not raise any objection to the registration of the trade mark of the appellants also. He submitted that the objection was not raised by the said owners because pf non‑user of their goods in the market. Be that as it may, the fact remains, that no objection rocs raised by the owners of already registered trade mark against the registration ‑ the mark of the respondent No.l, of that of the appellants

7. It is also clear from the record, that when the appellants moved application for registration of the trade mark the application of respondent No.l for registration of their mark was still pending, but it was registered first by the learned Registrar and subsequently, the application of the appellants was rejected on the said ground. The learned counsel for the appellants has relied upon the case of Basra Soap Factory v. Punjab Soap Factory (P L D 1973 Karachi 279) wherein, under the similar circumstances, learned Single Judge of this Court observed as under:‑ "The further objection to the procedure adopted in the Trade Marks Registry is; that though Basra map Factory's application was pending far registration, and in those proceedings the opposition filed by the Punjab Soap Factory had not bean decided, still, without waiting for such decision, the Trade Marks Registry, registered the 'trade mark of the Punjab Soap Factory, even though, as tire aforesaid notice would show, the Registry was fully aware that a prior application of Basra Soap Factory for registration of era identical or similar trade mark was then pending. It should be (,resumed that the Registry was also aware that in the proceedings in Basra Soap Factory's application, the Punjab Soap Factory had filed opposition, which had yet to be decided. Still, the Registry did not wruit. end proceeded to register the trade :nark of the Punjab Soap Factory, and when the Basra Soap Factory's application, and opposition of Punjab Soap factory filed therein coma to be heard‑ the opposition was accepted that the application of Basra Soap Factory was rejected only on the ground, that Punjab Snap 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 arid hear together the various applications and oppositions w regard to identical or similar trade marks, if applications 1 these trade mark are pending in the Registry. Further, would have been proper for the Registry to decide floe opposite of the Punjab Soap Factory first and then proceed to consider the application of the Punjab Soul) Factory, or of the Bas Soap Factory, as the case may be for registration of their respective trade marks."

8. Admittedly, when the respondent No.l moved an applicant for the registration of the goods their goods were not used in Pakistan but were proposed to be used. No evidence was led before the learn by. Registrar to show, that at the time when the impugned order was passed, the goods of the respondent No.l, had been used in t market. I have already pointed, that the respondent No.l has remain absent in this Court. It is further contended by Mr. Kazilbash, the respondent No.l, being a foreign company, whose goods we not used in Pakistan and appellant being a Pakistani company, who goods were used in Pakistan at the relevant time, the appellants were entitled to be given preference over respondent No.l _ In support he has relied upon the case of S.1'. Taufique and others v. Narion Biscuits Company (P L D 1992 (W.Y) tear. 335). It was held there that when 'A' was user of trade mark in Pakistan since 1951 which 'B' had no mark in Pakistan, though enjoyed international user, ' was entitled to registration in preference to 'B'.

9. The learned Registrar has accepted the user of the appellants from 1980 only, on the basis of the invoices produced by the witness of the appellants. It may be pointed, that apart from invoices, appellants have also filed affidavit of Ghulam Nabi Sheikh, Genet Manager/ Secretary of the appellants to show, their user since 1969" whereas, respondent No.l did not file any evidence of user in support of the opposition in the affidavit of Ghulam Nabi Sheikh, it is affirmed that the appellants have been using trade mark for their goods sine 1969 except for the period from 1972 to 1978 during which perk due to change in relevant law instead of trade marks, generic name of the products were used. It is submitted by Mr. Kazilbash, the mere non‑production of the invoices of the period from 1969 to 197 would not raise presumption of non‑user or rebut the evidence c oath in affidavit, that the appellants were so using the trade marls It is submitted, that the invoices and other account books are nr kept intact for decades, so that they could be produced before the Registrar after lapse of 10/15 years. It is further submitted, that the evidence on oath by way of affidavit has got considerable evidentiary value especially when it is not rebutted by any counter affidavit or any other evidence.

10. Admittedly, the three trade marks viz. 'DIAROL', DIARCONOI and 'DIARHOL' are in respect of the same class and type of goods These marks also look phonetically similar. The first two trade mark are registered, while registration of third mark has been refuse vide impugned order. As a matter of fact, the mark of the appellant looks more phonetically similar to the mark 'DIAROL' than to 'DIARONOL'. However, a:: pointed above, the owners of trade mark 'DIAROL' did not raise any objection to the registration of the other trade marks. From the impugned order, it appears, that the learned Dy. Registrar registered the trade mark of the respondent No.l, in spite of the above‑mentioned similarity with mark 'DIAROL' on the ground, that no opposition was made by the owners of the said mark. However in the case of the appellants, he shifted the burden of proof upon the appellants to show, that by registration of their mark no confusion would be created in the market, though admittedly the respondent No.l did not lead any evidence to show, that such confusion was created or could be created. I have already pointed out, that there is also no evidence of the user of trade mark of respondent No.l on which the learned Registrar or this Court could come to the conclusion, that actual confusion was cheated in the market. Reliance has also placed on the case of M/s. Suriya Brothers v. Dada Soap Factory Limited (P L D 1971 Kar. 189). The relevant observations of the learned Judge are at page 196, which are re‑produced as under:‑ "The trade mark of the respondents was registered on 25th May, 1962, with effect from 1st July, 1957, when presumably the application for registration was made, although another trade mark of 'Lal Pan' was already registered under No.30 dated 8th April, 1948, in class 3 in respect of soaps, toilets, washing chips and liquids in favour of another firm known as Ismail Soap Factory, Karachi. If the trade mark of the respondents could be registered in the face of an earlier trade mark with similar device there is no reason why an exception could be made in the case of the appellants and the registration was refused."

11. It is also submitted, that the fact, that appellant have been using the mark while the respondent No.1 has never used their mark in Pakistan creates special circumstances within the meaning of section 10(2) of the Trade Marks Act, and as such the application of the appellants should have been allowed. Reliance is placed on the case of Aktiebolaget Jonkoping Valcan Sweden v. Registrar of Trade Marks, Karachi, and another (P L D 1975 Karachi 478). The relevant observations are reproduced as under:‑ "The 'other special circumstances' relied on in Lullahbhai Amichand's case were identical with those in the present case viz. that the goods of the foreign registered proprietor were not available for sale or consumption in Pakistan and in the vacuum so created, a national firm of manufacturers had built up a sizable business by using the trade mark in question over the last several years without any objection. These circumstances, in the view of the Court, were regarded as 'special circumstances' within the meaning of section 10(2) of the Act."

12. The learned Deputy Registrar has refused the registration on the ground, that the case fell under section 10(1) of the Trade Marks Act, 1940, which is reproduced as under:‑ "S.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 and [either already on the register or already registered in any, (Acceding State or a non‑Acceding State) to which section 82‑A for the time being applies] in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion."

13. The learned Deputy Registrar has rightly held, that in all such applications for registration of a mark, onus is on the applicant there is no reasonable likelihood of I to satisfy the Tribunal, that confusion. I have already pointed out, that one mark was already registered with regard to the same class and kind of goods, before the applications for registration of their mark were moved by the appellant or respondent No.1.. From impugned judgment it appears, that so far the application of respondent No.l was concerned, the learned Dy, Registrar did not throw the burden of disproof upon the respondent No.1, but allowed registration only on the ground, that tit, opposition what: filed by the owners of The previously registered mark, whereas, such onus was shifted upon the appellant‑‑, and their evidence it, discharge of this onus of proof was disbelief of fact, that no evidence in rebuttal. was produced by the respondent No.l. I have already pointed out, that the application for registration of respondent No.l was allowed, when the application for registration of the mark of the appellants and opposition filed by the respondent No.l thereto was still pending. The procedure adopted by the learned Deputy Registrar does not appear to be equitable or fair, but looks arbitrary, and discriminatory. I have already pointed, that there is o evidence of user by the respondent No.l of their mark at the time when the application of the appellants was rejected in 1986, in spite of fact, that even according to the impugned order the appellant had been able to prove the user from 1980 though, their witness has stated on Oath, that they are using the mark since 1969. In my opinion, if the mark of respondent No.l could not be considered to create confusion in spite of earlier registered trade mark 'DIAROL' then it cannot be held, that the registration of the mark of the appellant would create any such confusion. I, therefore, allow this appeal, and direct the learned Deputy Registrar to register the mark of the appellants. A.A./E‑14/K Appeal allowed.