P L D 1967 Karachi 492 (PLP)

3. The contention of the appellant is that there was no resemblance between the registered mark of the Shell Co. and the device offered by the appellants for registration as their trade mark and, therefore, the application of the provisions of section 8(a) and section 10(I) of the Trade Marks Act were not attracted, section 8 provides: "No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would‑ (a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a court of justice; or (b) be likely to hurt the religious susceptibilities of any class of citizen of Pakistan ; or (c) be contrary to any law for the time being in Force or to morality." Section 10 (1) provides "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 already on the register 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."

4. The two devices which have been held by the Registrar to bear close resemblance are in connection with the same goods, i.e lubricating oils and greases, with this difference, that the Shell Company's trade mark covers, in addition, kerosene, motor spirit and petroleum. The question is whether there is such close resemblance between the two marks as to be likely to deceive or cause confusion: The Shell Company's mark consists of the device of a Deer with the words "Deer Brand" written above it. The deer appears in a standing position, and faces to the left and has curly horns. . The Deer in the appellant's device is in rampant position with face to the right and with straight horns, and with the words "Bandenawaz" written across it. The learned counsel for the appellants, Mr. J. H. Rahimtoola, reasoned that the two devices, when compared side by side, will be found to contain so many dissimilarities as to constitute distinct and different marks altogether. I am afraid this is not a correct approach to the question. As held in Sandoz Ltd's Appeal ((1940)31 R P C196) for purposes o resemblance the two marks should not be compared side by side and the question in cases of alleged conflict between two devices always is whether a person will be deceived when he sees one trade mark in the absence of the other mark.

5. The consideration which has to be kept in mind is whether a member of the public buying the products of the appellants was likely to be deceived into believing that he was B buying the products of the Shell Company. In Aristoc Ltd. v. Rysta, Ltd. ((1940)62RPC65) the House of Lords, while considering the resem blance between Aristoc and Rysta stated the principle to be applied in such cases as follows :‑ "The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring tile former within the limits of section 12 of the Trade Marks Act, 1938 (which corresponds to section 10), must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher for elocution. The Court 'must be careful to make allowance for imperfect recollection and effect of careless pronunciation and speech on the part not only of the person seeking. to buy under the trade description, but also of the shop assistant ministering to that person's wants. The tendency to slur a word beginning with 'a' is generally speaking, very common, and the similarity between 'Rysta' and 'Ristoc' would, I think, be fairly obvious. It would not be surprising to learn that a person asking for 'Aristoc' stickings from a shop assistant who only knew of 'Rysta' stockings had been supplied with the latter and vice versa."

6. In the light of the above pronouncements, it has to be decided whether there is any resemblance between the two devices before me. The resemblance may be visual or phonetic. The basic device in the two marks is the same, i.e., a Deer. Notwith standing the dissimilarities with regard to the shapes of the Doers, the two devices shall in all probability be known in the market as Deer marks or Deer Brands. The goods of the appel lants will be confused with the goods of the Shell Company of Pakistan. I am, therefore, of the opinion that there is such resemblance between the two devices that the registration of the appellants' trade-mark will result in causing deception or confusion in the public. I may here refer to cases where the comparison between the leading features of the two marks led the Courts to conclude that notwithstanding the points of difference the two marks bore such resemblance as was likely to cause deception and confusion. In Worthington's Trade Mark (14 Ch. D8,13 CA ) a triangle with a double line with the name of the brewery inscribed inside it and having conspicuously thereon a figure of a church was held to be similar to a plain triangle coloured red. In Pomril Ltd 's Application ((1901)18RPC181) the device of the side of an apple cut vertically into halt with ;the word "Pomril" across it and a registered trade mark consisting of the representation of an apple with the words "Apple Brand", both marks being for cider, were declared similar. The picture of a girl in dancing dress sitting upon a bed and pulling up her stockings, with the words "Cabret Girl", and the picture of a lady in ballet dress with a wreath of glowers in her hands and the word "Carnival" or "Columbine" underneath were held to bear close resemblance to each other in the Distributing Corporation (London) Ltd.'s Application ((1927) 44 R P C 225).

7. It was next contended by Mr. Rahimtoola, that the Shell Company had not so far marketed its goods under its registered trade mark and, therefore, it could not be said that the registra tion of the appellant's device was likely to cause any deception or confusion. This argument may have some relevancy in cases coming under section 8 of the Trade Marks Act. Under section 10, however, the question of user of the mark is entirely irrelevant. The only test under section 10 is a test of identity or resemblance, and if the Court comes to the conclusion that there is identity or resemblance between the two marks and there is likelihood of confusion, and if the Shell Company was first in the field and had their mark registered, then the appellants' mark cannot be registered.

8. In view of my conclusion that the two marks closely resemble each other and, therefore, the appellants' application was rightly rejected as contravening section 10, it is not necessary to examine this question further under section 8.

9. For the reasons given above the appeal is dismissed with costs. K.B.A. Appeal dismissed.