1989 PLP 1598 (MLD)

(d)??????? 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 or surname or the name of a sect, caste or tribe in? Pakistan;" The Deputy Registrar observed that the word "CHAMPION;" is not an invented word and therefore does not qualify within Section 6(1)(u) He held that the mark `CHAMPION' is descriptive of goods and hence it comes within the mischief of Section 6(1)(d). He further found that the word `CHAMPION' belongs to the class of words which are register-able upon filling of the strong evidence of user over a long time, and over a wide area. But in the instant case, period of user is claimed since August 1985 and the application was also filed on 25‑8‑1985, as such, there is only 25 days user to the credit of the appellant which is entirely inadequate to make the mark distinctive. The word `CHAMPION' is meant in Chambers Concise Usage Dictionary at page 72, "in games, competitions etc, a competitor who has defeated all others: this year's golf champion; (also adj) a champion boxer, 2 a person who defends a cause: a champion of human ???? v. to defend or support: He championed the cause of human rights for many years". ?The word `CHAMPION' is meant in the Concise Oxford Dictionary of current English as a person who fights, argues, checks, for another or for a cause". The word `CHAMPION' is meant in Reader'` Digest Family Word Finder at page 134 as "title holder, contest winner, victor, winner, conqueror, vanquisher, master, upholder, advocate, defender, supporter, protector, backer, promoter, fight for, battle for, uphold, support, back, defend, stand up for, promote, advocate, aid, abet, speak for, espouse". The word `CHAMPION' is meant in Webster's Third new International Dictionary of the English Language Unabridged, Volume 1 ::I page 372 "Warrior, Fighter, Combatant, Advocate or Defender and one who fights". The contentions of the learned counsel for the appellant is that it has no reference whatsoever to character and quality of the goods or products to which the mark is intended to apply i.e. cigarettes, tobacco, manufactured and raw and cigars. In the case of Messrs Bubble‑Up Company Inc v. Messrs 7‑Up, U.S.A. (PLD 1975 Kar. 582), the; word `UP' in Bubble‑UP was objected to for the reason that it bad reference to the character and quality of goods. Mr. Tufail Ali Abdur Rehman, J. dispelled the objection :en the following observation:

"????..It is true, of course, that the moment the word was thought of in combination with some other word such as "Bubble" the image of a liquid intended for drinking and contained in a transparent vessel through which the bubbles could be seen coming up to the surface was conjured up. But this was not the result of the word by itself but only in combination with some such suitable word as I have mentioned and such an association of ideas is bound up also with a large number of other prepositions and I did not think it correct to say that, on that account, the word by itself conveyed any such meaning as iv claimed". Again at page 586,.the learned Single Judge held:‑‑ "Assuming, however, in favour of the appellants that the dictionaries do give this meaning, does that really conclude the matter? It is not, I think the meaning of a word which would occur only to the very erudite but the meaning which the ordinary person‑‑I think that that means the ordinary person m Pakistan‑‑would understand. I venture to think that in this country at least, and probably even in others where the English language is commonly used, this would not be the sense in which the Word is understood". The purpose of the Legislature appears to me to be to forbid the use in a trade mark of a word which is descriptive of the goods; the word must therefore convey a description to those who commonly see it or hear, it and not only to the scholarly". In Hindustan Milk Food Manufacturers Ltd v. The Deputy Registrar of Trade Marks (M.A. 47 of 1984 decided on 19‑11‑1984) the appellants made an application to the Registrar of Trade Marks consisting of the word "Boost" in Class 5 in respect of "malted food for children, and invalids". The Registrar refused the registration on the ground that "Boost" is a descriptive word in respect of the goods in Class

5. The appellants appealed to the Court. Mr. Muhammad Zahoorul Haq J: (as he then was) held that the word "Boost" is not descriptive of the quality, of the goods of the appellants but only shows the result that would be achieved by the consumer after eating the product and therefore the word is actually relatable to the consumer and not to the product itself. The goods to question are cigarettes, tobacco. The word "CHAMPION" does not appear to be having any direct reference to the character or quality of the goods, the natural aptitude or artistry of a person does not appear to be having direct reference to the cigarettes, tobacco and cigars which are involved in k this case. I am of the view that the word must have a direct reference to the character or quality, of the goods required by the provisions of Section 6(i)(d) of the Act and not a remote far‑fetched reference. In the instant case, the word `CHAMPION' would not have any reference to the quality or character of goods, but it will have reference to the person who smokes the products or goods. To my view `CHAMPION' would not give the idea to a reasonable person about the quality of the products or good and hardly any one would be satisfied with a cigarette, tobacco or cigar which is described as `CHAMPION'. Clause (d) of Section 6 (1) of the Act does not prevent the registration of a word which has reference to the smoker and not to the goods smoked. The learned Deputy Registrar erred in holding that the word `CHAMPION' is descriptive of goods. The last objection of the Deputy Registrar is that the objection is objectionable under section 8(a) of the Act. Section 80) reads as follows:‑‑ "

8. Prohibition of registration of certain matter. 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" A perusal of the above provision would show that Section 8; contemplates confusion or deception likely to arise out of any reason other than those mentioned in Section 10(1) of the Act, that is being identical or clearly resembling the goods of the same class or descriptive of the goods. In the case of an application by J. and J. Colman, Ltd., for the registration of a trade mark (1929) 46 R.P.C. 126, the Registrar refused the application, on the ground that semolina and mustard prepared for the use a food were goods of the same description. It has been held that mustard fall under the description of a condiment and semolina under the description of; cereal and the goods are not of the same description and that the Registrar should be directed to reconsider the question as to what association with the cereal group only should be required. In the case in the matter of an application by Ladislas Jellinek for the registration of Trade Mark "Panda" (1945) 63 R.P.C. 59, the opponents made as application for the registration of "Panda" for shoe polish. The application way opposed by the proprietors of a similar "Panda" mark in respect of shoes. The Registrar allowed the application. The opponents appealed against the decision Mr. Romer J. reiterated that it was necessary to take into consideration the nature of the goods, the type of the customers and furthermore reiterated the following principle"‑‑ ?now taking firstly into consideration the nature of the goods which are now in question, it seems to me that boots and shoes on the one hand differ in their nature at least as widely as the nature of semolina differs from that of mustard; the compositions of the two commodities are wholly different and distinct from one another; secondly, it seems to me that the respective uses of the articles have to be taken into account in considering whether they should be regarded as goods of the same description. The mere fact that polish is applied to boots and shoes for the purpose of cleaning them and giving them a smart appearance seems to me to be quite irrelevant in this connection". This view was approved by the decision of the, Board of Trade reported in 1974 R.P.C.

583. It is not possible to accept the finding of the Deputy Registrar that there is a connection between the goods safety matches and cigarettes as both sets of goods are sold on the same counter. Though safety matches are used for lighting the cigarettes, they cannot by themselves, become cigarettes, tobacco and cigar. Likewise cigarettes, tobacco and cigar, though they are used for smoking, can never be treated as articles for lighting stone or a cigarette. Apart from the fat t that both these sets of articles cannot be brought under the description of 0?articles of smoking, it is well known that the articles can be classified either; the basis of their use or on the basis of their contents elements out of which they were manufactured or from the mode of their production. As already stated to Deputy Registrar in this case has not specifically considered the applicability Section 8(a) to the case in hand. The impugned order of the Deputy Registrar ?therefore set aside and the appeal is allowed and the application is remanded. The Registrar is directed to proceed with the appellant's application No.87345 in Class 34 m accordance with law. In the circumstances of the case, the appellants should bear their own costs. M.Y.H./L‑29/K?????????? Appeal allowed.