P L D 1993 Karachi 571 (PLP)

This miscellaneous appeal is directed against the order dated 31-3-1991 passed by the Deputy Registrar ofTrade Marks, Karachi~ dismissing the application for the registration of the trade mark. The facts leading to the filing of the above appeal are that the appellant is a private limited company incorporated under the Companies Ordinance, 1984 and carrying on business inter alia of pen, ball point pen, fountain pen and other allied stationery items. The appellant markets and sells its products under numerous trade marks and one of them is the Trade Mark SKY BIRD. On 21-6-1987 the appellant applied for registration of Trade Mark Sky Bird (one word) with the Registrar of Trade Marks, Karachi in Class 16 in respect of "Ball point pen, fountain pen, finclincr, stationery writing instruments, artists' paint brushes, pencils". The application was numbered as 94824 in Class

16. The Registrar of Trade Marks examined the application in the usual manner and issued a show-cause notice. The appellant through its Advocate sent a reply. Subsequently upon objection of the Registrar of Trade Marks, the appellant deleted the item "Fineliner" from the specification of goods and amended the specification of goods to read as "Ball Point Pen; Fountain Pen; Stationery; Writing Instruments, Artist's Material; Paint Brushes; Pencil?. The main objection of the Assistant Registrar was based upon the Trade Mark King Bird No.4887 in Class

16. It was contended on behalf of the appellant that this trade mark is not in use and has been abandoned by its proprietors. It is proved by the fact that this trade mark is dated 7-2-1968 and its second renewal was fallen due on 7-2-1970 which has not been effected by its proprietors. According to the appellant, this trade mark has not been renewed till date. It was further contended that the. Kind Bird and Sky Bird are combination of two dictionary words having different sound and different meaning. In regard to other two trade marks Sky Pak No.75839 in Class 16, i was contended that they have been registered in respect of "Paper and Paper Articles" which goods arc totally different from the goods claimed in the appellant's application. Besides this, it was also pleaded that the Sky Pak (one word) is totally different from the dictionary words Sky Bird (two words). The respondent observed that so far as the goods arc concerned, the appellant's goods are not at all different from those of the cited mark that is the stationery items included in the specification of this mark is of the same description as paper and paper articles of the cited mark registered Nos.75838 and 75839 And the items ball point, pen, fountain pens are exactly the same as the items of registered cited Mark No.48872. In that view of the matter, the application was refused registration in exercise of discretion vested in him under section 14(l) read with section 10(l)(a) of the Act. The appellant being aggrieved by the above decision has filed the present appeal. Mr. Sultan Ahmad Shaikh, learned counsel for the appellant vehemently argued that the respondent has taken one word from the trade marks and has taken one word from the appellant's trade mark and has then compared them and has come to the erroneous conclusion that the appellant's trade mark conflicts with the cited trade marks; such a matter of comparison is against the established principles. He next contended that the respondent has failed to take into consideration the fact that the appellant's trade mark consists of the two dictionary words whereas the cited registered trade marks SKY PAK No.75838 and 75839 are one word and totally different. He next contended that these trade marks have been registered in respect of goods which are different from the goods for which the appellant is seeking registration in its pending application for SKY BIRD. Mr. Sultan Ahmad Shaikh invited my attention to cases of Sunbeam Motor Car Company Limited 33 RPC 397, British Cycles and Motor-cycles Manufacturers and Traders Union Limited 40 RPC 226 and Thomas Bear & Sons (India) Limited v. Prayag Narain and Jagennath 58 RPC

25. Prima facie the principles laid down in the above decisions arc applicable to the facts of the instant case. The trade marks have been registered in respect of goods which arc different from the goods for which the appellant is seeking registration in its pending application for SKY BIRD. The finding is against the principles laid down in the above decisions. In Abdul Wahid, v. Haji Abdur Rahim and another P L D 1973 SC 104, it was held that it is an accepted principle that words have a common suffix but if earlier portions of these words are different, and if they do not conflict, they are held to be distinctive. Where two words have the same suffix, the earlier portion of the words is the natural and necessary mark of distinction. The principle laid down has not been followed in the instant case. I am of the humble view that the respondent should have proceeded with the issuance of notice to the registered trade mark and should have advertised the mark in the Trade Marks Journal for inviting objections and thereafter holding proper inquiry and should have passed an order in accordance with law. I For the aforesaid reasons, the decision dated 31-8-1992 of ihe respondent is set aside and the Registrar of Trade Marks is directed to proceed with the application No.94824 of the appellant for registration after issuance of notice to the registered holder of trade marks and after publicafion and then decide the application in accordance with law. MA. No.3 of 1992 stands disposed of. The above are the reasons for the short order dated 4-10-1992 remanding the case to the learned Registrar of Trade Marks for disposal in accordance with law. N.H.Q./A./1358/K