1992 PLP 1724 (MLD)

These two appeals arise out of two decisions given by the Assistant Registrar of Trade Marks, Karachi dated 4‑2‑1.991 and 13‑2‑1991 respectively.

2. The facts of the case, briefly stated, are that the appellant filed two separate applications on 30‑5‑1987 for registration of their trade mark "WOOLCO" in respect of lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers. The same trade mark was also applied for by the appellant for different class of goods namely, clothing, footwear, headwear, hoisery and knitwear.

3. The learned Assistant Registrar after examination of the trade mark found the same to be objectionable as offending against the provisions of section 6(1)(d) of the Trade Marks Act, 1940 as, according to him, the trade mark had a direct reference to the character and quality of the goods. Reliance was placed by the appellants on a number of precedents but the learned Assistant Registrar while referring to the case of "SWEETEX" reported in PLD 1973 Note 7 at page 15, dismissed both the applications.

4. Mr. Abdul Hameed, learned counsel for the appellants has argued that the word ."WOOLCO" had been coined by the appellants themselves and the said word did not refer to the quality or character of the goods which it represented.

5. So far as the Appeal No.47/91 is concerned, the trade mark sought to be registered was applied for in respect of goods in Class 26 consisting of lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers which obviously are not manufactured from wool. Consequently, the observations made by the learned Assistant Registrar of Trade Marks that trade mark "WOOLCO" has a reference to the quality or character of the goods do not appear to be justified ex facie.

6. Turning to the case of appellants in Appeal No.48/91, the goods for which the trade marks in question was applied for include clothing, hosiery and knitwear, hence the case stands on an absolutely different footing. Learned counsel for the appellants in this regard has placed reliance on the cases of Parke Davis & Company (1984 CLC 2623) and M/s. Glaxo Laboratories Ltd. v. Registrar of Trade Marks (PLD 1985 Kar 630). In the first case the objection was that the invented word "BARDASE" had resemblance with the word "BARDASH" maning "youth, homosexual". However, the objection was overruled by a learned Single Judge of this Court and the Registrar was directed to proceed with the registration of the trade mark. In the second case the trade mark used by the appellant was "VITAMILK" and an objection was raised that the said word referred to the quality and character of the goods which it represented as the word "VITA" meant life and the word "MILK" was descriptive of the character of the goods. It was held by another learned Single Judge of this Court that the word "VITAMILK" was a newly‑coined word and although it had some suggestive reference to the character or quality of the goods of the appellants, but reference was not so direct so as to make the trade mark descriptive of the goods. Consequently, the matter was remanded to the Registrar of Trade Marks for taking further action in regard to the registration of the said trade mark. Although, in my opinion, the first case cited by the learned counsel is not fully attracted to the facts of the present case as the resemblance between the words "BARDASE" and "BARDASH" was not as strong but the second case appears to be fully attracted to the facts of the present case. The word "WOOLCO" is a newly‑coined word and although there is no doubt that it has some suggestive reference to the character of the goods but the reference is not direct. Consequently in my opinion, the trade A mark does not offend against the provisions of section 6(1)(d) of the Trade Marks Act' as observed by the learned Assistant Registrar. The case o "SWEETEX" is distinguishable as the reference there to the quality or character of the goods was direct.

7. In the result, both the appeals, M.A 47/91 & MA.48/91 are allowed and the Assistant Registrar is directed to take further action in regard to the registration of the said trade mark. There shall be no order as to costs. H.B.T./F‑1181/K???????????????????????????????????????????????????????????????????????????????? Appeals allowed,