2006 PLP 466 (CLD)

GULZAR AHMED, J.

The appellant in M.A. No.1 of2002 is respondent No.2 in M.A. No.2 of 2002 i.e. McDonald's Corporation, is Corporation organized under the laws of the States of Delaware, USA, having its office at One McDonalds' Plaza, OAK Brook, Illinois 60521, United States of America while respondent No.1 in M.A. No. 1 of 2002 is the appellant in M.A. No.2 of 2002 i.e. Maxfood Intentional (Pvt.) Limited, 8-B, Darbar Market, Lahore. Both the parties are hereinafter referred respectively as McDonald's and Maxfood. Both McDonald's and Maxfood are aggrieved by the decision dated 23-8-2001 grounds whereof were recorded on 12-1 1-2001 by the Registrar of Trade Marks at Karachi. As the impugned decision in both the appeals is the same arising out of the common controversy between the parties, I propose to dispose of both the appeals by this one judgment. The brief facts of the matter are that Maxfood made an Application No.132218 on 4-10-1995 to the Registrar of Trade Marks for registration of Trade Marks "MAX" and "M" Logo in Class 30 for Biscuits and Wafers which was advertised in Trade Mark Journal on 1-10-1996. McDonald's filed Opposition No.49 of 1997. Maxfood contested the opposition of McDonald's and both the parties lead evidence before the Registrar of the Trade Marks. After hearing both the parties, Registrar of Trade Marks passed the impugned decision, the operative part of which is as follows: -- "I hereby partially allow Opposition No.49 of 1997 and order the Applicants, to use Trade Mark "MAX" without letter "M" which is almost similar to Opponent's trade mark logo "M" (McDonald's). The applicant is ordered to delete letter "M" immediately from the labels but can use its already printed labels up to 6 months i.e., by May 10, 2002 and amend Application No.132218 in Class

30. Accordingly this order is passed in order to save the applicants from financial losses, as the applicant must have got the labels and other packing material etc. printed. The Application No.132218 in Class 30 for "MAX" without "M" may proceed to registration." McDonald's in its appeal has made the following prayer:-- "That the appellant accordingly prays that this Honourable Court may be pleased to set aside the order of the learned Registrar of Trade Marks dated 23 August, 2001 (which was communicated vide Registrar's grounds of decisions dated 10 November, 2001) partially allowing the appellant's Opposition No.49 of 1997, to fully allow the appellant's Opposition and to disallow Application No.132218 of the respondent No.1 and to declare that the directions contained in the impugned order allowing the respondent No. 1 to use its already printed labels of the applied mark up to 6 months i.e. by 10 May, 2002 are null void and of no legal effect and have been passed without any jurisdiction and in excess of his discretionary powers. Costs of the proceedings may also be awarded to the appellant." Whereas Maxfood in its appeal has made the following prayer:-- (1) To call for the records of Opposition No.49 of 1997 and appellants Application No.132218 in Class 30 from the office of the Registrar of Trade Marks, and after perusal. (2) To set aside the impugned decision dated 23-8-2001 of the Registrar and allow appellants Application No.132218 in Class 30 to proceed to registration as filed. (3) To order for the Registration of appellant's trade mark bearing Application No. 132218 in Class 30, alternatively to order for restoration of the mark "MAX with M logo" application to file. And Cost of proceeding may be awarded to the appellants and any other relief or relieves which this Honourable Court may deem fit and proper be awarded to the appellants." Mr. Khawaja Mansoor Ahmed, learned counsel for McDonald's as well Messrs Muhammad Aslam and Sofia Sultana, learned counsel for the Maxfood have extensively argued the matter orally, whereas the latter have also submitted a written note of arguments. I have considered the arguments and have gone through the record. It is contended by the learned counsel for the McDonald's that the decision of the Registrar Trade Marks of allowing Maxfood to use Trade Mark "MAX" is based on misreading of evidence contrary to law. On the other hand, learned counsel for Maxfood contended that there was no objection from the side McDonald's against the registration of Trade Mark "MAX" rattier McDonald's has conceded this position before the Registrar of Trade Marks and has drawn my attention to para.13 Of the \impugned decision. Paragraph 13 of the impugned decision, reads as follows:-- "

13. In the hearing the opponents categorically stated that they have no objection to the registration of word "MAX" for biscuits and wafers in favour of applicant but they have objection to the registration of 'M' logo of applicants trade mark. Now the point of consideration is whether 'M' logo of applicant is similar to opponents 'M' logo and whether it will cause confusion and deception Logo 'M' of opponents is essential part of their trade mark. In Pakistan it is registered with word McDonald in Class 30, which also covers biscuits among other goods. The section 10(1) of the Trade Marks Act, 1940 prohibits registration of identical or closely similar trade mark in respect of same and/or of the same description of goods." The learned counsel for McDonald's confronted with the above passage from the impugned decision, submitted that such concession was not made by the McDonald's before the Registrar of the Trade Marks and the Registrar has based his decision ill respect of Trade Mark "MAX" oil some misapprehension. I have examined the memo. of appeal of McDonald's and find that there is no ground taken in it that the concession made by the McDonald's as mentioned in para.13 of the decision of the Registrar of tile Trade marks was based on some misapprehension. There is nothing on record to show that McDonald's has not conceded to the registration of the Trade Mark "MAX" by Maxfood. In my view, this objection of the McDonald's cannot be considered in view of the concession made by the McDonald's itself before the Registrar of the Trade Marks. As regards the question of not allowing the registration of "M" logo by the Registrar of the Trade Marks to Maxfood, tile contention of its learned counsel is that the letter "M" is an initial of Maxfood and its registration is permissible wider section 5(1) of the 'trade Marks Act, 1940 (for short the Act). He stated that Maxfood has applied for registration of its trade mark with "M" logo in 1995 and it is in use since 1996. He has further contended that the shape of the letter "M" of Maxfood is different from that of McDonald's and even the goods for which its registration is sought are different. He has further contended that McDonald's has disclaimed "M" logo and in this respect made reference to paragraph 17 of the impugned decision. On the other hand, learned counsel for the McDonald's has contended that logo "M" of McDonald's is a distinct mark which is protected by section 6(1) (e) of the Act and that in terms of section 7(2) of the Act, such logo covers all colours. He contended that logo "M" has worldwide recognition as a corporate logo and trade mark of McDonald's so also it is in use all over the world and in Pakistan it was registered on 25-10-1989. The case of the McDonald's is that for many years it is carrying worldwide business of manufacturing products, inter alia, in Class 30 which products are well-known internationally which are marketed and sold under trade marks inter alia of McDonald's and corporate logo 'M' and is proprietor of such trade mark and secured its registration in many countries world over and in Pakistan on 25-10-1989 in Class 30 for biscuits, sandwiches. bread, cakes, cookies, etc. "M" logo was also separately registered on 9-4-1996 vide Application No.135195 in Class 30 for biscuits, bread, cakes, cookies, etc. Maxfood had applied to the Registrar of Trade Marks for registration of its Trade Mark 'Maxfood' with "M" logo in Class 30 in respect of biscuits and wafers vide Application No.132218 dated 4-10-1995 as proposed to be used. To this application, McDonald's filed its objections resulting in the decision which is impugned in both the appeals. The Registrar in the impugned decision has found that letter 'M' of Maxfood is similar to that of letter 'M' of McDonald's and that its disclaimer is subjected to substantially as is shown in the representation. The Registrar has further found that the trade mark of McDonald's was introduced in Pakistan a few years back and it has gained its popularity and created distinctiveness in Pakistan and Maxfood must be knowing the importance of the McDonald's Mark "M" and has taken benefit and advantage of such mark which was already on the Register. The Registrar has further found that actual creator of the mark 'M' in special manner belongs to the McDonald's and once such mark was on the Register, the Maxfood having not raised objection to such trade mark being on the Register was not entitled to the adoption of similar trade mark. As regards the question of use of the trade mark, the Registrar has found that McDonald's are in actual business with their trade mark in Pakistan for last. number of years and that it can justifiably raise objection to the registration of the trade mark of Maxfood. Pursuant to such finding, the Registrar has exercised his discretion under section 14(1) of the Act and allowed the application of Maxfood for registration of its trade mark minus the letter 'M'. Now, there is no dispute between the parties that Maxfood started business with its trade mark in the year 1996 whereas McDonald's commenced its business in Pakistan with their trade mark in the year 1997. So for the question of similarity is concerned, on visual examination it is found that letter 'M' Maxfood is similar to that McDonald's inasmuch as it copies distinctive character of logo 'M' of the McDonald's. Although the colour scheme is different, but section 7(2) of the Act provides that where trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours. McDonald's trade mark being already registered 13 with certain colour scheme is therefore, good for all colours. Section 8(a) of the Act provides that 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 by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice. Section 10(1) of the Act provides that, 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 of the acceding State 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. In the case of Jamia Industries Ltd. v. Caltex Oil (Pak) Ltd. and another PLD 1984 SC 8, it is held that where dominant feature of registered trade mark having been incorporated in competing trade mark, there is not only possibility but probability of deception and confusion being caused and where similarities of' competing trade mark being so striking that an unwary purchaser would be exposed to reasonable probabilities of confusion and deception, the registration of competing trade mark will come within the mischief and prohibitions of section 8(a) and section 10(1) of the Act. As regards the question of the use, the relevant circumstance that needs to be considered is that though at the time when the Maxfood applied for the registration of its trade mark, the trade mark of the McDonald's with 'M' logo was registered not only in USA but also in other countries of the world including Pakistan and it actually brought in use in Pakistan in the year 1997. The case of Maxfood is that they had put their trade mark in use in the year 1996. Section 14(1) of the Act provides that any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner, and the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. The McDonald's through evidence has established that it was the one has invested its trade mark with logo 'M' having distinctive character and for being a proprietor of a trade mark, the provisions of law does not require that it should also be a user of it within Pakistan. The trade mark used or proposed to be used sufficiently, in my view, protects the right of the proprietor to such trade mark. McDonald's have registered their trade mark with logo 'M' as proposed to be used and it will sufficiently safeguard the interest of the McDonald's as a proprietor of such trade mark in terms of section 14(1) of the Act. Insofar as the contention of the learned counsel for the Maxfood that though McDonald's have registered their trade mark in Class 30 including biscuits but McDonald's is not actually doing business of selling of biscuits or wafers and, therefore, there is no probability of any deception or confusion being caused to any customer. In this respect, reference is made to the case of Alpha Sewing Machine Company v. Registrar of Trade Marks PLD 1990 SC 1074, wherein the registration of the trade mark "Philip" for sewing machine, etc. was in question and the Honourable Supreme Court of Pakistan at page 1077 has observed as follows: "But in the same judgment under the same reasoning this Court observed in the case of another disputed trade mark that as regards "Pan Masala" (Powdered Supari) and Sweet and Scented Supari, there are two conflicting judgments of the high Court. The tact that the Company "7-Up" is a multinational of international repute in the market for beverages and for Thal reason not likely to engage itself in trading in such an indigenous product may academically be sound for a marketing analyst but really of no or very little concern to 'the class of consumers served by their products. Their sale points and outlet points are quite often the same. The consumers served are largely of the same category. Both the products though classified differently for the purpose of trade mark fall, from consumer's point of view, in the same category of light refreshment of "Pep" preparations. Their features do make out a case of there being likelihood of confusion or deception with regard to their source. The applicants for this registration mark had a wide and open field to choose from. They decided upon the trade name of another which also happens to be name of the company which has heavily invested in that trade name and goodwill appurtenant to it. With that real likelihood of deception and confusion it was clearly a case where registration should have been refused." The foregoing deeper analysis with regard to two products one a Sweet scented chewing material and the other a beverage apparently falling in different class of goods but there being likelihood of confusion and deception "with regard to their source", disentitled the applicant for "7-Up" to registration, under the same law of Registration. In this case the findings by the High Court, with regards to "confusion and deception" are clear and reasoned enough and are covered by the case of "Pan Masala" and "7-Up". As regards the contention of the counsel for the McDonald's that. once Registrar of the Trade Marks comes to the conclusion that Maxfood is not entitled to the use of logo 'M' with its trade mark, the Registrar has no power to allow it to use its label with logo 'M' for a period of three months. 1 find such contention of the learned counsel to have force as under D the provisions of section 14(1) of the Act, the Registrar has not been given such a discretion to allow use of any infringing trade mark even though for a specified period after he has arrived at a conclusion that to such trade mark the Maxfood was not entitled. For the foregoing reasons, the appeal of McDonald's is partly allowed with the observation that Maxfood will not be entitled to use logo 'M' with its trade mark from the date of the impugned order. The appeal of the Maxfood is, however, dismissed. Both the parties to bear their own costs. M.B.A./M-28/K????????????????????????????????????????????????????????????????????????????????? Order accordingly.