P L D 1961 (W (PLP)

2. The reasons for which the Registrar has allowed the applications have been given by him, as follows:‑ "Why I am allowing the applicants to use their trading style other than as part of the trade mark is due to the fact that they have been using this style of trading for quite a number of years. I can only prevent its use as part of the trade mark, but not otherwise."

3. If I rightly understand the reasoning of the Registrar, his view is that the use of the name "Shipton Tea Co." for a number of years as its trade name, has given a right to the company to use it for its trade, which right cannot be curtailed but a trade name is distinguishable from a trade mark, and therefore, restrictions can be imposed on the use of the trade name as a part of its trade mark in order to minimize the harm that is likely to result from the similarity of the word "Shipton" with the word "Lipton" when used as a trade mark or as a part of a trade mark.

4. It is important to note the distinctions that exist between a `trade name' and a `trade mark' for appreciating the scope within which the Registrar could impose restrictions after finding that the owner of the trade name "Shipton Tea Co." has acquired a right to use it. Three distinctions come to my mind: Firstly, the owner of a registered trade mark possesses rights which, in the words of Harry D. Nims, used by him in Volume I of his book, "Unfair Competition and Trade‑Marks" at page 514:‑ " . . are more readily established' and less easily attacked than are rights in a trade name or in names which A possess a secondary meaning. Where the issue is the acquisi tion of trade‑mark rights, or the loss .of such rights by abandonment or neglect, or intentional fraud‑whenever these issues are raised, the owner of a technical (or registered) trade mark has a definite advantage." Secondly, a trade mark, in the words of the same author, at page 512‑ "is used on goods and identifies the origin of the goods,) B whereas a trade name identifies the business." The author has supported the view as follows:‑ `In 1909, the New York Court of Appeals said that a trade mark is applicable only to a vendible article of merchandise to which it is affixed while a trade name relates to a business and its good will rather than a vendible commodity. Trade marks and trade names are in reality analogous to the good C will of the business to which they appertain. The trade mark distinguishes it in the market and the trade name proclaims it to those who pass the shop. This Court made the same distinction again in 1938." In other words, a trade name and a trade mark are two aspects of good will. Thirdly, they may be distinguished on the ground a trade name need not have a bodily existence, unless it is written on something, and may exist abstractly, but a trade mark must always have a body because it is always a mark on something. The former has primarily a phonetical existence and the latter has primarily a visual existence. The first distinction is not important in this appeal, because it relates to remedies when there is an infringement. The second distinction is not material in this appeal because the Registrar has allowed registration thus extending, clearly or obscurely, the use of trade name to and allowing such good will as it carries to be attached to its goods in trade. The third distinction is important because it relates to the visual aspect of names, as distinguished from their phonetical aspect, and the Registrar was reluctant to give visual prominence to the trade name of Shipton Tea Co. as a part of its trade mark. He could, no doubt, impose conditions so as to eliminate or minimise the harms that are likely to be suffered owing to visual confusion, provided the conditions did not curtail the right which the owner of the trade name has already acquired. The owner has acquired a right to use the trade name despite its phonetical confusion.

5. There is some justification for the assertion made by counsel for Shipton Tea Co. that the conditions imposed by the Registrar create an impression that he has used registration as an opportunity to restrict the use of the trade name which is other wise not controllable by him. Additionally, the Registrar does not appear to have fully realised, while imposing conditions, that phonetical confusion having become unobjectionable, conditions could, in strict propriety, be imposed essentially relating to visual similarities. These impressions are created because the conditions which have been imposed do not relate to the get‑up and appear ance of the trade mark of the rival company, namely. Lipton Ltd. or strictly to the object of eliminating or minimizing the visual confusion between the words. "Shipton" and "Lipton" but amount to obscuring the connection between the goods in trade and their origin, namely, Shipton Tea Co. This reasoning finds some support from the stand taken by counsel for Lipton Ltd. because he has conceded that there is no similarity between the trade mark of Lipton Ltd. and the proposed trade mark of Shipton Tea Co. excepting for the words "Shipton" and "Lipton". In fact, according to him, the trade mark of Lipton Ltd. is confined to the word "Lipton" and that it has no trade mark even in the style of the letters in which the word "Lipton" is written. The net result of this stand is that the opposition of Lipton Ltd. had to be restricted to visual similarity between the two words "Shipton" and "Lipton". Their similarity consists of the common letters "Shipton", and their dissimilarity consists of the letters "L". and "Sh". Specific attention does not appear to have been paid to the similarity and dissimilarity of the two words because the conditions that have been imposed show that the entire name of "Shipton Tea Co." should be made inconspicuous by deleting from the most prominent place and by omitting the use of a striking colour for printing it. If these conditions are going to t have the effect of suppressing the name of the manufacturer of the goods, then its goods will be placed on the market anony mously, and if their effect is going to be only to obscure the name of their manufacturer, then confusion will exist without mitigation subject only to the difficulty of the purchaser in connecting the goods with their manufacturer and thus in easily identifying them.

6. These conditions have been imposed by the Registrar in exercise of his discretion conferred on him by subsection (2) of section 10 of the Trade Marks Act, 1940. The provision is as follows:-- "In case of honest concurrent use or of other special circum. stances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one pro prietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose." It is obvious that his discretion should not be interfered with without sufficient reasons for doing so. The reasons for interference in this case are that the discretion appears to have bee exercised partly unreasonably and partly with the effect of over reaching the limitations which have been created on the rights of Lipton Limited by the acquisition of a right by Shipton Tea Co. to freely use its trade name. The limitations are over‑reached because, whereas Shipton Tea Co. is entitled without registering its trade mark to freely use its trade name and to print it in any colour it likes on its goods, so long as its labels do not in any other respect infringe the trade mark of Lipton Ltd., after its regis tration the name will be partly suppressed by its deletion from the most important place in the trade mark and partly obscure by the flattening effect of reduced size of panels of labels and turned down colour scheme. The conditions are unreasonable a because they aim at snapping the connection between the goods and their manufacturer, or at least at creating an obscurity inconsis tently with the object of a trade mark, which is to ensure easy identification of goods with reference to their origin. If, Shipton Tea Company builds up a reputation, or has already acquired any reputation, then in proportion to the obscurity of its name in the trade mark, its reputation will be rendered useless, or may be nullified in proportion to the anonymity which may result from the conditions which have been imposed.

7. Mr. Hassan for Lipton Limited has advanced four argu ments proposed to be in support of the order of the Registrar. Firstly, he has contended that Lipton Ltd. is entitled to object to the trade name of Shipton Tea Co. because it is not estopped from doing so. This is inconsistent with the order of the Registrar, from which an appeal has not been preferred by Lipton Limited. Secondly, he has argued that Shipton Tea Company may use its trading style, but cannot convert it into a trade mark because the Registrar has held that the use of the name has not been honest. I cannot accept this argument because, apart from other reasons, honesty in the use of a trade name is not the sole consideration and the registrar has rightly used his power under subsection (2) of section 10 of the Act, in spite of his conclusion that the con current use of the trading style was not honest, in view of the special circumstance that the use of the trading style could not be prevented, What is regarded as mainly objectionable in his order is that while registering the trade mark he appears to have attempted to render it at least partly futile by suppressing or obscuring the connection between the established trade name of the company and its goods. Thirdly, counsel argued with much emphasis that nobody has a right to use a name as a trade mark even if it is his birth name. This is an irrelevant argument in the context of the present case. Fourthly, counsel argued that the object of the law is not only to protect traders and manufacturers, but also to protect the public at large from being deceived. This object, according to him, will be achieved if the objectionable name is suppressed in a sufficient measure. I am not able to appreciate this argument because the use of the trading style of Shipton Tea Co. has been recognized by the Registrar to be out side his control. This limitation on his power cannot properly be removed by obscuring the connection between the goods in trade and their origin. Counsel argued that obscurity relating to the source of the goods would not make them anonymous because effective suppression of the trading style of the manufacturer will give currency to some other reference to the goods, like the name "Shipton Brand", without reference to the trading style. This is an argument which supports the appellant in its contention that its trading style or trade name will be lost to it. Moreover, identi fication of goods with reference to their colour, brand, shape or size still means anonymity with reference to their source and origin, which prospect is unfavourable to fair competition among businessmen and to reliable trade from the point of view of the public.

8. It appears to me that the conditions and limitations which have been imposed by the Registrar are neither to the benefit of the public at large, nor consistent with the object of a trade mark nor strictly with the rights that have been acquired by Shipton Tea Co. by long use of its trading style. I would, however, not assume the duties of the Registrar by substituting other limitations and conditions; nor do I hold that no conditions and limitations need be imposed, but would merely set aside the conditions and limitations which have been imposed and remand the case for imposing, if necessary, any suitable conditions and limitations. It is ordered accordingly. The parties to bear their own costs. K. B. A. Order accordingly.