P L D 1992 Karachi 115 (PLP)

Messrs Colgate Polmolive (Pakistan) Ltd. the successors of Messrs National Detergents Limited, Karachi, Appellants herein, applied for registration of a trade mark "DENTAID" for their goods, tooth paste and tooth powder, in Class‑

3. Their application was registered as Application No. 94916 by the Respondent. The Respondent raised an objection in terms of Section 6(l)(d) of the Trade Marks Act, 1940 and after hearing the appellants refused the application as according to him "DENTAID" is a word combining two English words "Dent" and 'Aid" and combination of both the words describes the goods and cannot be registered under Section 6(l)(d) of the Trade Marks Act, 1940. Mr. Saleem Ghulam Hussain, Advocate for the Appellants, contended that the Appellants are already registered proprietors of the mark "DENTAID" applied for having been registered under No. 83161 for their goods like bleaching preparations, soap and other substances for laundry use. The Appellant5 had applied for registration of the mark in question under section 12 of the Trade Marks Act, 1940 as well. The Respondent, according to him, did not advert to such aspect of the case and has arbitrarily refused the registration. Besides, according to him "DENTAID" does not give any indication about the quality of the product itself and there could have been no objection to registration of such mark. He referred to the judgment of this Court passed in Misc. Appeal No. 29/90. Mr. S.D. Rana, Advocate appearing for the Respondent, supported decision of the Respondent and referred to three cases: Misc. Appeal No. 41/89 decided by this Court and the cases reported in PLD 1973 Notes 7 (Karachi) and 1987 MLD 2873. The language employed in Section 6 of the Trade Marks Act, 1940 patently indicates it to be purely of restrictive nature. No mark can be registered unless it strictly complies with the terms contained in Section 6 of the Trade Marks Act, 1940. Section 12 of the Trade Marks Act, 1940 makes a special provision for registration of certain marks as associated trade marks. The Section 12 of the Trade Marks Act, 1940 is reproduced herein below: "12.‑‑(1) Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods is identical with another trade mark which is registered, or is the subject of an application for registration, ‑in the name of the same proprietor in respect of the same goods or description of goods, or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may at any time require that the trade marks shall be entered on the register as associated trade marks. (2) Where a trade mark and any part thereof are, in accordance with the provisions of subsection (1) of section 11, registered as separate trade marks in the name of the same proprietor, they shall be deemed to be, and shall be registered as, associated trade marks. (3) All trade marks registered in accordance with the provisions of subsection (3) of section 11 as a series in one registration shall be deemed to be, and shall be registered as, associated trade marks. (4) On application made in the prescribed manner by the. registered proprietor of two or more trade marks registered as associated trade marks, the Registrar may dissolve the association as respects any of them if he is satisfied that there would be no likelihood of deception or confusion being caused if that trade mark were used by any other person in relation to any of the goods in respect of which it is registered, and may amend the register accordingly." It will thus be seen that a proprietor of a registered mark may have same mark registered for his other goods of the same description or having close resemblance to the goods for which it is already registered or such a mark is likely to deceive or cause confusion if used by some other person. Section 12 of Trade Marks Act, 1940, as pointed out herein above, makes a special provision dealing with such cases as are mentioned above and registration of a mark as associated mark under that section will not be subject to the provisions of section 6 of the Trade Marks Act, 1940. The Respondent, as pointed out by Mr. Saleem Ghulam Hussain, Advocate for the Appellants, has not considered such aspect of the case in refusing the application of the appellants under section 14(l) of the Trade Marks Act, 1940. The decision is therefore, set aside and appeal allowed. The Respondent is directed to consider the case of the Appellants in terms of section 12 of the Trade Marks Act, 1940 and decide it afresh in accordance with law. AA./C‑251/K Appeal accepted.