1986 PLP 649 (CLC)

Mr. Ashraf Ali, the learned counsel for the appellant submitted that the device declared common to the trade, amongst others, is that of "LADY" but the word 'GIRL' has never been declared common. In support of his submissions he produced "The Trade Mark Journal" wherein is given the list of devices which have been notified to have been declared common to trade. At page 818 of the said Journal the following entry appears. Trade Mark Class Goods "Device of Lady 3 Soap and all other goods in Class 3 (Note‑‑ Photo copies of the pages 817 and 818 of the Journal are placed on the record.) It was further submitted by the learned counsel that the statement made on behalf of the appellant before the Registrar that appellant as to its right to use of word "Girl" "agreed to its disclaimer" was due to misconception as it was based upon the observations of the Registrar of Trade Marks that the said word GIRL has already been declared common whereas it is now found that the said word has not been, declared common. This submission of the learned counsel for the appellant appears to be correct as would appear from the impugned order where in this regard it is stated:‑

"When attention of the learned counsel was drawn to the fact that the word 'Girl' has already been declared common to trade in class 3 he voluntarily agreed to its disclaimer." Mr. Ashraf Ali further argued that the mark "FRENCH GIRL" could not be dissected and then made subject of objection that each word taken up separately could not be registered on the ground that one word is geographical name and the other is common to the trade. The learned counsel further contended that even if there was a disclaimer as to both the words, each taken separately, that would not be a valid ground to refuse the registration of the trade mark of the appellant which consists of combination of words. Mr. Murtaza, learned Advocate for the Registrar though unable to point out that the word 'GIRL' has already been declared common argued that the registration of a trade mark in question was rightly supported the impugned order contending that the word "French" is a geographical name and that the trade mark in question i.e. "French Girl" though combination of words, would still be objectionable as it would deceive consumers as they are likely to consider that the products of foreign origin namely from France of which country "perfumes, Eau de Cologns, Lavenders" are well‑known throughout the world.

7. In order to appreciate the arguments advanced by the learned counsel it would be relevant to refer here to the provisions of section 6(1)(d) and section 8 of the Trade Marks Act, 1940 which are reproduced herein below as the arguments of both the counsel were based upon them:‑

"Section 6(1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely:‑-- (a) ............................................................... (b) ............................................................... (c) ............................................................... (d) one or more words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification, a geographical name or surname or the name of a sect, caste or tribe in Pakistan;" Section 8 reads as follows:‑-- "Section 8.‑ Prohibition of registration of certain matters: 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‑‑ (a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; or (b) be likely to hurt the religious susceptibilities of any class of the citizens of Pakistan; or (c) be contrary to any law for the time being in force or to morality." The requirements of section 6(1)(d) reproduced above, it appears, stand satisfied in the present case as the Trade Mark "French Girl" has no direct reference to the character or quality of the goods. It is also not in its ordinary significance, a geographical name or surname. The use of the words "French Girl" in my opinion does not indicate that the goods sold under the said trade mark, are of French origin. The inference reached by me is fully supported by the case reported as SCOTSMAN Trade Mark (1965) R.P.C.

358. The facts of the said case briefly stated were that the applicant company, applied for registration of trade mark which consisted of word SCOTSMAN in plain to block capitals, in class

11. Objections taken to the mark under provisions of subsections (c), (d) and (e) of section 9(1) of Trade Marks Act, 1938 on the ground that it is not invented, that it has direct reference to the character or quality of the goods and that it is not distinctive and that it connotes goods of Scotish origin, were upheld by the Assistant Controller who therefore refused to allow the application. In the appeal preferred the contention raised in opposition to the grant of application that the public seeing the applicants goods e.g., refrigerators in Scotland with word "SCOTSMAN" upon them might well think that they were Scotish goods, was repelled. The following observations made by the learned Judge for purposes of the present case being relevant are reproduced below:‑-- "

If it had been established or even if it appeared likely that the use of the word SCOTSMAN on goods in class 11 would normally lead to the belief that the goods were associated with Scotland, then registration would have to be refused, because even if the mark could be regarded as having some distinctive element it would be deceptive. I do not consider that the known circumstances lead to that conclusion. The Registrar's decision rests upon a very narrow proposition. ‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑ It should here be explained that one is concerned to have regard only to some definite indication or suggestion conveyed by the word in question that the goods are associated with Scotland. A figurative or fanciful suggestion of association, which the public would accept as such and no more, would not be objectionable." The Registrar was accordingly ordered to proceed with the application subject to directions given in the judgment.

8. Reference may also be made here to the case of ROMAN HOLIDAY Trade Mark reported in (1964) R.P.C.

129. Objection to the application for registration of the above mark which consisted of the words "ROMAN HOLIDAY" in block capitals was taken under sections 9(1)(c)(d) and (e) of the (English) Trade Marks Act, 1938 on the ground that it is not an invented or invented words, that it consists of a word having direct reference to the character or quality of the goods followed by the word having surname significance and that it is in consequence not an inherently distinctive trade mark. Objection was also taken under section 12 of the said Act on the ground of the presence on the Register of two trade marks registered for persons other than the applicants. Under section 11 of the Act objection was also taken on the ground that it is likely to deceive. The applicants accepted the Registrar's decision in respect of the objections made under section 9 and section 12 of the Act and necessary requirement for amendment on requisite form was made but they refused to undertake to use the mark only on the goods manufactured in Rome. Arguments before the Registrar thus were to the objection raised to the mark under section 11 of the Act. The Registrar refused the application holding that the words ROMAN HOLIDAY alone when used as a trade mark might well lead people to believe that the goods on which it was used were connected with the modern city of Rome and that as the specification of goods for the said application (as limited) covered emanating from places other than Rome, the mark was open to objection under provision of section

11. It may be also noted here that the applicants were not prepared to give undertaking to use the said mark only in relation to goods manufactured in Rome as already noted above. Appeal was preferred against the above decision of the Registrar. It was contended, inter alia, before the learned appellate Court that the term ROMAN HOLIDAY in relation to the goods concerned is purely fanciful and that nobody would suppose that the mark indicated that the goods had any connection with Rome still less that they were manufactured in Rome. Agreeing with the submissions thus made, the learned Court held the proposed mark was free from objection under section 11 of the Act and directed the Registrar to proceed with the application for registration of the said mark. The observations made by the learned Court relevant for the purposes of this case are reproduced below : ‑‑ "I consider that this argument is well‑founded and with all respect to the Registrar I think that there is an error in his reasoning in the passage of his decision which I have quoted. The fact that to some persons the mark will indicate a connection with the modern city of Rome does not mean that such persons will believe that the connection has anything to do with the origin of the goods. The phrase HOLIDAY IN ROME would convey the same indication as ROMAN HOLIDAY and yet the former phrase would clearly be as unobjectionable for trade mark purposes as the mark EVENING IN PARIS which is already registered by the applicants in the same class. The statement in the Registrar's decision that the adjective ROMAN in the proposed mark will be taken as referring to the perfume or lipstick and, therefore, as indicating that the goods concerned originated in Rome is in my view not justified having regard to the normal use of language according to which the adjective ROMAN would be understood as referring to the holiday and not to the goods. It would not be right to judge the mark on the basis of some strained interpretation. I regard the term ROMAN HOLIDAY (if it is not to be given the classical meaning) as synonymous with HOLIDAY IN ROME and as such just as fanciful in relation to the goods as EVENING IN PARIS and can see no reason for believing that purchasers of the goods would understand the mark in any other way and thereby be deceived because the goods are not in fact made in Rome."

9. Useful would it be to refer here to the commentary under section 6 of the Trade Marks Act, 1940 by K.S. SHAVAKSHA where the learned author summarised as follows:‑-- "So far single words, geographical names and surnames have been taken into consideration. There may, however be a combination of words. There may be two or more words or a word and a geographical name or a surname and a word or any other such combination. Although any one of these words may be wholly unregistrable by itself, yet in combination the mark may be registrable. For instance, as already stated, the word "Kitchen" for culinary utensils would not be registrable, but the words "Kitchen‑Imp." would be registrable for such articles with disclaimer of the word "Kitchen". In the same way, although "India" is not registrable, the words "The Indian Clown" would be considered registrable on the ground that it has no direct reference to the character or quality of the goods. A few illustrations of such marks registered in India are: "Burma Girl" "Gateway of India", "Nottingham Castle", "Evening in Paris", "The Light of Asia", "London Tower". I would like here to mention the fact that alongwith the memo. of appeal, the appellants filed statement of disclaimer of word "FRENCH". Significant fact to be noted is also that appellants are registered proprietors of the following Trade Marks ending with the word "GIRL":‑

Registration No. Trade Mark 55075 ... GARDEN GIRL 55335 ... ENGLISH GIRL 56529 ... FASHION GIRL Thus the objection argued under point Noj (i) abovementioned, in my opinion cannot be sustained.

10. I would now take up the points Nos. (ii) and (iii) together for sake of convenience as the same are interlinked. Mr. Ashraf Ali, the learned counsel for the appellant submitted that the device declared common to the trade, amongst others, is that of "LADY" but the word 'GIRL' has never been declared common. In support of his submissions he produced "The Trade Mark Journal" wherein is given the list of devices which have been notified to have been declared common to trade. At page 818 of the said Journal the following entry appears. Trade Mark Class Goods "Device of Lady 3 Soap and all other goods in Class 3 (Note‑‑ Photo copies of the pages 817 and 818 of the Journal are placed on the record.) It was further submitted by the learned counsel that the statement made on behalf of the appellant before the Registrar that appellant as to its right to use of word "Girl" "agreed to its disclaimer" was due to misconception as it was based upon the observations of the Registrar of Trade Marks that the said word GIRL has already been declared common whereas it is now found that the said word has not been, declared common. This submission of the learned counsel for the appellant appears to be correct as would appear from the impugned order where in this regard it is stated:‑ "When attention of the learned counsel was drawn to the fact that the word 'Girl' has already been declared common to trade in class 3 he voluntarily agreed to its disclaimer." Mr. Ashraf Ali further argued that the mark "FRENCH GIRL" could not be dissected and then made subject of objection that each word taken up separately could not be registered on the ground that one word is geographical name and the other is common to the trade. The learned counsel further contended that even if there was a disclaimer as to both the words, each taken separately, that would not be a valid ground to refuse the registration of the trade mark of the appellant which consists of combination of words. Mr. Murtaza, learned Advocate for the Registrar though unable to point out that the word 'GIRL' has already been declared common argued that the registration of a trade mark in question was rightly refused as the word "GIRL" is common to the trade and that it is not the requirement of the Taw that registration of a word could be refused only if the word objected to has been officially so notified. Reliance was placed by the learned Advocate on the provisions of section 13(b) of the Act, 1940.

11. I have considered the contentions raised above by the learned Advocates for the parties and I do not find it necessary to go in the controversy as to whether under the law it's necessary that before registration of a matter is refused on the ground that it is common to the trade, the word objected to should have been notified to be common to the trade, as I find that the mark "FRENCH GIRL" could not have been refused merely on the ground that the word "GIRL" was common to the trade and that to the use of each word taken independently the appellant had notified disclaimer.

12. It would be relevant to refer here initially to the provisions of section 13 of the Act of 1940 which read as follows:‑

"

13. Registration subject to disclaimer: If a trade mark contains‑‑ (a) any part not separately registered as a trade mark in the name of the proprietor, or for the separate registration of which no application has been made, or (b) any matter common to the trade, or otherwise of a non‑distinctive character, the tribunal, in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the tribunal holds him not to be entitled, or make such other disclaimer as the tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration: Provided that no disclaimer shall effect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made." (The underline has been made by me). A reading of the law reproduced above would show that it was open to the appellant to disclaim any right to the exclusive use of each of the two words used independently and/or separately and that its application could be considered if other requirements as to registration of a trade mark as required by the law were satisfied. The inference thus drawn finds support from the principle recognised in the decision given in the case reported as "In The Matter Of An Application By The Diamond T. Motor Company To Register A. Trade Mark" (1921) 38 R.P.C.

373. The facts of the said case relevant for the purposes of this case I may refer here. An application in United Kingdom for registration of a trade mark consisting of a combination of a diamond with the word "diamond" and the letter "T" was made to register the mark in Class 22 for Motor Cars and Motor Trucks. There was evidence of large sales of the applicants vehicles under the said mark in the U.S.A. and in many other countries abroad. The applicant's vehicles had been advertised in the United Kingdom under the said mark and traders and others inquired for the applicants vehicles under the name "Diamond T" but there was no evidence of any sales in that country. The said trade mark was found to have been registered in U.S.A. and in many other countries. The Registrar refused the application on the ground that the mark was not a distinctive mark within the meaning of the (English) Trade Marks Act on the ground that the device of a diamond was a common device for Trade Marks in the motor and that registration of the mark might create in the mind of the public the impression that the applicants had obtained a monopoly of a diamond -shaped border, that registration of the mark would prevent all persons who had the initial T from using that initial in a diamond shaped border: that the mark bore such a resemblance to three other marks already on the Register as to be calculated to deceive and in the exercise of discretion. In the appeal preferred against the above order the same was reversed for the reasons which have correctly summarised in the head- note and, therefore, reproduced below for the sake of convenience:‑ "Held, that the expression "any other distinctibe marl" in paragraph (5) of section 9 of the Trade Marks Act, 1905, means a distinctive mark other than a mark designated in the preceding paragraphs (1) to (4) and when a trade mark is claimed as a distinctive mark under paragraph (5), the only essential particular which section 9 requires it to contain is that it should be distinctive; and that, where the reasonable conclusion can be drawn that the applicant for a mark has affixed the mark to his goods for no other purpose than to indicate that the goods are the manufacture of the proprietor of the mark and not of some other manufacturer, that goes a long way towards proving that the mark is adapted to distinguish; and that the Applicants' mark was a distinctive mark within the meaning of section 9 paragraph (5) of the Trade Marks Act, 1905, and that it was not calculated to deceive or cause confusion." The learned Court for the reasons summarised as above repelling the apprehension that the public might conceivably be under the impression that the applicants had obtained a monopoly in the use of diamond‑shaped border and that embarrassment in the trade would follow such registration after taking notice of the fact that there are already six marks with diamond‑shaped borders on the Register in respect of the class of goods concerned, observed:‑ "The registration of these marks seems to me to indicate that the registration of a further Trade Mark with a diamond‑shaped border would not deter other manufacturers desirous of using a Trade Mark with such a border from doing so in the future. Last, however, the use of the word "Diamond" in the Applicants' mark should, after registration, be thought to have conferred any exclusive right to such a border, I propose as a condition of registration to require the applicants to disclaim any rig both to the exclusive use of a diamond‑shaped order, and also to the exclusive use of the word "Diamond". And finally held:‑

"In the result I allow the appeal and direct the application for the registration of the Applicants Trade Mark to proceed but subject to the condition that the applicants shall make the disclaimers which I have mentioned."

13. It would thus be observed that the Registrar was directed to proceed with application for registration of the Trade Mark even though it was made subject to the condition that the applicants shall disclaim any right both to the exclusive use of a diamond‑shaped border, and also to the exclusive use of the word Diamond, the Court further "agreeing with the Registrar in thinking that no trader whose name begins with the letter T ought to be prevented from using that initial upon his goods" it was also observed that registration of the Applicants' Trade Mark would not prevent such use.

14. Before concluding I may mention that in this Court on 23‑9‑1985 an undertaking in writing was filed on behalf of the appellants by their Advocate Mr. Ashraf Ali, in the following terms:‑ "The appellants above‑named hereby agree and undertake to amend the specification of goods of their Trade Mark Application No. 65030 in class 3 so as to exclude the undernoted goods from it:‑

"perfumes, Eau de Cologns, Lavenders" Mr. Ali Murtaza, Advocate for the respondent in reply submitted that due to the undertaking given as above the appeal itself has become infructuous. I do not find any justification in the submission thus made by Mr. Murtaza as the undertaking given on behalf of the appellants does not in any manner destroy the subject‑matter of the appeal.

15. For the reasons given above and being of the opinion that the trade mark (FRENCH GIRL) consisting of combination of words, is a distinctive mark, not likely to deceive or cause confusion and that the reasons given in the impugned decision cannot be supported by law, the appeal is allowed and the Registrar is directed to proceed with the appellant's Application No. 65030 in class 3 in accordance with the law subject to the, disclaimer of rights already notified by the appellant and the undertaking given in this Court on 23‑9‑1985 which has been noted above. Parties, in the circumstances are left to bear their own costs. A.A. Appeal allowed.