2004 PLP 1454 (CLD)

This J.M. Application has been filed under section 46 of the Trade Marks Act, 1940 by the applicant. Basic Trademark S.A, a company incorporated under the laws of Luxembourg, having office in Luxembourg for expunction from the Register of Trade Marks, the registration of the Trade Marks Application No.116268 in class 28 in respect of the Trade Mark KAPPA standing in favour of respondent No.1 and for rectification of Register of Trade Marks accordingly.

2. Shortly put, the application arises under the following circumstances. The applicant is an internationally renowned company engaged in the manufacturing, marketing and sale inter alia of sports gear and sports wear under The name and title of KAPPA in several countries of the world. It is stated that the registration of trade mark KAPPA in Pakistan was granted on 25-5-1982 and the same was being renewed. It is further stated that Pakistan in the manner that the same are brought by Pakistanis either residing or traveling abroad who return to Pakistan with the goods of the applicant. It is pleaded that the applicant intends to market and sell its goods in Pakistan. It is the case of the applicant that with a view to misappropriate the goodwill, name and reputation of the applicant's trade mark KAPPA, respondent No.1 applied for registration of the trade mark KAPPA by deceiving respondent No.2 to believe that respondent No.1 was the proprietor of the trade mark. According, to the applicant they manufacture, market and sell sports and sports wear under the Trade Mark "KAPPA", therefore if respondent No.1 is allowed to use the same Trade Mark, it shall lead to deception and confusion in the minds of the consumers, thus offending the provisions of section 8 of the Act. It is further urged that respondent No.1 had obtained registration of Trade Mark by deceiving respondent No.2 by filing a false affidavit, thereby falsely showing themselves to be proprietor of the said Trade Mark and to make respondent No.2 to believe it so. It is further pleaded that in permitting respondent No.1 to use the said Trade Mark, respondent No.2 has violated the provisions of section 10 of the Trade Marks Act. Furthermore, the provisions of section 6 of the Act have also been violated as there is no element of "distinctiveness" which is pre-requisite for registration. It is therefore prayed that respondent No.2 be directed for expunging the entry.

3. Consequent upon service of notice, objections were filed by the respondents on 30-5-2000. In the objections it was stated that respondent No. 1 company is registered. proprietor of Trade Mark "KAPPA" under Registration No.116268 in class 28 of the International. Classification of goods under the Trade Marks Act, 1940. According to them, they applied for registration of Trade Mark "KAPPA" on 9-7-1992 in respect of sport goods and after adopting proper procedure and getting the notice of said Trade Mark published and receiving no objections to the registration of the said Trade Mark in favour of respondent No. 1, the same was registered vide Registration Certificate dated 31-12-1997. According to respondent No. 1, since 1997 they' being manufacturers, merchants and exporters of the products, have been dealing with the said products continuously. It is further stated that in the year 1996 the applicant had filed Application No.134759 for registration of Trade Mark "KAPPA" in class 28 which is still pending. According to them, they have been dealing with their products under the Trade Mark "KAPPA" for the last several years and goods with the said Trade Mark in Pakistan are known to be manufactured only by respondent No.1-Company. They have denied that violation of any of the provisions of Trade Marks Act has been made while allowing registration of Trade Mark "KAPPA" in favour of respondent No.1. In the circumstances, it is urged that the application is liable to be dismissed.

4. Messrs Kazi Faez Isa, Advocate for the applicant and Muhammad Nadeem Qureshi., Advocate appearing on behalf of respondent No.1, have been heard. Learned counsel. for one parties also filed synopsis of arguments.

5. It was urged with vehemence that the applicants are the proprietor of the trade mark "KAPPA" therefore its registration in the name of the respondents or for that matter any other company, individual or firm was invalid. In the view of learned counsel for the applicant, by using the trade mark "KAPPA" respondent No.1 is deceiving and causing confusion in the 'minds of the general public to make them believe that the goods purchased by them are manufactured by the applicant, as such, registration of trade mark "KAPPA" in favour of respondent No.1 is liable to be expunged from the Register of Trade Marks. To support the case of the applicants reliance was placed on the cases reported in (i) PLD 1979 Karachi 83, (ii) 1981 SCMR 1039, (iii) AIR 1977 Delhi 152, (iv) AIR 1958 Bombay 56 (V 45 C 21), (v) AIR 1965 Bombay 35.

6. On the other hand, learned counsel for respondent No. 1 contended that neither any deception is made to nor any confusion is caused in the minds of the people, firstly because respondents are proprietor of the said trade mark manufacturing and marketing the same after having obtained registration for it in the year 1997; and secondly because no goods of the applicants under the trade mark "KAPPA" are available in the markets of Pakistan and the people of this country recognize the goods with the trade mark "KAPPA" to be belonging to respondent No.1 and not to the applicants. Therefore, respondent No.1 is entitled to use the trade mark "KAPPA" and it is, in fact, the applicant who is legally not entitled to use this trade mark in Pakistan. Learned counsel for respondent No.1 relied upon the cases reported (i) PLD 1978 Karachi 161, (ii) (1970) R.P.C. 435, (iii) (1978) R.P.C. 211, (iv) PLD 1975 Karachi 478, (v) 1991 CLC 37, (vi) 44 R.P.C. 335 in furtherance of the above contentions.

7. Careful attention has been bestowed upon the arguments advanced at the Bar besides browsing the relevant case-law.

8. The main contentions raised on behalf of the applicants, are that in fact, applicants are the proprietor of Trade Mark "KAPPA" and the registration of said trade mark was obtained by respondent No. 1 by concealing the truth and committing perjury and that if respondent No. 1 is allowed to use the said trade mark which is used by the applicants in several countries, it shall lead to deception and confusion in the minds of the (sic) 10(1) of the Act No.V of 1940 were invoked by the applicants. It is therefore appropriate, to reproduce, at the outset, the relevant provisions of the Act. "

8. Prohibition of registration of certain matter. 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) _________________. (c) _________________ "

10. Prohibition of registration .of identical or similar trade mark. (1) 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 proprietors and either already on the register in respect of the same goods or description of goods or which so nearly resembles such trade mark as to likely- to deceive or-cause confusion. (2) ___________________________ (3) __________________________"

9. The perusal of the above provisions of law make it adequately clear that, inter alias if certain trade mark is likely to deceive and/or cause confusion in the minds of the general public that the goods purchased by them under such trade mark are of another proprietor and taking the same to be manufactured by another sound proprietor/ Company, they purchase those goods, registration thereof shall be violative of the provisions of sections 8(a) and 10(1) of the Trade Marks Act, 1940 and in such a case an entry in respect of trade mark existing in the Register of Trade Marks in the name of such company/person is liable to be expunged from the relevant. Register, as stipulated under section 46 of the Act.

10. Besides appreciating the provisions of the statute I have had the advantage of surveying the relevant case-law to see how far, in the facts and circumstances of this case, the trade mark "KAPPA" being used by respondent No.1 is likely to deceive the general public and cause confusion in their minds.

11. In the case reported as Messrs Bengal Friends & Co., Dacca v. Messrs Gour Benode Shah & Co., Calcutta and another PLD 1969 SC 477 the Honourable Supreme Court held as under: "It has been noticed that the supplies made by respondent No.1 to East Pakistan since 1948 were scanty and stopped together in 1952. Consequently when the appellant applied for registration of his mark in 1953 the goods of respondent No. 1 were not available in the market. In the circumstances there was no likelihood of `deception' or `confusion' as contemplated in section 8(a)." In the case reported as S. M. Taufiq and others v. National Biscuit Co., New York PLD 1962 (W.P.) Karachi 335 it was held:-- "It therefore appears to me that for the purposes of registration under the Act, the Tribunal should ordinarily consider the user in this country to which the Act applies. If the case of the appellant is considered on this view of the law, there is not shred of evidence on the record to establish that the public or a common man in this country will in any way be deceived or confused while purchasing goods under the trade mark "Nabisco" manufactured by the appellants. The respondents have no market of this trade mark in respect of any goods in this country. They have no reputation and as such there can possibly be no deception or confusion in the minds of the public of this country that the goods manufactured by the appellants belonged to the respondents. In these circumstances the respondent had not established a reputation for their mark upon which an opposition could be founded." In the case reported as Aktiebolaget Jonkoping Valcan Sweden v. Registrar of Trade Marks Karachi and another PLD 1975 Karachi 478 it was held as under:-- "The "other special circumstances" relied on in Lullabhai Amichand case were identical with those in the present case viz.; that the goods of the foreign registered proprietor were not available for sale or consumption in Pakistan and in the vacuum so created, a national firm of manufacturers had built up a sizeable business by using the trade mark in question over the last several years without any objection. These circumstances, in the view of the Court, were regarded as "special circumstances" within the meaning of section 10(2) of the Act." In Solo Susice Narondi Pondik v. Sindh Match Works (Pvt.) Limited and another reported in 1991 CLC 37 it was held as under: "The goods with the trade mark in Pakistan markets are known to be the products of respondent No.

1. When with reference to a mark the goods of a manufacturer are distinguished from the goods of other producers, the mark achieves distinctiveness. It is local market where the mark should be known and recognized to represent a particular person and the goods bearing the said mark to belong to him and none else." In the said report it was further observed:- "This controversy seems to be well-settled that if the goods of a manufacturer are not available in the market for a long time and during this period another manufacturer sells the same goods under similar trade mark the question of deception and confusion, depending on the facts of case, will not arise." In the case reported as Pakistan Soap Factory v. Chittagong Soap Factory and another PLD 1970 SC 460 the Honourable Supreme Court observed as under:-- "On a careful and overall appraisement of the affidavit evidence produced by both sides in this case, we are of the opinion that the appellants have proved concurrent and honest use of their trade mark for quite a long time, which is not satisfactorily rebutted by the affidavit evidence produced by the respondent. In our view, the Deputy Registrar and the learned Judges of the High Court have erred legally in refusing registration of the appellant's trade mark." The ratio decidendi of all the above-referred cases is that it is the local markets and not the foreign markets which are to be made basis to decide the question as to whether any deception or confusion is caused in the minds of the people. If in the markets of a particular country the products of only one H manufacturer are sold under a specific trade mark and the goods of other manufacturers with the same or similar trade mark are not available in the markets of that country, no question of deception or confusion in the minds of the people of that country arises. In the present case, the applicant in para.5 of the petition has itself admitted that "Applicant also intends to market and sell its goods in Pakistan as it has been doing in several other countries of the world for the past many years". From the wordings of above quoted admission, it is clear that till date they are not marketing and selling their goods in Pakistan but in future they intend to do so: In view of the facts of the case, tested on the touchstone of the well-settled principles of law, it can conveniently be held that by using the trade mark "KAPPA" by respondent No. 1 in Pakistan, no deception or confusion as contemplated in sections 8 and 10 of the Trade Marks Act would be caused inn the minds of the people of this country. No doubt they principles of law enunciated in the rulings relied upon by the applicants' counsel are inescapable but to the hard luck of the applicants those are absolutely inapplicable to the facts of their case. The upshot of the above discussion is that the petition being devoid of merits deserves to be dismissed. It is accordingly dismissed. However, in the peculiar circumstances of the case, there will be no order as to costs. M.B.A./B-12/K Petition dismissed.