2002 PLP 1819 (CLD)

NAZIM HUSSAIN SIDDIQUE, J.‑‑‑This appeal by leave of this Court is directed against the judgment dated 5‑9‑1994 of a learned Judge in Chamber High Court of Sindh, Karachi, whereby M.A. No. 31 of 1993, filed by the appellant, was dismissed.

2. The facts relevant for decision of this appeal are that the appellant, TIVI B.V. (a Dutch Corporation), on 7‑12‑1986 had applied for registration of its Trade Mark "BORIS BECKER" in respect of games, and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees under Class 28, vide Application No. 92601 and the same was refused by Deputy Registrar of Trade Marks relying upon section 6(1)(a) of the Trade Marks Act, 1940, hereinafter referred to as "the Act of 1940", on the ground that the proposed mark signified an individual's name. The appellant took up the matter before High Court, where it was contended that the full name of well‑known German Tennis Star was "BORIS FRANZ BECKER", as such, section 6(1)(a) (ibid) was not attracted and representation in a special or particular manner was not called for. Further, it was submitted that the appellant's case was governed by section 6(1)(d) by virtue of which surnames prevalent outside Pakistan were registrable in Pakistan.

3. Learned Single Judge of High Court, however, was not satisfied with above contentions and dismissed the appeal holding that German Tennis Star was popularly known as "BORIS BECKER" and this being an individual's name "would not be registrable, unless the conditionalities of section 6(1)(a) are duly met and the name is represented in a special or particular manner".

4. Vide order dated 6‑11‑1995, leave to appeal was granted to consider the scope of clause (d) of subsection (1) of section 6 of the Act of 1940.

5. Clauses (a) to (e) of subsection (1) of section 6 of the Act of 1940 are as follows:‑‑‑ (1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely: (a) The name of the company, individual, or firm, represented in a special or particular manner. (b) The signature of the applicant for registration or some predecessor in his business. (c) One or more invented words. (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. (e) Any other distinctive mark, provided that a name, signature, or any word, other than such as fall within the descriptions in the above clauses, shall not be registrable except upon evidence or its distinctiveness."

6. Before High Court, reliance was placed amongst others on an unreported judgment of this Court delivered in Civil Appeals Nos. K‑37 and K‑38 of 1979 titled as (Hoechest Aktiengesellschaft v. The Assistant Registrar of Trade Marks Registry, Karachi), wherein the request of the appellant for registration of its trade mark "KALLE" under classes 17 and 18 was declined by the Registrar, Trade Marks on the ground that the word "KALLE" is a geographical name, being the name of a village having population of more than five thousands and that the word applied for is also phonetically equivalent to a surname "KELLY", which appeared more than five hundred times in London Telephone Directory. The request of the appellant was turned down by the Registrar on the basis of clause (d) (ibid). Both the appeals were allowed by this Court and the Assistant Registrar, Trade Marks was directed to accept the applications of the appellants and to dispose of the same according to law with the following observations:‑‑ "...Clearly the word 'KALLE' is not a word commonly understood in Pakistan and if at all, it can have only one signification, of referring to the name of a place outside Pakistan. Since in terms of section 6(1)(d), the prohibition relates to geographical names, in Pakistan, it appears to us that no valid objection could be raised to the registration of this word as a Trade Mark."

7. Learned High Court, while repelling the contentions raised on behalf of the appellant observed as follows:‑‑ "...Besides, an enactment on Trade Mark is essentially an international statute, catering to national and international sensibilities and a surname is a surname wherever it is in vogue. We are living in an information age where the Earth has veritably become a global village. Similar may be the connotations of 'a geographical name' and there may be hardly any thing as a pure and simple, geographical name in Pakistan. This country plausibly shares a common geography with the rest of the world. Further by the substitution of the word 'Pakistan' for the word 'India' could the Legislature have intended that what was non‑registrable till the 1949 Amendment namely, a well‑known geographical name in India had upon the amendment also become registrable? Perhaps no. In my most humble view, it may be a total disregard of international norms to allow registration of well -known geographical names prevalent abroad. This should be equally so regarding commonplace surnames current in the outside world. Such, therefore, may not have been the legislative intent. Even so pursuant to Article 189 of the Constitution all Courts in Pakistan are bound to follow the law declared by the Supreme Court. The error, if any, can be corrected at the level of the apex Court only.

8. It is significant to note that the trade mark in question i.e. "BORIS BECKER" has already proceeded to registration in Class 18 (viz. leather and imitations of leather and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; Ships, harness and saddlery.

9. Learned D.A.‑G., who appeared on Court notice, was asked to explain that when the same trade mark has already been registered under Class 18 how could it be refused when its registration was sought under Class

28. He was also asked to explain whether or not any step was taken to cancel its registration under Class

18. He simply stated that he was not in a position either to admit or deny as to why so was done by the Deputy Registrar of Trade Marks. Learned counsel for the appellant explained that "BORIS FRANZ BECKER" has consented by filing his own affidavit for registration of trade mark under Class 28.

10. The function of a trade mark primarily is to supply information to the purchaser about the trade source from where the goods came. The expression 'trade mark' has been defined in the Act of 1940. The trade mark must fulfil the conditions mentioned in the definition of a trade mark. The basic requirement is that, distinctive character of ?the trademark be established without any doubt.

11. Mr. Shahzad Shoukat, learned Advocate Supreme Court for the appellant before us repeated the same contentions, which were advanced before High Court. Firstly, he laid stress on the contention that the appellant's case was governed by section 6(1)(d), which according to him permits registration of surnames, which are prevalent outside the Pakistan.

12. Perusal of clause (d) shows that it is in two parts. The first one deals with "one or more words" having no direct reference to the character and quality of the goods and second is about geographical name or surname or the name of a sect, caste or tribe in Pakistan. It is settled law that when a word has reference to the character or quality of the goods, such as, perfect superfine, best, splendid etc. It would mean as directly referring the character or quality of the goods, as such, would not qualify for registration. Conversely, the words, which do not describe the character or quality goods, would be registrable. Section 6 of the Act of 1940 does not refer to any language. It being so, the foreign words are to be considered on the same footing as an ordinary descriptive word.

13. The case of the appellant is to be examined firstly with reference to the words "BORIS BECKER" and secondly with reference to surname as mentioned in clause (d). The words "BORIS BECKER" do not reflect about character and quality of the goods. The Deputy Registrar of Trade Marks noted that proposed trade mark signifies an individual's name. During the course of arguments, we had asked both, earned counsel for appellant and learned D.A.‑G, as to what were the actual meanings of words "BORIS BECKER" and they were .not able to explain them satisfactory, but learned counsel for the appellant strenuously contended that the same could be taken as a surname of said German Tennis Star and it being not a surname or the name of a sect in Pakistan was registrable.

14. Coming back to clause (d), it is noted that the restriction is in respect of surname in Pakistan and not I that outside of Pakistan. The expression "BORIS BECKER" is not commonly understood in Pakistan and it simply refers to surname relating to outside Pakistan. It has only one signification of referring to surname, which is known outside of Pakistan.

15. Under the law relating to trade mark, a trade mark cannot be registered if it is devoid of any distinctive character or it is of the nature to deceive the public or cause confusion. It is noted that the trade mark in question is not hit by clause (d) and its registration is sought in respect of games and laying things, which included many items. Surnames are commonly used as trade marks. Always there is no difficulty when the surname is very rare as it helps in determining the distinctiveness.

16. Ashwani K.R. Bansal in his "Law of Trade Mark in India, Edition 2001" at page 84 states as follows:‑‑ "In Trade Marks Act, 1999 in all cases of doubt it is advisable for the Registrar to err on the side of allowing registration as the proprietor does not get any exclusive right in respect of non‑distinctive matter contained in the trade mark by registration of the trade mark. Therefore, there is no much of a benefit for the registration of the trade mark."

17. Since in terms of clause (d) prohibition is confined to geographical name or surname, or the name of a sect caste or tribe in Pakistan, we are of the view that no valid objection could be raised to its registration. The observation of learned High Court that the earth has become a global village and that the registration would have been in total disregard of international norms in respect of geographical names as well as surnames are against the provisions of law, as laid down in clause (d) referred to earlier. Such registrations, as laid down by this Court in Appeals Nos. K‑37 and K‑38 of 1979, are I permissible.

18. In consequence, we allow this appeal, set aside the impugned judgment of High Court and also the order of Deputy Registrar, Trade Mark with a direction to the latter to accept the application of the appellant and dispose of the same according to law. M.B.A./T‑43/S Appeal allowed.