P L D 1969 Dacca 734 (PLP)

A. H. KHAN, J.‑These two appeals under section 76 of the Trade Marks Act of 1940 are directed against an order dated 12th August 1966, whereby the Deputy Registrar decided that the Trade Marks "Master Tailor" of the respondent should proceed to registration. The respondent Haji Abdul Karim of 104, Mitford Road, Dacca, filed two applications being numbered as 35944 and 35945 for registration of the trade mark in each. In the first application the trade mark consists of the words "Master Tailor" written in Bengali and English, while the mark in the other application consists of "Master Tailor Thread Brand" both in English and Bengali with the device of a man measuring the shirt of a boy and the letters "H. A. K," appearing in the label. The applicant's marks were advertised in the Trade Marks Journal in May 1964 and the appellant "Master Thread Ball Works" of Strachon Road, Karachi, filed two notices of opposition and both the opposition proceedings were heard together by the Deputy Registrar of Trade Marks, Chittagong. The case of the appellants is that they have their own registered Trade Mark in respect of the same goods, namely, Thread Balls consisting of, or including, the word "Master". The different Trade Marks of the appellants with the dates of registration are as follows: (1) 8247 (Registered on 14‑9‑49) Word `master' in red ink on yellow label. (2) 13396 (Registered on 30‑1‑51) Word "Master" with the device of a Turban prominently displayed. (3) 23081 (Registered on 3‑1‑55) Word "Master". (4) 36825 (Registered on 9‑5‑62) Word "Masterni" and the device of a lady. (5) 57162 (Registered on 21‑1‑62) Words "Band Master" and the device of a Band Master. (6) 34501 (Pending Registration) Word "Master" containing the device of a human skeleton. The grounds of opposition are:

1. That the two trade marks are similar, both visually and phonetically and therefore registration of the respondent's trade mark would be likely to cause confusion and deception as such registration would be contrary to the provisions of sections 10(1) and 8(a) of the Trade Mark Act (hereinafter called the Act).

2. That the appellants have been using the first registered trade mark "Master" since 1950 followed by the others, and by reason of this it has acquired considerable reputation and goodwill in the markets all over Pakistan in respect of Thread Balls of this manufacture and the word "Master Tailor" has been adopted by the respondent "with a view to prey upon the goodwill and reputation enjoyed by the appellants' trade mark.

3. That the adoption by the applicant of the said Trade Mark is mala fide and dishonest and the appellants are entitled to protect their Trade Mark. The applicant's contentions are that (1) that have adopted their mark in good faith and that (2) the two sets of Trade Mark are dissimilar and there is no likelihood of confusion and deception and (3) that the appellants has acquired no reputation for their trade mark as alleged. On a consideration of the affidavits filed by the parties and on an examination of the trade marks in question the Deputy Registrar found that there was no such resemblance between the applicant's marks and those of the appellants as likely to cause confusion or deception, so as to be objectionable under section 10 (1) of the Act. He also found that the marks of the appellants had not acquired any such reputation as claimed by them and that the applicants‑respondents marks were not objectionable under section 8(a) either. He has also held that the applicants had failed to show that the adoption of the respondents' trade mark was mala fide. Mr. B. C. Pandey and Mr. A. L. Thakur have appeared for the appellants, M/s. Master Thread Ball Works. Mr. Pandey has first of all contended that the two sets of trade marks likely to cause confusion and thereby injure the appellant. Now the Deputy Registrar had held that the word "Master" and "Master Tailor" have different meanings and the difference between the two sets of marks is‑ obvious. He has found that the marks of the applicant are dissimilar, both visually and phonetically and. there is no possibility of any confusion or deception. He accordingly held "As such the marks of the applicant do not come within the mischief of section 10 (1) of the Trade Marks, Act, 1940." The word "Master" or the other words of the appellants' marks and the words "Master Tailor" of the respondent appears to us to have no such resemblance as to cause confusion or deception. The meanings of the words and the devices are quite different, each having its own distinctiveness: We are therefore unable to hold that there is any likelihood of confusion or deception. Accordingly we agree with the Deputy Registrar that the Trade Marks of the respondents in question are not objectionable under section 10(1) of the Act. Mr. Pandey has particularly relied on the provision of section 8(a) of the Act which is as follows:‑ "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‑ (a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice;". This provision, I may observe here contemplates confusion or deception likely to arise out of any reason other than those mentioned in section 10 (1) of the Act, that is being identical or closely resembling the opponents' goods of the same class or description of the goods. For the application of section 8(a) the goods need not be of the same class or description. Mr. Pandey has argued the appellants' first trade mark has been in existence since 1950, and the goods under their trade marks have acquired reputation in the markets of Pakistan and the respondents' "Master tailor brand" in the circumstances is likely to be confused and taken as production of the owners of the "Master" Trade Mark. In order to succeed on the above ground, as discussed hereinafter, the opponents have to prove that their trade marks have acquired such reputation. As observed in the case reported c in 68 R P C 197, onus lies on the opponent to establish reputa tion for his business sufficient to justify objection under section 11 of the English Trade Mark Act which corresponds to the sec tion 8(a) of our Act. The Deputy Registrar, Trade Marks, while discussing the question of opponents' reputation has observed as follows:‑ "There is only one affidavit in support of opposition filed by Mr. Zahoor Ahmed on behalf of the opponents. They have given the amount of annual sale for the years 1950 to 1962, but these figures have not been supported by cash memos., vouchers and books of account etc. These sale figures were challenged by the applicant. It has also been stated that the marks of the opponents were advertised but no cuttings of the newspaper in which the marks are said to have been advertised were filed. The applicant has filed evidence to show that the marks have been used since 1959, without any confusion or deception. Further in the supporting affidavits filed by the applicant it is also averred in the affidavit of M/s. Md. Sultan and Md. Nabi Hassan that they have not seen any thread with the mark "Master" . . . . ." The Deputy Registrar has further observed :‑ "The opponents have not been able to show that the adoption of the mark by the applicant was mala fide. The evidence filed by the opponents is inadequate and unsatisfactory. I am, therefore, of the view that the objection under section 8 (a) does not sustain." We are inclined to agree with the above observations and finding of the Deputy Registrar. In the affidavit sworn by Mr. Zahoor Ahmed Khan on behalf of the opponents he has shown the value of the annual sales of the product bearing opponents trade mark. The sale in the first year of 1950‑51, is shown as Rs. 29,536.13 and in the next year it is shown as Rs. 1,20,988‑12‑0; and increasing figures are shown for the subsequent years and the highest figure is shown for the 1960‑61, amounting to Rs. 9,63,587.57. In paragraph 10 of the affidavit it is also stated that cuttings from advertisement in newspapers would be produced at the time of hearing. It is surprising that no such cuttings nor docu ments of any kind were filed along with the affidavit of Zahoor Ahmed Khan, such as certified copies of income‑tax returns; docu ments showing payment of income and sales tax. The opponent could also produce in evidence the cash memos. vouchers, books of accounts etc., but they failed to do so. Nor have they produced any evidence regarding actual confusion or deception by reason of abbreviation or any other reason. On the other handy, the applicant has filed three affidavits annexed to his own affidavit,, the first one is by Md. Sultan who claims to have been manager since 1948, of the firm of "Haji Abdul Khaleque" of Chawk Bazar.. Dacca, Stockists and Dealers of sewing threads of various makes. The second deponent A. Samad claims to have been manager since 1958, of another such firm of dealers in sewing threads while the last deponent Nabi Hossain claims to have owned a tailor's shop in Dacca since 1951. It is established from the statements of these deponents that customers ask for applicant's thread ball as "Master Tailor" thread Md. Sultan and Nabi Hassan have also stated that they have not seen in the, market any thread with the Trade Mark, "Master". In the above: circumstances, we find no reason to differ from the findings of the. Deputy Registrar that the appellants' trade mark have not acquired such reputation regarding their trade mark as to, justify an objection under section 8(a) of the Act. Mr. A. R. Khan, learned Advocate for the respondent has contended that as the appellants' have failed to establish reputation of the Trade Mark, the question of confusion under section 8(a) of the Trade Marks Act does not arise and he has relied on the decision reported in 63 R P C

59. In that case there was an application for registration of the Trade Mark "Panda" for shoe polish and it was opposed by the Proprietors of.' Trade Mark "Panda" for shoe on the allegation that the registration would cause confusion and deception and it was held inter alia that at the date of the application the opponent had, not established any reputation among the public for shoes under the Mark "Panda" and there was, therefore, no likelihood of an confusion. Mr. A. R. Khan has also relied on the case reported iii 68 R P C

178. In that case there was an application for registration of a trade mark "Gro‑Pal" for animal foods and it was opposed on the ground of probable confusion with the mark "Gro‑Pup" also used as animal food by the opponent on a large scale in the United States of America, but the application for registration was allowed on the ground that it was nor established that in England, the trade mark "Gro Pal" had established reputation upon which an objection could be found.. In that case the learned Judge has observed as follows:‑ "If, therefore, there was no association in the mind of then interested public between `Gro‑Pup' and a brand of animal food, it follows that the basis for supposing that any confusion, or ' deception can arise from the use of the name `Gro‑Pal' in, relation to animal foods is almost non‑existent." Mr. Pandey, in support of his objection under section 8(a) has also referred to the decision reported in 29 R P C

21. In that case an application to register a trade mark for rainproof coats consisting of label containing inter alia the words "Aqua -Repella" was opposed by the owners of two trade marks for similar articles which were already on the register and containing inter alia the word "Repellus" and it was held that the words "Aqua‑Repella" as part of a trade mark would be likely to lead to confusion, having regard to the fact that the word "Repellus" was already on the register as an essential particular of the two marks in respect of the same class of goods and that registration was refused. The reason for which the registration was refused is clear from the following observation of the learned Judge: ‑' "On the other hand I have distinct evidence that the opponents marks have led, as I have no doubt they were intended to lead, and it is quite natural they should have led, to their rainproof goods becoming known as "Repellus" "Rainproof" or "Repellus" goods." The learned Judge has further observed:‑ "I do not think it at all improbable, quite apart from any actual evidence of deception or intention to deceive, that the public, if the sale of these Slip‑ons is at all large, will gradually come to know the slip‑ons in question, not as "Aqua -Repela Slip‑ons" but as "Repela Slip‑ons"; and the rainproofs referred to as "Repela Rainproofs" and not as "Aqua‑Repela Rainproofs". It will be an ordinary shortening of a somewhat difficult expression, which, if the goods in question obtain popularity, is almost certain to be made. If that is made, there will be on the market goods by two makers, one maker calling them "Repellus rainproofs" and the other calling them "Repellus Rainproofs". It appears to me that that in itself is a sufficient reason, because of the confusion which might arise, for refusing the registration of the trade mark which is now applied for." In the present case we are unable to visualise any such shortening as the dominant word in the expression "Mast& Tailor" appears to be "Tailor" specially, when the trade mark is connected with Thread Balls with which "Tailor" or "Master Tailor" has a close association of ideas. Mr. Pandey has also relied on the case reported in 29 R P C

489. In that case, there was an application by the United Kingdom Tobacco Company for registration of the trade mark "Stateroom" in respect of manufactured tobacco and the application was opposed by the A. T. C., who were proprietor of the Trade Mark "State Express" registered in. March 1896, on the ground that it would lead to confusion with their Trade Mark State Express" which was registered in, respect of the same class of goods. The Comptroller General held that there was no reasonable probability of confusion or deception and allowed the Mark to proceed to registration. The Opponent appealed, and by leave adduced further evidence showing that in' practice the expression "State Express" was abbreviated to "State" and sometime "States". In deciding the case Parker, J. observed, inter alia as follows:‑ "It appears to me, therefore, that there is no necessary inconsistency in the evidence, and on the evidence I think I am bound to hold that there is a danger of the .registration of the new mark leading to confusion or deception, not because the word does not distinctively differ from the word already on the Register, but because of the tendency of the public to abbreviate, and to use the abbreviation of a brand as the ordinary designation in common parlance of that brand." From the above, it is clear that the reason for refusal of the registration in the "Stateroom" case also was the evidence regard ing the likelihood of the "Stateroom" brand cigarettes coming to be known to the public or to certain class of the public as "State Cigarettes". We are unable to visualise any likelihood of the abbreviation of the Trade Mark "Master Tailor" as "Master". Mr. Pandey has next relied on the decision in the case of 'Broadhead's Application for the registration of a Trade Mark reported in 67 R P C

113. In this case the applicant asked for registration of the Mark "Alka‑Vescent" for specifica tion of goods including alkaline effervescent tablets for using in making seltzer water and the application was opposed under sections 11 and 12 (1) of the English Trade Mark Act which correspond to section 8 and 10(1) of our Act, by the proprietors of the Mark "Alka‑Seltzer" which was registered for and had been used upon such tablets, while the applicant's mark had not been used. It was held that the two Marks when applied to such tablets were too close and registration was refused. We are unable to find any such closeness in the two sets of marks before us. Mr. Pandey has also relied on the Privy Council case of De Cordova and others v. Vick Chemical Co. It was a case of infringement of two trade marks registered in Jamaica (one containing and the other consisting of the word "Vapo Rub") by importation and sale of jars of ointment marked "Karsote Vapour Rub". It was held by their Lordships of the Privy Council that the word "Vapo‑Rub" was an essential feature of the first mark and that the word "Vapour Rub" so closely resembled that word as to be likely to deceive and that the mark was infringed. This case appears to us to be of no assistance to the appellant because of our finding that there is no resemblance within the meaning of section 10 (1) of the Act between the appellant's mark and those of the respondent. The learned Advocate for the appellant has also relied on the decision of our High Court, reported in P L D 1958 Dacca

481. In that case an application was made for registration of the device of a Crown in a circle with a small crescent and a star on the top of the Crown with the words "Aluminium Pro ducts Ltd., Chittagong" and the application was opposed on the ground that it would cause confusion with the opponent's mark which consisted of the device of Crown in a circle with the words "Crown Brand guaranteed pure" outside it and their Lordships held that because of the device of the Crown, there was likelihood of confusion. We do not find that case has any application to the facts of the present case, as we find no likelihood of such confusion between two sets of trade mark before us. The learned Advocate for the appellant has further contended that the applicant has failed to prove honest concurrent user under section 10(2) of the Trade Marks Act. Now, the question of honest concurrent user under subsection (2) of section 10 does not arise at all in this case, as it has been found that the Marks do not so nearly resemblance those of the opponents as to be likely to deceive or cause confusion. Mr. Pandey has further argued that the applicant has not discharged his onus to prove that their Trade Mark will not cause confusion or deception. This contention does not appear to be correct. As observed by the Deputy Registrar, the evidence adduced by the applicant (vide Annexures C to C‑5 with the affidavit of applicant) shows that the Marks of the applicant have been used since 1959, without confusion or deception and no rebutting evidence was produced by the appellant. The Deputy Registrar has very carefully considered the affidavits on behalf of the two parties and arrived at the decision that the applicant's Mark is not likely to create confusion or deception and for the reason already discussed, we are in full agreement with this findings. The learned Advocate for the appellant has lastly contended that the Deputy Registrar has erred in relying on the case reported in 30 R P C

363. In that case an application by Thomas A Smitch Ltd. was made to register the Trade Mark `Limit' for collars and shirts and registration was allowed though it was opposed by the proprietor of a Trade Mark "Summit" also in respect of collars and shirts on the ground that the similarity would lead to deception, and it was held that there was no possibility of any one being deceived by the two Marks. Now, in that case the meaning of the two words were different but the last three letters "mit" were common. In the case before us the word "Master" is common. In the circumst ances, it cannot be said that the Deputy Registrar fell into an error in referring to this case or that the reference was inappro priate. Be that as it may, for the reason already indicated, we find no reason to interfere in the present appeals with the order of the Deputy Registrar that the impugned marks should proceed to registration. The two appeals are accordingly dismissed with costs. A. S. CHOWDHURY, J.‑I agree. K. B. A. Appeals dismissed.