1991 PLP 2307 (MLD)

2. In order to appreciate the contention of the learned Counsel, section 6(1)(e) of the Trade Marks Act may be reproduced, which reads as follows:-- "6(1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely ...................... (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 of its distinctiveness." Subsections (2) and (3) of section 6 may also be reproduced as they further provide that:-- . "(2) For the purposes of this section, the expression "Distinctive" means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration. (3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which ................. (a) the trade mark is inherently so adapted to distinguish, and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish:-- Provided that in the case of a trade mark which has been continuously used (either by the applicant for registration or by some predecessor in his business, and either in its original form or. with additions or alterations not substantially affecting its identity) in relation to the same goods as those in relation to which registration is applied for, during a period from a date prior to the 25th day of February, 1937, to the date of application for registration, the Registrar shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid, and may accept evidence of acquired distinctiveness as entitling the trade mark to registration."

3. No doubt, the learned Registrar is right in holding that a trade mark common to the trade and connected with particular goods cannot be considered adapted to distinguish or being capable of distinguishing those goods for the purpose of section 6 of the Trade Marks Act. However, when such trade mark is used in combination with any other distinctive word of feature or device, the said trade mark may be registered as distinctively marking the goods of the applicant from those of the others. Mr. Farrukh Irfan has invited my attention to the book known as "Trade Marks and Passing-off' by Narayandas (Third Edition) and the author at paragraph No.495 of the said Book has observed as follows:-- "However, when a particular device or word is common to the trade, a special and peculiar representation of that device, or the word in combination with other words conveying a different idea, may be considered distinctive. Thus if the device of a star or word "Star" is publici juris, the expression "Seven Stars" or "Thirteen Stars" could be considered distinctive and appropriated by one trade. Similarly a particular phrase in which the word "Star" is used in some special manner, for example, "Star of Hope" or a particular design in which the figure of star has assumed a special form or has been so combined with other matters as to produce a specific thing different from what may be called an ordinary image of a star may constitute a distinctive mark. But registration of a trade mark containing a particular representation of a device common to the trade does not entitle the registered proprietor to stop registration of every other representation of that device, provided that representation is sufficiently different from the registered mark." Although no case decided by any Court or Tribunal in this regard has been cited upon by Mr. Farrukh Irfan, but I am of the considered view that the learned Registrar was not justified in declining to register the appellants' trade mark on the ground that it offended against the provisions of section 6(1)(e) of the Trade Marks Act because the device of a lion used in combination with the words "Bubber Sher" rendered it distinctive. The said words when combined with, the said device, produce an image which is different from that of an ordinary lion. I am, therefore, of a view that the trade mark is registrable. I cannot help observing that the decision delivered by the learned Registrar is not a speaking decision as detailed reasons have not been given by the learned Registrar for arriving at his conclusions. 6: In the result, the appeal is allowed and the case is remanded to the learned Registrar for a fresh disposal: The learned Registrar is further directed to send the mark for publication in the Trade Marks Journal in accordance with the relevant provisions of the law. AA./D-88/K ?? ??????????????????????? ??????????????????????? ??????????????????????? ??????????? Appeal allowed.