P L D 1973 Supreme Court 104 (PLP)

On the 9th November 1963, the appellants applied for registration of a trade mark represented by the word "Daigon" In respect of sewing machines manufactured by them. It appears that the learned Assistant Registrar of Trade Marks, Karachi, without causing a search to be made amongst the registered trade marks for the purpose of ascertaining whether these were on record in respect of the same goods or description of goods and without notice to the appellants proceeded to register the said trade mark under No. 40323 in clause VII relating to the sewing, machines. The appellants further applied for registration of another trade mark represented by the word "Dragon" also in. respect of sewing machines and this mark was also registered without notice to the respondents, under No. 40267 in the year 1963. These trade marks subsequent to the registration were published in the Trade Marks Journal. The respondents' case is that on the 20th August 1965, they learnt for the first time about the registration of the appellants trade mark from an advertisement appearing in the Kohistan newspaper. They sent a legal notice to the appellants alleging that their trade mark and the trade marks of the appellants had such close visual and phonetic resemblance that it was likely to cause deception in the market. Thereafter, the respondents filed two rectification applications before the Registrar of the Trade Marks, Karachi on the 31st August 1966, for expunging the entries in the register with regard to the trade marks of the appellants. This was the only course open to the respondents because they could not file an action for infringement as the appellants' trade marks were already registered. In retaliation, the appellants also filed two applications for rectification in respect of the respondents' Trade Mark "Saigon". All the four rectification applications were consolidated and the learned Assistant Registrar, Trade Marks, Karachi, by a common order dated the 18th March 1968, dismissed them. The appel lants did not file any appeal but the respondents filed an appeal against the order of the Assistant Registrar of the Trade Marks, Karachi. In dismissing the rectification applications filed by the respondents, the learned Officer has come to the conclusion that the words "Saigon" and "Daigon" are substantially dissimilar since their first syllables, namely, "Sai" and "Dai" are different. He has further been impressed by the argument that the name "Saigon" is a well‑known geographical entity being the capital of a country and had assumed notorious entity because of the present Vietnam war. As regards the word "Dragon", the: learned Assistant Registrar came to the conclusion that apart from the first syllable being different, the chances of its conflict with the word "Saigon" were still remote as the former word was well known in its connotation of a mythical monster like a crocodile or a snake with wings and claws and often throws breath fire. The learned Assistant Registrar further strengthened his views by the circumstance that the Trade Marks Registry did not issue notice to the respondents at the time of accepting the marks "Dragon" and "Diagon", nor did they think it necessary to advertise these trade marks in the Trade Marks Journal consis tent with the practice under section 14 of the Trade Marks Act, 1940. On appeal, the learned Appellate Court has taken a different view. In this connection, it observed as under :‑ "I have to determine it whether there is that similarity between the three names which is likely or is calculated to deceive or cause confusion. To me the words Daigon and Saigon appear strikingly similar both in sight as well as it sound. The word Daigon appears to have no meaning in any known language. It is impossible to suggest any motive for adoption by the respondents of a name so similar in sound with the word 'Saigon' except perhaps a desire on the part o the respondents to gain some advantage from the reputation which the word had possibly acquired. The user by the appellants of the word 'Saigon' since the year 1947 has no been denied and the attempt of the respondents appears to have been to gain all advantage to themselves by, as they say, sailing close to the wind: It seems impossible to resist the conclusion that the word 'Daigon' was designed perhaps to attract to the respondents' goods those members of the public who knew the appellants' goods and to filch from the appellants the benefit of the reputation in the particular sphere of trade." The‑appellants have challenged this decision before us. Leave was granted in this case to consider the question whether the High Court was right in dismissing the Letters Patent Appeal in limine when a question of law did arise for considera tion, even though the learned counsel did not say much in support of it. We have, however, heard the learned counsel for the parties on merits at length and have compared the mark "Daigon" with the word "Saigon" and I am of the opinion that there is no phonetic or visual similarity between the registered trade marks of the appellants and the registered trade mark of the respondents. So far as the first syllables are concerned they are dissimilar and have no similarity with each other. There appears to be close similarity as regards the second syllable. It seems to me that in such circumstances, it is an accepted principle that words having a common suffix but if earlier portion of these words are different, and if they do not conflict they are held to be distinctive. This view was expressed in Facsimile Letter Printing Co. Ltd. v. Facsimile Typewriting Co. ((1912)29 R P C 557). It was held in this case that where two words have the same suffix, the earlier portion of B the words is the natural and necessary mark of distinction. This view is supported by the observation of Sargant L. J. in the above‑mentioned case. In this connection, he observed as under :‑ "The tendency of persons using the English language to slur the terminations of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my JUDGMENT, the first syllable of a word is, as a rule, far the most important for the purpose of distinction. (London Lubricants Ltd.'s Appl. (1925) 42 R P C 264.)" The same learned Judge where registration of the word Rito' was opposed by the registered proprietors of the words 'Lito' and 'Y‑to', observed as under :‑ "It seems to me quite inadmissible that the registration of 'Lito' should prevent the registration of, amongst other things, another dissyllabic word ending In 'ito', whether it is an invent ed word such as 'Brighto'.'Nighto', 'Slighto','Tighto','Mighto' or any other combination with the termination 'Ighto' a common termination, especially at the present day‑‑and a preceding letter or letters. As to the registered trade mark ('Y‑to'), it is only by torturing the English language and English pronunciation, even more than is usual in these, name cases, that the word as written 'Y‑to' is read and pronounced 'whito', so as to suggest, as it is obviously meant to suggest, the quality of making the hands of the person using it whitz or removing the stains that the hands had been subjected to, and read and pronounced so as to rhyme with words like 'bright', 'light', 'might', 'right' etc., with an 'o' axed to them. Even as regards sound, I think that the case as to the word 'Y to' is weaker than that as to 'Lito', while, as regards appealing to the eye, there could be no possible ground for confusion between the word 'Rito' when compared with the word 'Y‑to'." This view also expressed by Astbury, J. In Fox's Applica tion ((1920) 37 R P C 37) "where the similarity of the two words 'Motrate' and 'Filtrate' was under consideration". In this case, Astbury, J. observed as under :‑ "Where the suffix of two words is a common one‑‑not com mon on the Register, but common in the English language‑one must, at all events, have some regard to the earlier portion of the word which distinguishes one from the other. If the suffix is common, the earlier portion of the word is the natural and necessary, and, in fact, the mark of distinction." Recently, this question was also considered by this Court in Pakistan Soap Factory v. Chittagong Soap Factory and an other (P L D 1970 S C 460). In that case, an application for registration of trade mark "1947" on soaps manufactured by P and sold in markets for number of years, was opposed by another manufacturer of soap on ground that he was already proprietor of a registered trade mark in respect of similarly shaped washing soap bearing numerals "1937". Registration was resisted on the ground that similarity between the two trade marks both visual and phonetical was very close and likely to create confusion in the minds of purchasers. On these facts, it was held that the Deputy Registrar and the High Court erred legally in refusing registration of P's trade mark. Where commodities are identified and known by numerals, they are purchased by pointed reference to the numerals and no confusion can arise in this respect. In the present case, in the registered Trade Mark 'Daigon' on the one hand and the registered Trade Mark 'Dragon' on the other hand, the first syllables 'Dai' and 'Drs' are dissimilar from the first syllable 'Sai' and the learned Assistant Registrar C was perfectly justified in holding that it is the first syllable mostly which decides the question of conflict and likelihood of deception and confusion. I have compared the words "Daigon" and "Saigon". The pronunciation of the word whether it is made by a person who knows English language or otherwise is absolutely different and there is no similarity between the two. I would, therefore, hold that the view taken by the learned Assistant Registrar is correct and it should have been upheld by the High Court. It has been repeatedly held by the superior Courts that the Registrar in coming to the conclusion whether a trade mark o should or should not be registered, exercises the discretion vested in him by statute and the Court in appeal should always be extremely loath to interfere with that discretion. Such discretion should not be interfered with unless the Court comes to the con clusion that the Registrar in coming to the conclusion that he did was clearly wrong or patently in error. The view was expressed by the Dacca High Court in Aluminium Products Ltd, Chittogong v. Registrar of Trade Marks, Chittagong (P L D 1958 Dacca 481). Similar view was also expressed by the same Court in New Light Chemical industries v. Registrar of Trade Marks and another (P L D 1963 Dacca 75). After carefully considering the whole matter. I have come to the conclusion that the High Court was not right in allowing the appeal of the respondents and in rectifying the registered trade mark in respect of registered Trade Mark 'Dalgon'. In my opinion, the Trade Marks Registry at Karachi had rightly register ed the Trade Mark "Daigon" in respect of the sewing machines and no exception can be taken to it. I would, therefore, allow the appeal with costs throughout. HAMOODUR RAHMAN, C. J.‑I agree. SALAHUDDIN AHMED, J.‑I agree. K. B. A. Appeal accepted.