1985 PLP 2063 (CLC)

This appeal is directed against the order of Registrar of Trade Mark, dated 16-10-1977. The appellant No. 1 is the owner of Registered Trade Mark "Ferromyn" in respect of the Pharmaceutical goods. The respondent had applied for Registration of "Ferrodin" as a Trade Mark for the same class of goods. Evidence had been led by both the parties in the case.

2. The Registrar of Trade Mark has dismissed the opposition of the appellant. He has come to the conclusion that the two marks "Ferromyn" and "Ferrodin" are dissimilar from each other and that not a single case of confusion and deception has been brought on record. The Registrar has however proceeded to pass his judgment on the, following principle:- "It is a well-settled principle that when prefixes are common, it is suffixes which determine the phonetic value of the word." On that basis he observed that since "Ferro" is common to both the words, but "myn" and "din" being dissimilar to each other as suffixes) to "Ferro", the objection in respect of similarity could not be sustained.

3. Mr. Jamiluddin and Mr. Pishori had submitted that the principle followed by the Registrar was certainly not well-settled and in fact e is a converse principle which is settled namely, "it is the first syllabie mostly which decides the question of the conflict and likelihood d deception and confusion". Reliance is placed upon P L D 1973 S C 10 (109) and in (1912) 29 R P C 557, Sargant L. J. observed as under;- "The tendency of persons, using the English language, to the 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."

4. I enquired from Mr. Anwar Ali to show me where is the well-wilted principle relied upon by the Registrar of Trade Marks. He submitted that since the suffixes being common the prefixes assumed importance, therefore, the converse should also be treated as a settled principle that where prefixes are common then the suffixes should be treated as distinctive for the purpose of Trade Mark. This proposition of law expressed by Mr. Anwar Ali, although attractive, can hardly be called as settled principle of law. Counsel was not able to cite any authority in respect of this proposition. The learned Registrar has not noted a single case where the principle followed by the Registrar was laid down Consequently, I am of the view that the learned Registrar, Trade mark has proceeded to decide the case before me on a completely wrong basis and,. therefore, I remand the case before him to decide the same in accordance with the correct principle of law. I am not making a decision in the case on my own because of the view of the Supreme Court in P L D 1973 S C 108 (109) to the following effect:- ", ....the Registrar in coming to the conclusion whether a trade mark 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."

5. Mr.Anwar Ali had objected to the competency of this appeal on the ground that the appellant No.1 had assigned its rights in respect of "Ferromyn" to appellant No.2, Welcome Foundation, on 1-8-1977 during the pendency of proceedings before Registrar of Trade Marks and, therefore, on 16-10-1977 when the Registrar made his decision the appellant No. 1 had no right to file the present appeal which they did on 18-7-1977. He further contended that the appellant No.2 applied for being impleaded as party on 31-5-1983 when the right of appeal had been lost to them as it was only 2 months' time for filing the appeal. I do not agree with this submission because the appellant No.1 was a party to the original proceedings and, therefore, it was obviously entitled to file an appeal if it felt aggrieved against the decision in a proceeding to which it was originally a party. The learned counsel for the respondent had relied upon A I R 1960 Mad. 80 on the point that a suit is maintainable by the heirs of registered proprietor of a Trade Mark against infringement of Trade Mark even before the order was passed under section 35 of Trade Mark Act, by the Registrar of Trade Marks recognizing the title of the heirs of the Registered proprietor of the Trade Mark Mr. Anwar Ali is quite right to the extent that the assignee of a Trade Mark can maintain an action against the infringement of Trade Mark even before the Registrar of Trade Marks registers the assignment under section 35(1) of Trade Mark act but this ruling does not show that the assignor of the Trade Mark loses the right of filing the appeal in respect of the proceedings in which he was a party, merely because he has transferred his rights in respect of the Trade Mark during the pendency of the proceedings. Nobody can deny that he transferor of the trade mark is a proper party to such proceedings and is, therefore, a proper party in appeal as well. Consequently this Objection is overruled.

6. The appeal is disposed of and the case is remanded back to the Registrar of Trade Marks for fresh decision in accordance with law. M.Y.H Case remanded.