1980 PLP 660 (CLC)

Eno v. Dunn & Co. 7 R P C 311 ref. C. M. Jamiluddin for Appellant. Sayeed A. Shaikh for Respondent, Date of hearing : 12th May, 1979. . This is an appeal under section 76 of the Trade Marks Act, 1940 (hereinafter referred to as the Act). from the decision of the respondent Assistant. Registrar of Trade Marks dated 19th May, 1976 refusing to register the trade mark Saprol in Class 5 in respect of fungicides.

2. On 31st December, 1970, appellant, a West German Company carrying on business as manufacturer and merchant at Ingathering, West Germany applied for registration of its trade mark Saprol under Application No. 5477 in respect of goods which were later amended to "Fungicides" on the basis of proposed use of the mark in Pakistan. The application was examined in due course and an objection was raised by the Trade Marks Office under section 6(1) (d) of the Act that the mark was not registrable as the word Saprol was descriptive of fungicides and that the word has been defined in the Dictionary of Chemical Synonyms and Trade Names, 5th Edn., 1948, page 455 as "disenfection oil, a mixture of crude cresols, hydrocar bons and pyridine bases. Used for disinfecting lavatories'".

3. The appellant took the matter to a hearing and also filed written reply with which it submitted a photocopy. of the certificate of registration of .the mark in Australia in Part 'A' of the Register and also an affidavit of its local trade marks attorney, Mr. Stanley Loftus Cave dated 3-7-1975 deposing that the said mark was registered in Part 'A' of the Register without being required to file evidence of distinctiveness of the mark in that country. After giving a further bearing to the appellant, the Assistant Registrar of Trade Marks passed an order refusing to accept the mark for registration as it was objectionable under section 6(1) (d) of the Act. After obtaining grounds of decision, the appellant has preferred the present appeal against the said order.

4. I have heard Mr. C. M. Jamiluddin, Advocate for the appellant and Mr. Sayeed A. Shaikh, Advocate for the respondent. Mr. Jamiluddin sub mitted that the word Saprol was an invent d word and referred to the leading decision of the House of Lords /in the Solio's cage ((1898)15 R P C 47) in which one or other of the noble Lords observed that the quantum of invention is not material, nor the fact that the word may be traced to a foreign source or that the word contains a covert and skilful allusion to the character or quality of the goods or even that it should not be entirely meaningless. The word "Saprol" is a Greek word meaning "totten" or "putrid" and is 3 common prefix of several well-known English words, e.g. "Saprophyte", "Saprogenic" etc. The suffix "of" is also a well-known suffix of chemical terms, e.g. alcohol, mathol, phenol etc. and is a derivation of the Latin word "oleum" meaning oil. See the Shorter Oxford English Dictionary, 3rd Edn., page 1365. There is no doubt therefore that Saprol is a combination of the prefix an suffix of well-known words of the English language and of the highest the word may, be said to be a coined word. Such combination of two-dictionary (and generally. descriptive) words have no doubt been registered as "invented words. See Kerly's Law of Trade Marls and Trade Names, 8th Edn., p. 89 for instances of such telescoped word. But such words have been granted registration only because the newly-coined words ceased to have the descriptive quality which its constituent words had before the combination. (See instances in Kerly's, page 99). ,The word Saprol, however, does not cease to have descriptive meaning. In fact, it has been defined in the Dictionary of "Chemical Synonyms and Trade Names" as descriptive of "disinfect ion" oil. Simply because it does not appear in ordinary English dictionaries it does not follow that the word Saprol has no descriptive chemical or trade meaning..

5. In any case, in view of the doubt, the burden is on the applicant for registration to satisfy the Registrar that the word qualified for registration under section 6(1) (d) of the Act, as being a word having no direct reference to the character or quality of the goods. It is well settled that in case of doubt, the application must be refused see Eno v: Dunn & Co (7RPC311=15AC252). Moreover, the trade mark has to be distinctive for registration under section 6(1) (d) of the Act, that is, either per se distinctive or distinctive in Fact by reason of use or advertisement of the trade mark. The function of a trade mark is to distinguish the goods of the proprietor of the trade mark from similar good of other persons. The applicant has not discharged the burden of satisfying the Registrar that the word Saprols distinctive per se (the mark not having been in use is Pakistan before the date of the application, except to produce an Australian certificate of registration. The Registrar is not bound to follow registrations granted in foreign countries, even where the trade mark Law is similar, although such registrations nay have some persuasive value depending on the circumstances of each case. In the instant case, it cannot be said that the Assistant Registrar was bound to accept the certificate of Australian registration, supported as it was by an affidavit of the agent, that the mark was registered without calling for evidence of use and distinctiveness, especially as the omission to produce proof of registration in other British Law countries was significant. The exercise of discretion by the Assistant Registrar cannot, therefore be said to be arbitrary or unreasonable. I am also inclined to agree with him that in dubio. The application must be refused.

6. For the foregoing reasons, I would dismiss this appeal with no order as to cots. M. A. K. Appeal dismissed.