P L D 1969 Karachi 376 (PLP)

(a) Trade Marks Act (V of 1940), S. 14‑Section not indepen dent of other provisions of Act‑Acceptance or refusal of Registrar to be determined in accordance with provisions of Act. (b) Trade Marks Act (V of 1940), S. 8(a)‑Trade mark likely "to deceive" or "to cause confusion"‑Determination of likelihood of deception or confusion‑Test‑Registration of trade mark can be refused only if already registered trade mark closely resembles one proposed for registration "for same goods or description of goods"‑Two marks ("Jeep" with device of a motor car) identical but one used in respect of motor vehicles whereas the other for threads and yarns‑Registration of trade mark, in circumstance, cannot be refused. The acquisition of an exclusive right to a mark or name in connection with a particular article of commerce cannot entitle the owner of that right to prohibit the use by others of such mark or name in connection with goods of a totally different character. The question of the likelihood of deception or confusion being caused in trade mark cases may be conveniently reduced to two tests only, that is: (i) whether there is identity of, or close resemblance between the two competing marks; and (ii) whether there is some kind of trade connection between the goods marketed under the two marks, so as to lead the members of the public to attribute the origin of both the goods to the same source. Where, therefore, an already registered trade mark ("Jeep" with the device of a motor vehicle) was used in respect of motor cars manufactured by K and S applied for registration as proprietor of a similar trade mark viz. "Jeep Brand" in words and the device of a "Jeep", in respect of threads and yarns of all kinds, it was held that the Registrar of trade marks was right in disallowing K's opposition to application of S for regis tration of his proposed trade mark in relation to thread and yarns manufactured by him: Held, in the present case, there is identity of the appel lants' and the respondents' marks, but there is no trade connec tion between their goods. The motor‑cars manufactured by the appellants, and the respondents' thread and yarn are goods so different and dissimilar that it is impossible to take the view that any kind of connection could exist between these goods. The goods of the appellants and the respondents cannot form part of each other. The goods are not put to the same use, nor are they commonly dealt with in the same course of business. These goods are not even sold in the same kind of shops. The goods and their uses are so different that they cannot conceiv ably be attributed to the same source. Therefore, there is no likelihood of any deception or confusion being caused by the respondents' use of the word trade mark "Jeep" with the device of a motor vehicle for thread and yarn, as these goods cannot in any way be connected with the. appellants. "Ovax Case" (Smith Hayden & Co. Ld's Apl.) (1946) 63 R P C 97, 101; Jellinek's Apl. (1946) 63 R P C 59 ; "Gro‑Pal case" (Gaines Animal Foods Ld's Apl.) (1951) 68 R P C 178; Somerville v. Sohembri (1887) 12 Ap Cas. 453=4 R P C 179; Lake & Elliott's Apt. (1903) 20 R P C 605 and Dy. S. Venkateswara's Law of Trade and Merchandise Marks, (1963) Edn., p. 97 ref. Dunn's Trade Mark (1890) 7 R P C 311; Kodak's case (1898) 15 R P C 105; Edward Hack's case (1941) 68 R P C 91; Electrolux Ld. v. Electrix Ltd. and another (1954) 71 R P C 23; H. J. Lees & Son (London) Lt.'s Apl. (1955) 72 R P C 75 and Players Trade Mark (1965) R P C 363 distinguished. This is an appeal under section 76 of the Trade Marks Act, 1940, against the order of the Deputy Registrar, Trade Marks, dated 15‑3‑1965. The relevant facts are these:‑

1. Since 1943, the appellants, a corporation incorporated under the laws of the State of Nevada United States of America, is a registered proprietor of a word trade mark "Jeep" with the device of a vehicle in class 12 (automobiles and vehicles) under registration No. 9397. On 18‑5‑1957 the respondents were registered, under registration No. 27379, as proprietor of a similar trade mark, that is, the word trade mark "Jeep" with the device of a vehicle, for cotton yarn in class

23. On 5‑7‑1961, the respondents made an application seeking to register the trade mark "Jeep Brand" in words, and the device of a jeep, in class 23 in respect of threads and yarn of all kinds. This application was advertised in the Trade Marks Journal No. 137, dated 1‑6‑1962. The appellants filed opposition on the ground that they were manufacturers and merchants dealing in automobiles, automobile parts, internal combustion engines and parts thereof including motors, aircraft and watercraft, and that they were proprietors of the word trade mark "Jeep", which trade mark had become famous throughout the world in relation to the appellants' motorcars, and that the respondents' trade mark, consisting of the word "Jeep" and also the device of a motor car, is the exact representation of the appellants' trade mark and of the motorcars manufactured by the appellants. It was accordingly urged that the presence of the word "Jeep" in the trade marks of the appellants and the respondents, and the close resemblance between, rather complete identity of, the respon dents' device of a motor vehicle with that of the motor‑cars manufactured by the appellants, were calculated to create deception and confusion in the public, in that the respondents' good may be associated with the appellants as to trade source. 'I he application of the respondents, as well as the appellants opposition, were heard by the Deputy Registrar, who, by his impugned order, disallowed the opposition and directed that the respondents' application should proceed to registration.

2. Dr. I. Mahmood, the learned counsel for the appellants, raised before me the same contentions which were raised before the Deputy Registrar and were rejected by the order impugned here. At the outset, the learned counsel stated that he did not place any reliance on section 10 of the Trade Marks Act, 1940, under which there is a prohibition against registration of a trade mark in respect of any goods or description of goods which is identical with the trade mark belonging to a different proprietor in respect of the same goods or description of goods, or which so nearly resembles the latter trade mark as to be likely to deceive or cause confusion. But, Dr. I. Mahmood said that the appellants invoke section 8 (a), which prohibits the registra tion of a trade mark which consists of or contains, any scandalous design or any matter the use of which would, by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice. It was further contended that the appellants would also press section 14 of the Act which gives discretion to the Registrar to refuse or accept an application for registration of a trade mark. But, in my opinion, section 14 is not independent of the other provisions of the Trade Marks Act, 1940. The acceptance or refusal of the Registrar to register a trade mark has to be determined in accordance with these provisions. Therefore, the main question which has to be considered in this case is the applicability of section 8(a) of the Act. According to Mr. A. A. Zari the respondents' learned Advocate, this provision would apply only in cases where a trade mark, for any of the reasons specified in this provision, would be disentitled to protection in a Court of Justice, and that the Trade Marks Act itself, in sections 21, 22, 25 and 26, specifies cases in which the Court of justice should refuse its protection to a trade mark. ! For the purpose of this case, Mr. Zari referred only to sections 21 1 and

22. Under section 21, the proprietor of a registered trade mark, or its registered user, has the exclusive right to the use of the trade mark in relation to the goods for which the trade mark has been registered, and this right is infringed if another person uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which the trade mark is registered, and in such manner as to render the use of the mark likely to be taken either‑"(a) as being used as a trade mark; or (b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade". Under section 22, this right shall not be deemed to be infringed if the trade mark is used for any goods to which the registration does not extend. Thus, Mr. Zari's contention is, that with reference to the present case, the Court of Justice shall give protection to the appellants only if their trade mark is used by the respondents for the same goods for which the appellants obtained registration, that is, automobiles and vehicles, and that since the respondents' goods are of a totally different class, that is, threads and yarn of all kinds, the appellants will not be entitled to any order of protection from a Court. In other words, according to Mr. Zari, the application for registration of a trade mark in relation to any goods shall be refused by the Registrar only if another person is a registered proprietor of an identical mark, or a mark closely resembling the one proposed for registration, for the same goods or description of goods. If this argument is accepted, then the only consideration which should weigh with the Registrar is whether any application for registration of a trade mark is hit by sections 21, 22, 25 and 26 of the Trade Marks Act. But in the proceedings before me I do not consider it necessary to discuss this particular contention of Mr. Zari, because, in my opinion the case can be disposed of with reference to one point only, that is, whether the trade mark offered by the respondents for registration consists of any matter the use of which would be likely to deceive or to cause confusion in the course of trade. Nor is it necessary to decide the further contention of Mr. Zari that in so much as the appellants did not oppose the registration of the respondents as proprietor of the disputed trade mark in 1957, in class 23 for cotton yarn, they are now estopped from opposing the further application of the respondents for their registration as proprietors of the same mark for all kinds of threads and yarn.

3. Now, when the mark offered for registration is identical with, or closely resembles, another mark, the question which comes up for determination is whether confusion as to trade source may arise even when the goods for which the two marks are used are not the same. To determine whether deception or confusion was likely to arise, Evershed, J. (as he then was) formulated this test in the "Ovax case" (Smith Hayden & Co. U.'s Apln.) ((1946) 63 H P C 97, 101) "1s the Court satisfied that the mark applied for if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons". In another case, Jellinek's Apl. ((1946) 63 R P C 59), Romer, J., approved the view that it is not necessary to prove that there is an actual probability of deception leading to a passing‑off, but it will be sufficient to show that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source, and, further, that it would be enough if the ordinary person entertains a reasonable doubt. On the same question, some further judicial observations may also be noted with advantage. In "Gro‑Pal case" (Gaines Animal Foods Ld's Apl.) ((1951) 68 R P C 178), Lloyd‑Jacob, J. said‑"If the marks have no resemblance, the most extensive reputation in relation to one cannot create confusion in the use of the other; nor, if one mark is wholly unknown in the market, could a confusingly similar mark involve deception". In Somerville v. Schembri ((1887) 12 A C 453=4 R P C 179), Lord Watson observed‑"The acquisition of an exclusive right to a mark or name in connection with a particular article of commerce cannot entitle the owner of that right to prohibit the 8 use by others of such mark or name in connection with goods of a totally different character, and that such use by others can as little interfere with his acquisition of the right". The several points of view from which the question of the likelihood of deception or confusion being caused in trade mark cases has been considered in various judicial decisions, may, in my opinion be conveniently reduced to two tests only, that is:‑ (i) Whether there is identity of, or close resemblance between, the two competing marks; and (ii) whether there is some kind of trade connection between the goods marketed under the two marks, so as to lead the members of the public to attribute the origin of both the goods to the same source.

4. Turning to the present case, there is identity of the appellants' and the respondents' marks, but there is no trade connection between their goods. The motor‑cars manufactured by the appellants, and the respondents' thread and yarn, are goods so different and dissimilar that it is impossible to take o the view that any kind of connection could exist between these goods. The goods of the appellants and the respondents cannot form part of each other. The goods are not put to the same use, nor are they commonly dealt with in the same course of business. These goods are not even sold in the same kind of shops. The goods and their uses are so different that they cannot conceivably be attributed to the same source. In my view, therefore, there is no likelihood of any deception or confusion being caused by the respondents' use of the word trade mark "Jeep" with the device of a motor‑vehicle for thread and yarn, as these goods cannot in any way be connected with the appellants.

5. It now remains to consider the decisions cited by Dr. I. Mahmood. The first case on which reliance was placed is that of Dunn's Trade Mark ((1890) 7 R P C 311), decided by the House of Lords. In this case, an application was made to register a trade mark containing the words "Dunn's Fruit Salt Baking Powder". An opposition was filed on the ground that the word "Fruit Salt" had been used as a trade mark for a certain preparation widely marketed under the name of Eno's Fruit Salt". The House of Lords, by majority, upheld the opposition. Lords Watson Herschell and Macnaghten took the view that the use of the term "Fruit Salt" for the baking powder might have the effect of deceiving the public, in that there would be a supposed connection between the two articles in the minds of many persons who would assume that the baking powder had been manufactured with "Eno's Fruit Salt". To use the words of Lord Herschell, fruit salt and baking powder were not of such essentially different character that one could not be supposed to enter into the composition of the above. The next case cited by Dr. I. Mahmood is the Kodak's case ((1898) 15 R P C 105), in which the Eastman Photographic Materials Company, Ltd. invented, and had for some years used, the word "Kodak" in connection with their goods, specially for cameras, and the word occurred in all their registered trade marks. It was further found that the company had made a speciality of cameras suitable for bicyclists, and the appliances for fixing the same to bicycles, which they had largely advertised as "Bicycle Kodaks". Another company, John Griffiths Cycle Corporation Ltd., obtained registration of the word "Kodak" as a trade mark in class 22 for bicycles and other vehicles included in that class, for which class the Eastman Photographic Materials Co. Ltd., had not obtained registration of the word "Kodak". Then a company was formed under the name of Kodak Cycle Company Ltd., which, together with John Griffiths Cycle Corporation Ltd., commenced to advertise "Kodak Cycles". In an action between these two companies, and the Eastman Photographic Materials Company, Ltd., it was held, firstly, that the word "Kodak" had become identified with the latter company and with their goods, and, secondly, that evidence showed a close connection between the bicycles and photographic trades. On these findings, it was held that John Griffiths Cycle Corporation Ltd., 'had obtained registration of their trade mark by an untrue statement and accordingly this mark must be expunged as being calculated to cause deception and confusion. In Edward Hack's case ((1941) 58 R P C 91), an application was made for registration of the words "Black Magic" in respect of laxatives. But these words were registered already in respect of "Chocolate and chocolates". It was proved that chocolate was used as a flavouring for certain laxatives. Morton, J. sitting in Chancery Division, held that there was risk of confusion, in that some persons would be likely to think that the two "Black Magic" preparations were made by the same manu facturers. In Electrolux Ltd. v. Electrix Ltd. and another ((1954) 71 R P C 23), the plaintiffs carried on business in the manufacture and sale of various domestic articles including vacuum or suction cleaners, which were marketed under the trade mark "Electrux". The defendants also manufactured and marked various articles, including suction cleaners, under the mark "Electrix". It was held that the similarity between the marks "Electrux" and "Exlectrix" rendered the latter mark an infringement of the former. Both the marks were used for marketing the same goods, or goods of the same description, "Suction Cleaners", and there was no doubt that deception and confusion would be caused in the trade, in that the goods of one manufacturer may be connected with that of other manufacturer. In H. J. Lees & Son (London)) Lt.'s Apl. ((1955) 72 R P C 75), an application was made for registration of the word "Lessona" for goods including carpets, mats and rugs. An identical mark had been registered and largely used by the opponents for machines used in textile industry. It was held that the use of the mark for textile articles might lead to the supposition that the opponents' machinery had been used in their manufacture. In case of Player's Trade Mark ((1965) R P C 363), the applicant applied for registration of the words "Players" in respect of confectionery, intending to use it on cigarettes made of confectionery. The application was opposed by the owners of the same mark registered in respect of Tobacco. The application was refused on the ground that the trade mark sought to be registered would cause confusion, as it would lead to the supposition that the applicants' goods, that is, cigarettes made of confectionery, emanated from the opponents who were manufacturers of cigarettes made of tobacco.

6. The cases cited by Dr. I. Mahmood are not of any assistance in the proceedings before me. In each of these cases some kind of trade connection was found to exist between the goods marketed or proposed to be marketed under the competing marks. Thus, in Dunn's Trade Mark case, the decision rested on the view that "Fruit Salt" and "Baking Powder" were goods of similar character, that is, that these goods came under the same genus, so that there was possibility of many persons supposing that "Fruit Salt" formed the ingredient of the "Baking Powder". The decision in the Kodak case, turned on not only that the competing marks were almost identical, but it was further found that there was close connection between the Bicycle and Photographic Trades. In Edward Hack's case, it was found that chocolate was used as a flavouring for certain laxatives, and, therefore, the use of the words "Black Magic" was likely to cause confusion as to the trade source of the goods. In Electrolux v. Electrix Ltd., not only that the com peting marks closely resembled each other, but they were used for goods of the same description. In H. J. Lees & Son (London) Ltd.'s Apl., there was likelihood of many persons supposing that carpets, mats and rugs marketed under the mark `Lessona' came from the same source which marketed textile machinery under the same name. In the Players case, the connection between cigarettes made of confectionery and those made of tobacco was too obvious, so that there was every likelihood of deception and confusion being caused as to the trade origin of these goods.

7. The leading decision on which Dr. I. Mahmood relies is that of Dunn's Trade Mark. This decision came up for consideration in a later case, Lake & Elliott's Apl. ((1903) 20 R P C 605), in which the word "Millennium" was registered as a trade mark of the opponents in 1895 for food, including flour and bread. The applicants sought to register this word as their trade mark in respect of carriages. Kekewich, J., held that it was extremely unlikely that a person purchasing a carriage marked with "Millennium" would think that it has anything to do with bread or flour, nor would any person buying bread or flour, if it was delivered to him by a carriage marked "Millennium", be deceived into thinking that he was buying the goods of the manufacturers of the carriages marked with the word, "Carriage of Lake and Elliott", as there could possibly be no connection between carriages on the one hand, and bread and flour on the other.

8. I would here mention the case of Caltex (India) Ltd. v. Parmanand Teck Chand Lalwani, which is referred to by Dy. S. Venkateswaran in his Law of Trade and Merchandise Marks (1963) Edn., p. 97 in which it was held by the High Court of Bombay that the use of the words "Caltex" for horological and other chronometric instruments was not likely to cause any deception or confusion so as to connect these goods with Caltex (India) Ltd., which marketed its products, namely, industrial oils, lubricants and fuels under the same marks, as the two goods, that is, horological and chronometric instruments on the one hand, and oils, lubricants and fuels on the other, were of entirely different nature. Thus, even though the appellants' and respondents' marks may be identical, yet the goods of these parties and the uses of these goods are so totally different that it will be inconceivable that thread and yarn should be attributed as to origin to the appellants, or likewise, motor‑vehicles bearing the trade mark "Jeep" to the respondents. In my view, there is not the least possibility of any deception or confusion being caused amongst members of the public by the respondents' use of the word Trade mark "Jeep" with the device of a motor -vehicle for their thread and yarn. The Deputy Registrar came to the right conclusion in disallowing the appellants' opposition and, I also, for the reasons discussed above, find no substance in this appeal, which I would dismiss with costs. Order accordingly. K. B. A. Appeal dismissed.