P L D 1990 Supreme Court 313 (PLP)

SHAFIVR RAHMAN, J.‑‑Leave, to appeal was granted at first in four petitions to examine, whether the High Court 'of Sind had not by its judgment [A dated 27‑10‑1975 correctly interpreted several of the judgments cited at the Bar, and particularly the case reported as Montgomery Hour and General Mills Limited v. Registrar, Trade Marks, Karachi PLO 1973 Kar. 567 according to which it would appear that the question of deception or confusion, as mentioned in clause (a) of section 8 of the Trade Marks Act (hereinafter referred to as the Act), can arise even when the competing goods are not of the same category or description, but the trade mark sought to be registered is already the property of another manufacturer. Subsequently, leave to appeal was granted in three other petitions, raising the same question of law. C.A.K‑34/1977: Chronologically considered, the facts of Civil Appeal No.K‑34 of 1917, are that Messrs Sethi Brothers filed an Application No.37577 on 24th August, 1962 for registration of the Trade Mark 7‑Up and label in respect of "wool" in Class 23 which was advertised in the Trade Marks Journal No.167, dated Ist December, 19(A at page

184. The. appellant filed, a Notice of Opposition objecting to the said application under section 15(2) of the Act, read with Rule .30. Their claim was based on the fact that they had registered trade marks in Pakistan as follows:‑‑ , "(1) Trade Mark: SEVEN‑UP (Word) Registration No.1583, dated 25th September, 1948 Class:.32 Goods:Carbonated, non‑alcoholic, non‑cereal, maltless beverages sold as soft drinks and preparations for making such beverages. (2) Trade Mark: 7‑Up (label) Registration No.28080, dated 25th February, 1958. Class; 32 Goods: Soft drink beverages and syrups, flavour and extracts for making soft drink beverages, all being goods included in Class 32." The factual ground on which this opposition was based was, expressed in the following words :- "The trade mark applied for by the applicants consists of the word 7‑Up and design which is the representation of the world famous mark of our company. The said trade mark is identical with and/or closely resembles our registered trade marks. The applicants seek to register the identical Trade Mark 7‑Up and design in respect of products which though not similar are likely to be associated in the trade or are in some way likely to be connected with our manufacture and‑thus is liable to cause deception, and/or confusion," In support of its claim the appellant submitted three affidavits, that of Howard E, Ridgway, dated 17‑0‑1905, of Mr. Taj M,. Yahya, dated 20‑11‑1965 and of Buksh Elahi, dated. 26‑7‑1966. There was a counter‑statement filed by the respondent. On merits, the respondent stated as follows:‑‑ "It is denied that the mark of the applicants is either identical and/or closely resembles with the trade mark of the opponents. The get‑up and design‑and the colour scheme of the applicants' mark is totally different and distinguishable from the get‑up, design and the colours of the opponents' mark. Furthermore, the opponents trade mark is registered under Class 32 and thus the field of business of the applicants is totally different from that of the opponents. The applicants have applied for registration of the Trade Mark under Class 23 only, which was originally adopted by them in the year 1958, long before the opponents actually introduced their 7‑Up beverages in Pakistan." The Registrar of Trade Marks by his order, dated 21st October, 1.970 rejected the opposition and directed to proceed with the registration in. respect of "wool" only after expiry of the usual appeal period. The reasons prevailing with the Registrar, appear from the following concluding portion of his' order:‑‑ "In this connection I would like to state that quite a number of cases have been registered in Pakistan in respect of identical trade marks relating to different specification of goods which are on, record to show that no confusion has been caused., In the same way if the mark of the applicant is put on the Register, there will be no possibility of any confusion. The cases cited by the Advocate for the opponents are not relevant in the present case. I would refer to a recently reported case PLD 1909 Kar. 376 Jeep Case in which, an authoritative announcement has been, made regarding the points to be taken into consideration for determining the question of likelihood of deception and confusion. The two tests stated in the said case are: 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 marked 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? Applying the above tests to the present, case, I have come, to the conclusion that the identity of the mark is not the only criterion to determine the question of likelihood of deception and confusion. There is no trade connection between the beverages manufactured by the opponents and wool the goods are so different that it is not conceivable that any kind of trade connect ion could exist between the said goods. I would like to state that there is no monopoly of any trade mark and the same trade mark can be used by different persons in respect of different goods. After carefully considering the arguments of the agent and the evidence, on record and in the exercise of discretion vested in me, I am of the view that the objections of the opponents cannot be sustained." Against this order of the Registrar of Trade. Marks Miscellaneous Appeal No.27 of 1971 was riled in the High Court of Sind. CA. No.K‑32 of 1977: The respondent, Kohinoor Thread Ball Factory, riled an Application No.38724 on 23rd February, 1903 for registration of the Trade Mark 7‑Up in respect of "thread" in Class 21 which was advertised in the Trade Marks Journal No.184, dated May 1, 1900 at page

197. The appellant filed a Notice of Opposition taking up the same grounds as have already been reproduced in respect of the Civil Appeal No.K‑34 of 1976 . In this case, too, the affidavits of Howard E. Ridgway, dated 17‑9‑1965, of Taj M. Yahya, dated 11‑7‑1966 and of Buksh Elahi, dated 5‑8‑1906, were riled by the appellant. In the counter‑statement riled by the respondent on 21‑12‑1966, on merits, it was stated as follows:‑‑ "By their own admission, the opponents are the proprietors of the Trade Mark '7‑Up' in respect of soft drinks beverages etc. The opponents have no other business except manufacturing the soft drinks and beverages. Hence people would not believe that the threads and yarns manufactured by the applicants, are also the property of the opponents. The allegations made by the opponents are, only to mislead the tribunal." The Registrar Trade Marks by his order, dated 21st October, 1970 rejected the Opposition and ordered that the registration should take place in due course. The basis of the decision was the same as in the earlier appeal with the additional ground indicated as hereunder:‑‑ "I am fully fortified by the decision given in the Privy Council case referred to above and also by the Jeep Case reported in PLD 1969 Kar.

376. The same trade mark can be used by different persons in respect of different goods. After carefully considering the arguments of the agents, the evidence on record and in the exercise of the discretion vested in me, I hold that the objections of the Opponents cannot be sustained." A Miscellaneous Appeal No.25 of . 1971 wag riled in the High Court of Sind, against this order of the Registrar. CA. No.K‑35 of 1977: The respondent, Abdul Aziz Noor Muhammad, riled an Application, No.38910 on 27th March, 1.963 for registration of the Trade Mark 7‑Up in respect of "Pan Masalah" in Class 30 which was advertised in the Trade Marks Journal No.185, dated Ist June, 19(4) at page

561. The appellant, 7‑Up Company riled Opposition to it on grounds already indicated in the other two appeals. Apart from taking on merits the ground taken in earlier such cases, already reproduced, the following statement was contained in the counter‑statement:‑‑ "We have additional grounds to rely upon but we leave the whole matter to the judicious discretion of the learned Registrar whose decision shall be treated by us as final and fully binding on us. In case the learned Registrar decides the whole matter against us, this counter‑statement be treated as withdrawal of our whole application which shall not be pursued by us any further either in the Registry or before any either Judicial. Authority In support of its Opposition, affidavits of Howard E. Ridgway, dated 17‑9‑1965 of Mr. Taj M. Yahya dated 14‑7‑1966 and of Mr. Buksh Elahi, dated 5‑8‑1966, and evidence of Mr. Howard E. Ridgway, dated 19‑8‑1968, were brought on record. The respondent gave an affidavit in support of his application and provided the affidavit of one Saleh Muhammad, dated 28‑1.0‑1967. The Registrar, rejected the Opposition by observing as follows:‑‑ "No evidence has been filed either by the applicant or by the opponents to show whether the two sets of goods are usually produced by one and the same manufacturer, or sold by the same wholesale houses. Hence the question of deception, if any, is far‑fetched there, is similarity of the applicant's and opponents' marks, but there is no trade connection between their respective goods. The beverages manufactured by the Opponents are goods so different and dissimilar that it is impossible to take the view that any kind of connection could exist between the goods. I would like to make it abundantly clear that there is no monopoly of any trade mark, and the same trade mark can be used by different persons in respect of different goods, and the cases quoted above bear me out. After carefully considering arguments of the Agents, evidence on record and in the exercise of the discretion vested in me, I hold that the objection of the opponents cannot be sustained." A Civil Miscellaneous Appeal No.113 of 1971 was preferred in the High Court of Sind against the order of the Registrar. CA. No.K‑33 of 1977: The respondent, Messrs Sultan Soap Works riled Application No.41228 on 21st March, 1964 for registration of the Trade Mark 7‑Up in respect of "soap" in Class I which was advertised in the Trade Marks Journal No.173, dated 1st January, 1965 at page

391. The appellant, the 7‑Up Company, riled an Opposition to its registration. The ground was also the same namely, that the respondent was seeking to get read the identical Trade Mark '7‑Up' in respect of products which though similar were likely to be associated in the trade or were in the same way likely to be connected with the manufacture and business of the appellant and thereby cause deception or confusion in support he submitted three affidavits as in the registration cases. On merits in the counter‑statement, it was stated:‑‑ "The statement of the opponents regarding similarity and resemblance of two marks is totally unfounded and immaterial, in view of the fact that the goods of the opponents' are different from those of the applicants'. Under the circumstances the applicants' mark is not likely to create confusion in the trade between the products of opponents' and those of the applicants'. An unwary purchaser can easily distinguish a BOTTLE OF SOFT DRINKS from a CAKE OF SOAP and both articles are not sold at the same counter and hence there is no likelihood of any confusion or deception. The Registrar, by his Order, dated 21st October, 1970 rejected the opposition filed by the appellant giving the reasons which have already been earlier and directed the registration of the trade mark applied for in due course. A Miscellaneous Appeal No.26, dated 27‑1.0‑1975 was filed in the High Court of Sind. The case of the appellant in these four appeals before the High Court that provisions of sections 8(a), 14(l) and section 6 of the Act had not been interpreted. The two grounds which were particularly emphasized and which formed the controversy were that the necessary conclusion of mala fides of respondent was not, drawn though they had deliberately adopted the famous trade mark of the appellant with the intention of benefiting from the goodwill and reputation built around the Trade Mark '7‑Up'. It was also urged that trade connection or common field of activity was not the requirement of law in order to ascertain whether its use was likely to cause confusion to the public. The learned Judge noted, as regards the locus standi of the appellant and the basis of its Opposition, the following facts‑ "The contention of the appellant before the Registrar, as in this Court, was, that it was one of those vast worldwide American corporations which manufactured what are generally described in this country as soft drinks; therefore, in 1948, it had obtained registration of the Trade Mark 7‑Up in Class 32 for carbonated, non‑alcoholic, non‑cereal, maltless beverages sold as soft drinks and preparations for making such beverages. Ten years later it obtained registration for the Trade Mark 7‑Up in the same class for the goods: "Soft drink beverages and syrups, flavour and extracts for making soft drink beverages, all being goods included in Class 32". Finally, in 1966, it obtained. registration for the Trade Mark 7‑Up in Class 30 for candy and confectionery of all kinds and flavour ice, and for the Mark 7‑Up in the same class for the same goods. For some peculiar reason, which has not been disclosed, the appellant relied on the trade marks registered in 1966 only in the Panwalla's case. In the other three cases, it only relied on the two trade marks registered in 1948 and in 1958." After discussing extensively the case‑law on the subject and distinguishing each one of them, the learned Judge concluded as follows:‑‑ "No other argument was advanced, and I can see no conceivable connection between soft drinks and things like cotton, soap or wool; therefore, Miscellaneous Appeals 25 of 1970, 26 of 1970 and 27 of 1970 are frivolous and can only be dismissed. However, I observed earlier that the facts in the Panwalla's appeal were somewhat different. This is because the appellant, in this appeal, also relies on its registration for candies, and, according to Mr. F.W. VellanL Pan Masalah is something edible in the sense that it is an ingredient in the making of Pan; therefore, the further submission was that there was a trade connection between soft drinks and Pan Masalah. I am not able to see the connection, the more so, as the appellant, is a foreign company, and, except the extremely unwary, no one is likely to believe that the Pan Masalah of the respondent, in this appeal, has been made by an American corporation. However, Mr. F.W. Vellani's submissions are supported by the observations of Tufail Ali A, Rahman, CJ. in Montgomery Flour and General Mill's which I quoted earlier. But, as I explained, those wide observations were not necessary for the decision of that case, and, with the utmost respect, I am not able to agree with them. Secondly, as submitted by the learned counsel for the, respondent, the facts in that case are distinguishable, because, unlike that case, the appellant in the instant case challenges the exercise of discretion against it by the Registrar. Therefore, according t he settled law, and this rule was reaffirmed by 'Tufail Ali A. Rahman, C.J. he burden was upon Mr. F.W. Vellani to show that there was an err r in the exercise of the Registrar's discretion. Learned counsel's only criticism was that the Registrar had not correctly appreciated that the burden of proof under section 8 of the said Act was on the respondent. The submission is not correct, and the real difficulty in the way of the appellant is that it did not produce any cogent evidence in support of its plea of the likelihood of confusion, or, deception between the competing goods. No doubt, this was for the very obvious reason that it is not even selling candies; therefore what evidence could it produce to show the possibility even of confusion between soft drinks and Pan Masalah? Hence my earlier observation that the question of the burden of proof generally loses its importance after evidence has been recorded before the Registrar. And, on the other hand, on a careful examination of the flimsy evidence produced by the appellant, the Registrar reached the conclusion that it did not support the appellant's objections. He also relied upon his experience and referred to the several cases in which the registration of identical trade marks had been permitted when the competing goods had no connection with one another. He, therefore, dismissed the appellant's objections. I see no error in his reasoning, and, on the contrary, I agree with it." CA. Nos.K‑40 & K‑41 of 1985: The appellant, Mr. Abdul Aziz Noor Muhammad, applied on 27‑3‑1.963 by Application No.38910 for the registration of Trade Mark '7‑Up' in respect of PAN MASALA in Class 30 which was advertised in the Trade Marks Journal No.185, dated 1‑6‑1966 at page

561. The respondent, the 7~Up Company, filed Opposition to it, on the grounds already disclosed. The Deputy Registrar Trade Marks, noted the ground on which the opposition was based in the words that follow :‑‑ "The Opposition have been based mainly on the ground that Opponent's products under the Trade Marks '7‑Up' and 'Seven Up? are known all over the world for beverages and soft drinks and are used in Pakistan through their registered users. The names of the Opponent's Registered Users have been given in the documents of Opposition. Opponents' contention is that as ‑the marks of the applicant are identically the same and the goods under the applicant's marks propounded for registration and those covered by the Opponents' Registered Marks are of the same description there would be confusion and deception in the market." After discussing the, case‑law on the subject, the Oppositions were rejected. As two products were involved, namely, Panmasala which included Powdered Supari and sweet and scented Supari under the same class and both were disposed of by a corm non order by the Deputy Registrar, two Miscellaneous Appeals Nos.43 of 1977 and 45 of 1977, were filed in the High Court of Sind. A different learned Judge of the High Court examined again the entire case law on the subject and observed as follows:‑‑ "The respondent was not explained why he has adopted the Trade Mark 7‑Up. Such explanation may not be necessary in case where similar mark has not been registered earlier. But where similar mark has been registered in respect of the same or similar nature of goods then such explanation is necessary to establish honest concurrent user. In cases where the goods are completely different and have no similarity such explanation may been necessary if the registered trade mark has attained such acclaimed arid universal reputation that if any other person associates the same. mark with his own goods, the customer/purchaser will immediately think that both the goods originate from a common source. In the present case there is identity of appellant's and respondent's marks. The goods of both the parties though different are used for similar purpose, sold through the same trade channel and consumed by persons of all ages and walks of life. No doubt the colour scheme of the respondent's marks is different and respondent's monogram is also added to it but the expression '7‑Up' designed similar to appellant's mark appears so prominently that there is every likelihood of deception and confusion as to source of the products. The innumberable customers of the appellant and many others who know the appellant's name, trade marks and products are likely to associate the respondent's products to the appellant. This may probably happen as the appellant has acquired universal notoriety and reputation for its name and product. The appellant's reputation is established by the evidence of the respondent also as in almost all the questionnaires the 7‑Up drink has been attributed to the appellant." And finally concluded as follows:‑‑ "In, the present case the, appellant has established the worldwide reputation for its Trade Mark 7‑Up. A party cannot be allowed to capitalise and exploit the reputation of any other proprietor of trade mark. This is not so to merely protect the proprietor of registered trade mark but to safeguard the interest of public which should be protected from deception and confusion." Mr. Abdul Aziz Noor Muhammad, has riled two appeals challenging this judgment of the High Court which are to be heard alongwith the earlier appeals. CA. No.K‑83 of 1978: On the 11th of July, 1909 Messrs Remington Sports Limited, respondent No.2, applied by Application No.49729 to register the word "SONY" with device of human‑being appearing at both ends, in respect of all kinds of sports goods in Class 23, and it was claimed that the mark was in use since 1968. It was advertised in the Trade Marks Journal No.220, dated Ist of May, 1909. The Appellant SONY KABUSHIKI KAISHA (Sony Corporation) filed an Opposition on the ground that it was a world famous company carrying on an established business as manufacturers and merchants of Radio and Television etc. In Pakistan they were the registered proprietors of the Trade Mark "SONY" within rectangle under No.28360 in Class 9 in respect of Radio and Television receiving sets and parts thereof, batteries, electric vacuum tubes, loud‑speakers, electric photographs, amplifiers, recording apparatus, convertors (rectifier units for operation of battery radio), magnetized recording wireless electric communicating apparatus, dictating machines, hearing aids, tape‑recorders, tapes for tape‑recorders, recorded tapes, transistors, gramophones and electrophones and also parts thereof, mechanically grooved phonograph records and, record‑players. They produced affidavits of Mr. Abdullah Chundrigar, of Mr. Mitsuo Takahashi of Tokyo and of Mr. Younus Ali Muhammad Sait. The Registrar Trade Marks, by his order, dated 6th of June, 1973, rejected the Opposition observing as follows:‑‑ "I find that no evidence has been filed either by the Applicants or by the Opponents to show that the two sets of goods are usually produced by one and the same manufacturer or sold by the same whole‑sale houses. I have gone carefully through the evidence and I have come to the conclusion that it is necessary for the Opponents to establish by clear and cogent evidence that there is close connection between their goods and the goods of the applicants. It is my considered opinion that the question of deception, if any, is far‑fetched. Further it is apparent from the record of cases registered in Pakistan in respect of identical marks by different proprietors that no confusion has been caused. I would like to mention that two cases are seldom exactly parallel and therefore citation of decided cases is sometimes of little value in determining new question of facts raised upon other material. The cases cited by the learned counsel of the opponents are not on all fours with the instant case." I would refer to the latest reported case of the Hon'ble High Court of West Pakistan in PLD 1969 Karachi 376 by Nurul Arrin, J. in which an authoritative pronouncement has been made regarding the points to be taken into consideration for determining the question of likelihood of decetpion and confusion. The two tests stated in that case are as under:‑‑ (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 marked 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? I find that, in the present case, there is similarity of the applicants' and Opponents' marks, but there is no trade connection between their respective goods. The electronic goods manufactured by the Opponents are goods so different and dissimilar from sports articles manufactured by the applicants that it is impossible to take the view that any kind of trade connection could exist between the said goods. After carefully considering the arguments of the Agents, the evidence on record and in exercise of discretion that vests in me, I hold that the objections of the opponents cannot be sustained." Civil Miscellaneous Appeal No.119 of 1973 was filed in the High Court of Sind which too was dismissed by a learned Judge observing as follows:‑‑ "...the claim of the appellant that it had gained general and universal reputation in respect of its Trade Mark SONY has not been satisfactorily established. There is also no evidence from purchasers of sports articles nor even a suggestion in the affidavits of the two local witnesses that such purchasers, on seeing the Trade Mark. SONY on sports articles, would be deceived and believe that they were manufactured by the appellant. Moreover, the respective goods are not sold in the same shops nor dealt with through the same trade channels and with the exception of a few thoughtless persons, it is difficult to believe that many average purchasers or the public would think‑that a tennis recquet or cricket bat sold under the Trade Mark SONY was made by the appellant. I am of the opinion that the appellant has not substantiated a case of tangible danger of confusion among a substantial number of persons." The learned counsel representing the users of registered trade mark have contended that the case has not been looked in the proper perspective by the Registrar of Trade Marks. In the first place, the Registered Trade Mark in the case of the appellant 7‑Up was not only a trade mark but also the name o multinational corporation which had invested a huge amount in its worldwide publicity and projection. It had been in business in Pakistan too long before the application by others was made for exploiting the name, goodwill, and the investment in publicity made by the appellants. The appellants were not under any compulsion to secure registration of the identical trade mark. They could do their business without it. In examining the entitlement of the respondents, the conduct of the appellant should not have been brought under review. The guiding factor in the case was as provided in clause (a) of section 8 of the Act, the likelihood of deception or confusion, and to that extent, public interest alone should have been the criteria. Even in a situation where the appellants had no right to proceed under section 25 for the infringement of their trade mark, or to invoke subsection (1) of section 10, their right to object to registration claimed by someone else, should have been fully recognized. Finally it has been suggested that it was quite apparent that the act of the respondents in selecting and insisting upon the registered trade mark of the appellants for their goods showed that their claim was not bona fide. In any case, according to the learned counsel for the appellants, if there was any doubt, it should have been resolved by refusing registration rather than allowing it. The entire case‑law on the subject has been surveyed by the learned counsel for the appellants, but the cases which have been considered by them of special importance and of particular relevance are, amongst others, those of Sunder Parmanand Lalwani and others v. Caltex: (India) Ltd. AIR 1969 Bom. 24; Dunn's Fruit Salt's case (1890) 7 RPC 311; American Steel Foundries v. Thomas E. Robertson (269 US 372); Southern Cross Refrigerating Company v. Toowoomba Foundry Proprietary Limited (91 C.L.R. 592); Edward Hack's Black Magic case (58 R.P.C. 91) Radio Corporation Propiretary Ltd. v. Disney and others known as Mickey Mouse and Minnie Mouse case (57 CLR 448); Egg Products Ltd.'s Egall case (39 RPC 156) and Fiat case (Misc. Petition No. 801 of 1977 in the High Court of adjudicature at Bombay). The learned counsel for the respondents have mainly relied on the pleadings and the evidence to demonstrate that there was nothing therein to show that there was any scope or likelihood of deception or confusion. It is outside the evidence and the material on the record that such a plea is sought to be raised and sustained. Besides, according to the learned counsel, what is contained in clause (a) of section 8 is a general provision on ‑the subject and the more specific provision dealing with the same subject is subsection (1) of section 10 of the Act which prohibits registration of a trade mark in respect of any case or description of goods which is identical with trade mark belonging to a different proprietor, in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion. According to the learned counsel, this special provision must be kept in view, while interpreting and applying the clause (a) of section 8 of the Act. If the goods are entirely different, the onus is on the opposing party to show that in spite of such a dissimilarity the likelihood of confusion or deception still persists. The learned counsel for the respondents have heavily relied upon the cases Thomas Bear & Sons (India) Ltd. v. Prayag Narain and another AIR 1940 PC 86; Ladislas Jellinek's "Panda" shoe polish case (63 RPC 59); J&J Colman Ltd. case (46 RPC 126); Lifeguard Milk Products Proprietary Ltd.'s case (1957 RPC 79); Darnell (J.) & Son Ltd.'s case (1957 RPC 177); Sunline Trade Mark case (1970 RPC 207) and Lake and Elliott's 'Millennium' case (20 RPC 605). Finally it has been contended that the Registrar's discretion in such matters should not be lightly interfered and is not liable to be interfered. Reliance is placed on Abdul Wahid v. Haji Abdur Rahim and another PLD 1973 SC 104. "A trade mark at common law is acquired not solely through origination of the mark but through its use in trade . .... Trade marks at common law have traditionally been used to distinguish only goods." (68 Harvard Law Review, pp. 819, 822). These principles of common law seem to be incorporated in the various provisions of the Act. For example, the definition of trade mark contained in clause (1) section 2 of the Act is in the following words:‑‑ "'Trade mark' means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some persons having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person." Section 5 of the Act provides as follows:‑‑ (1) A trade mark may be registered only in respect of particular goods or classes of goods. (2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final. Subsection (1) of section 10 is in the words that follow:‑‑ "Save as provided in subsection (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and either already on the register in i respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion." Subsection (1) of section 21 dealing with infringement also highlights the use of trade mark in relation to specified goods, in the following words:‑‑ ..Subject to the provisions of sections 22, 25 and 20, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, 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 it 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." Finally, a provision is made for defensive registration of well known trade marks in section 38 in the words that follow:‑‑ "38.‑‑(1) Where a trade mark consisting of any invented word has become so well‑known as respects any goods in relation to which it is registered and has been used, that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first‑mentioned goods, then, notwithstanding that the proprietor registered in respect of the first‑mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in section 37, the trade mark may on application in the prescribed manner by such proprietor be registered in his name in respect of those other goods as a defensive trade mark and, while so registered, shall not be liable to be taken off the register in respect of those goods under the said section." It is in company with these provisions that there appears clause (a) of section 8 which is couched in somewhat general words as hereunder:‑‑ "

8. No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would‑‑ (a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; or (b) There are two ways of looking at the problem posed in these appeals. The first is to solve it by reference to statutory provisions alone, the second is to examine the precedent law in this country and others having similar statutory background and Finally to fuse the two. If the mere adoption of a registered trade mark, irrespective of the class or category of goods, were to be decisive for the purposes of clause (a) of section 8 then so many other substantive provisions of the Act will be rendered altogether redundant, of no use at all. For example, if such a wide use is made of clause (a) of section 8 as is suggested by learned counsel for the appellants then section 5, subsection (1) of section 10, subsection (1) of section 21 and subsection (1) of section 38 would serve no purpose. The mere showing of the registered trade mark and its use for any class of goods would be sufficient to keep off every other aspirant for such a trade mark. Therefore, in order to preserve the Statute and the Scheme established by it, to create a harmony, it is imperative not. to give such a wide meaning. It is in this context that the underlying scope, scheme, purpose and philosophy of Trade Mark Law has been described in the following words in Thomas Bear & Sons (India) Ltd. v. Prayag Narain and another AIR 1940 PC SO:‑‑ "it is clear that the right of property that may be acquired in such a trade mark is based on the proved association in the market of the device, name, sign, symbol or other means in question with the goods of the plaintiff, so that the use by the defendant on such goods of the trade mark will amount ‑‑‑ whether the defendant intends it or knows it or not ‑‑to the false representation that the goods are manufactured or put on the market by the plaintiff. There can obviously be no monopoly in the use of (he trade mark. A manufacturer of cigarettes under an undoubted trade mark such as an animal, or any other device cannot legally object to the use of the identical mark on, say, hats, or soap, for the simple reason that purchasers of any of the latter kinds of goods could not reasonably suppose, even if they were well‑acquainted with the mark as used on cigarettes, that its use on hats or soap denoted that these goods were manufactured or marketed by the cigarette manufacturer: see (1887) 12 AC

453. Those would be simple cases, but some much more difficult ones can be suggested. If a manufacturer of a special kind of smoking tobacco under a trade mark seeks to restrain the use of it on cigars, or on a very different kind of smoking tobacco, or on cigarettes, or on snuff, or on choking tobacco, or on tobacco in some form sold for use as a weed killer‑‑all these things being made of tobacco‑‑questions, sometimes of great difficulty, may arise. It is however very important to observe that each of these questions will be a question of fact to be decided on the evidence adduced. The vital element in such a case is the probability of deception. This may depend on a number of materials as well as the question of similarity of the marks or of the get‑up. Witnesses can be called to prove the circumstances and the places in which the articles are sold, the classes of persons who buy them, and whether they include persons who arc illiterate or ignorant or the reverse, the manner in which the public are accustomed to ask for the articles, and any other matters which will assist the Court to decide whether deception is probable. Evidence of actual deception may be available and if available may be very valuable. There is no such person as an expert in human nature, and it is now well‑settled that a witness cannot be called to say that it is likely that purchasers of the goods will he deceived. This can only be a matter of opinion formed after the dispute has arisen and too often without any judicial consideration of the opposing contentions. On the other hand, a person who is accustomed to buy the articles in question may be called to say that he would himself he deceived, and cross‑examination will often show what weight should be attached to such a statement." The question of law now under examination has been discussed in the following words in Annual Survey of Commonwealth Law, 1971:‑‑ "The question of how far a trader in a different line of business can lawfully appropriate indirect goodwill by adopting a well‑known trade mark is only partially an answered in the trade mark legislation of most of the Commonwealth; at best an Act is likely to contain a provision for 'defensive registrations' like that of the United Kingdom Act, S.27. The Canadian Act, however, provides that there can be confusion in the use of trade marks "if the use of both in the same area would be likely to lead to the inference that the wares or services are of the same general class". Trade Marks Act 1952‑53, S.6(l). By virtue of this provision the registered proprietor of 'Tam‑Tam' for crackers and biscuits was able successfully to oppose an application for the same mark for non alcoholic beverages. B. Manischewitz Co. of Canada Ltd. v. Karolos Fix SA. (1970) 63 C.P.R.

136. In the case of Montgomery Flour and General Mills Limited v. Registrar, Trade Marks, Karachi, referred to in the leave granting order, the learned counsel representing the registered Trade Mark User (7‑Up) had, taken a different position as noted in that judgment "relied in the main upon his registration in Class 32, and almost the entirety of his argument was taken up in an effort to persuade me that the soft drink that his clients are now manufacturing and marketing are of the same description as the candies and hard boiled sweets in respect of which the appellants have made the application to the Registrar of Trade Marks." Montgomery Flour and General Mills Ltd. were applicants for registration of Trade Mark 7‑Up in Class 30 for "bard boiled sweets, candies and drops". The Sind High Court after surveying the entire case law gave the decision not so much on the basis of identity of the trade mark or the class of goods as on the basis of related field of trading activity. The following quotation from the judgment bears this out:‑‑ "Upon a consideration of the various statutory provisions and the circumstances of the case I have come to the conclusion that the goods of the contending parties are of the same description inasmuch as they are normally sold through the same trade channels and that, while both are items for human consumption and edible, neither is a food in the sense that either would be used for the purpose merely of satisfying hunger. Each is used in the form of a refreshment, a substance from which some enjoyment of taste and refreshment is to be obtained rather than the satisfaction of a physical appetite. In that view of the matter section 10(l) would clearly debar the appellants from registration of the trade mark. It is to be observed that even in section 10 the likelihood of deception or confusion is an element But even more strongly would I reject the case of the appellant by reason of section 8(a). Now there is no question in section 8 of goods being of the same description or not and the emphasis is purely, so far as clause (a) is concerned, upon the likelihood of deception or the causing of confusion. The trade mark of respondent No.2 has already acquired not only in the rest of the world but also in this country which establishes in the mind of the common consumer a connection between goods bearing the trade mark and respondent No.2. It is true, of course, that the appellant adds the words "Montgomery' and candies" before, and after the expression "7‑Up" respectively but nevertheless, that expression figures prominently and there is, therefore, in my view every likelihood of deception and confusion." The decision in Sunder Parmanand Lalwani and others v. Caltex (India) Ltd. AIR 1969 Bombay 24, heavily relied upon by the appellants, brings out deception and confusion in the following words in para. 49:‑‑ "In this case, the goods are totally different. There is no trade connection between them. There is no connection in the course of trade, nor any common trade channels. These are factors against holding that there would be any danger of deception or confusion. But we must consider the factors which tend to show that there is a likelihood of creating deception or confusion. The opponents have been using their mark on a very large scale since 1937. Their sales in 1956 exceeded Rs.30 crores. Their publicity is widespread and large. In 1956 they spent over a million rupees on advertisements. The goods in respect of which they use the Trade Mark 'Caltex' are mainly petroleum, kerosene and lubricants like greases and oils etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seeks registration is wider than watches and watches can be both costly and cheap. It cannot go without notice that the goods in respect of which the applicant in fact used the mark before he applied for registration were very cheap watches. The goods of the opponent are used by persons all over India, in cities and in villages, in different walks of life, rich or poor, literate or illiterate. The goods of the applicant are different in nature. But they are watches. They can be cheap watches. The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man. Now, so far as the word 'Caltex' is concerned, it is common to the opponents' mark as also to the opponents' name. To mention the Mark 'Caltex' is also to mention the name of the owner. The mark is unlike the Lion or the 'Stag' mark where there would be no direct connection between the mark and the name of its owner. The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade." As to the plea that such a recognition of right will amount to creating a monopoly the Court observed as follows‑ "The exercise of his discretion against registration would disentitle only the applicant to use the Mark 'Caltex'. But that would not be creation of a monopoly in the opponents. A monopoly means a sole right being vested in the applicant to use mark to the exclusion of all other persons. By the mere fact of exercising discretion in that way, none other than the applicant would be disentitled to use the mark in respect of goods falling in the classes other than those for which the opponents have registered their mark. It is quite clear that even if the discretion was exercised against the applicant, it could not have conferred any monopoly on the opponents as apprehended by the Deputy Registrar, or prevented any other person in a fit case from using the word 'Caltex' as his trade mark in respect of other goods as permitted under the Trade Mark law. Thinking in terms of monopoly in this context was basically wrong." About this judgment Annual Survey of Commonwealth Law, 1969, had the following comments to offer:‑‑ "In India the word mark 'Caltex' has been refused registration for watches because it might lead to confusion of trade source with the company which manufactures the well‑known petrol and oil. Sunder Paramanand v. Caltex (India) Ltd. AIR 1969 Bombay

24. This is to give wide play to the potentially unfair competition involved in attempting to squat on the borderlands of another's goodwill." Even the Fruit Salt's case (1890) 7 RPC 311 proceeds on related field of trading activity. J.C. Eno got registered the word "Fruit Salt" as an old trade mark in Class 42 for a dry preparation for making a non‑intoxicating beverage. He also got registered "Fruit Salt" in Class 3 as an old trade mark for "a proprietary medicine for human use". One Mr. Dunn applied to register the words "Dunn's Fruit Salt Trade Mark Baking Powder" as a trade mark for baking powder in Class

42. This was opposed by J.C. Eno. Section 73 of Trade Marks Act, 1883, providing as follows was applied: "It shall not he lawful to register, as part of or in combination with a trade mark, any words the exclusive use of which would, by reason of their being calculated to deceive or otherwise be deemed disentitled to protection in a Court of justice, or any scandalous design." Kay Judge refused to allow registration of the trade mark on the ground that the proposed trade mark was calculated to deceive within section

73. The Court of Appeal allowed the appeal Cotton L.J. dissenting. The House of Lords by a majority of three to two reversed the judgment of Court of Appeal and restored the orders of Mr. Justice Kay. The findings reproduced hereunder from the majority decisions of the Lords would demonstrate the basis on which the whole case proceeded:‑‑ (i) I have come to the conclusion that the proposed use of the term 'Fruit Salt' by the Respondent might, and in many instances probably would, have the effect of deceiving the public. It is no doubt said that the respondent's trade mark is for a baking powder, to be used in the manufacture of bread, whereas the appellant's mark is for a powder to be used in producing an effervescing drink; and that there can be no risk of any member of the public confounding the two things. To a certain extent the criticism is well‑founded. I do not suppose that persons intending to bake would buy Eno's Fruit‑Salt, or that persons desiring to indulge in an apparent drink would invest in Dunn's Fruit‑Salt Baking Powder. But I do think that there would be a supposed connection between the two articles in the minds of many persons, who would naturally assume that the baking powder had been manufactured with the Appellant's Fruit‑Salt, and purchase it in that belief; so that a batch of badly made baking powder might seriously injure the credit of the effervescing powder. Having regard to the uncandid statements made by the respondent with respect to his selection of the words, I cannot avoid the conclusion that he adopted them, as they now stand in his trade mark, with the deliberate purpose of obtaining pecuniary advantage from the wide reputation of the appellant's manufacture, and the probability of purchasers connecting it with his own baking powder. I do not for a moment suggest that everybody would be misled. Skilled chemists and persons of intelligence who gave heed to the matter might incur no risk of error, but I cannot assume that these are the only classes who may be expected to purchase packets of baking powder and Eno's Fruit Salt. It was argued that to give effect to these considerations would be equivalent to allowing the Appellant to appropriate, as his own property, two words in common use. The argument appears to me to underrate the resources of the English language, which are, in my opinion quite sufficient to enable anyone honestly desirous of distinguishing his own goods, to use these words in a trade mark in such a manner as to prevent any possibility of their being connected with the Appellant's Fruit‑Salt." (Lord Watson). (ii) Fruit‑Salt is described in its registration under Class 42, in which the respondent seeks to be registered, as 'a dry preparation for making a non‑intoxicant beverage,' although it is true that it does possess slight aperient properties, and that the trade mark is registered also in Class 3, where the description of goods is a proprietary 'medicine for human use'. Nevertheless, the argument remains, and is, no doubt, deserving of serious attention. I may say, at once, that in my opinion the Appellant has no exclusive property in the words 'Fruit‑Salt' and, if it were proposed so to employ, them, that no reasonable person could suppose that they bad reference to the appellant's preparation, such a use would be perfectly unobjectionable. For example, I cannot conceive anyone imagining that a 'fruit‑salt umbrella' was in any way connected with the article manufactured by Mr. Eno. And numberless similar illustrations might be given. But I am unable to arrive at the conclusion that Fruit Salt and baking powder are of so essentially different a character that the one could not be supposed to enter into the composition of the other The evidence appears to me to be cogent the other way. Two persons at least did, before this litigation was even contemplated, use Eno's Fruit Salt with success as baking powder. It not only occurred to them that this Fruit Salt might be so used, but they actually so employed it. I do not think the importance of this evidence was fully appreciated in the Court below." (Lord Harschel). (iii) Mr. Eno has not and cannot have ‑any exclusive property in the expression 'Fruit‑Salt'. The words of which it is composed are common English words; anybody may use them in any manner and in any connection he pleases, provided he takes care that the use to which they are applied is not calculated to deceive. The learned Judges who were in favour of Mr. Dunn in the Court below seem to have come to the conclusion that Mr. Dunn's object was to obtain the benefit of the celebrity which the name adopted by Mr. Eno has acquired, but that it was not his object to steal Mr. Eno's trade. So far I am disposed to agree; but I do not think that those propositions cover the real question. The question is one between Mr. Dunn and the public, not between Mr. Eno and Mr. Dunn. It is immaterial whether the proposed registration is or is not likely to injure Mr. Eno in his trade. Equally immaterial, as it seems to me, is the fact that for a considerable time Mr. Eno had on the register as his trade mark, the words 'Fruit Salt'. Mr. Eno may have gained some advantage to which he was not properly entitled; but that is hardly a reason for permitting Mr. Dunn to practice a deception upon the public." (Lord Macnagbten). In the American Steel Foundries' case (269 US 372), the facts as stated in the judgment were as follows:‑‑ "Plaintiff and its predecessor, the Simplex Railway Appliance Company, have used the Trade Mark 'Simplex' on railway car bolsters since 1897 .and on car couplers since 1907, the former being registered in the Patent Office in 1911, the latter, in 1909. In 1917 plaintiff adopted and there after used the same trade mark on brake rigging, brake heads, brake beams, brake shoes, brake hangers, and clasp brakes. Application was made in 1917 to register the trade mark for the last named uses, but the Commissioner of Patents refused the registration on the ground that the trade mark consisted merely in the name of a corporation, viz. the Simplex Electric Heating Company, defendant herein. The Commissioner's ruling was affirmed by the Court of Appeals of the District of Columbia. In re: American Steel Foundries, 258 Fed.

160. The case came to this Court on cetiorari, but was dismissed for want of jurisdiction. Sub nom, American Steel Foundries v. Whitehead, Commissioner of Patents, 256 U.S.

40. Thereupon, this suit in equity was brought in the Federal District Court for the northern District of Illinois under Ss.4915 R.S. (American Foundries v. Robertson, 262 U.S.209), to which the Commissioner of Patents voluntarily appeared. That Court dismissed the bill and an appeal to the Court of appeals followed." The law applicable to the case was section 5 Trade Marks Act of 1905, the relevant words were as follows:‑ "Provided, that no mark which consists merely in the name of an individual, firm, corporation, or association not written, printed, impressed, or woven in some particular or distinctive manner, or in association with a portrait of an individual shall be registered under the terms of this Act.‑ The principles of the substantive law of trade marks and unfair competition settled by the Court, in the light of the legislation for deciding the appeal were as follows:‑‑ "The mere fact that one person has adopted and used a trade mark on his goods does not prevent the adoption and use of the same trade mark by others on articles of a different description. There is no property in a trade‑mark apart from the business or trade in connection with which it is employed. The fact, for example that the articles upon which the mark is used are not of the same description as those put out by the corporation, is entitled to weight, since the probability of such confusion and injury in that situation obviously is more remote than where the articles are of like kind. The cases, naturally, present varying degrees of difficulty for the application of the rule. Primarily, the power and the duty rest with the Commissioner of Patents to determine the question in each case in the exercise of an instructed judgment upon a consideration of all the pertinent facts." (ii) The general doctrine is that equity not only will enjoin the appropriation and use of a trade mark or trade name where it is completely identical with the name of the corporation, but will enjoin, such appropriation and use where the resemblance is so close as to be likely to produce confusion as to such identity, to the injury of the corporation to which the name belongs. (iii) In Simplex Electric Heating Co. v. The Ramey Co., Decisions, Commr. Pat., 1916, pp.74, 77, 79, 82‑83, the Commissioner of Patents, admitting the same word to registry under like facts, said: It is a fact that the word 'Simplex' has been in such wide and varied use in this country not only as a trade mark but as part of a firm or corporation name that everybody has heretofore considered something more than the word 'Simplex' necessary to identify a corporation ...........the word 'Simplex' does not identify any corporation in particular, for the simple reason that it is equally the name of various corporations. In short, if one referred to 'the company Simplex, without anything else, it would not be known to what he was referring ......The word involved in this case is one of a large class of words which have for a great many years been much used because of their peculiarly suggestive meaning. For other examples there are the words 'Aeme', ,'Anchor', 'Champion', 'Eureka', 'Excelsior,' 'Ideal', 'Jewel', 'Liberty, 'National', 'Pride', 'Premier', 'Queen', Royal', 'Star', 'Sunlight', 'Triumph', 'Victor'. It would be a serious matter if the law actually permitted anyone who chose to do so to organise a series of corporations with names containing these words, respectively, and there upon virtually withdraw these words from public use as trade marks and monopolize them by preventing their registry as such. On appeal to the District Court of appeals, the decision of the Commissioner was reversed upon the ground, in part, that the word "Simplex" was a distinctive part of the name of the corporation, Simplex: Electric Heating Co. v. Ramey Co., 46 App. D.C. 400, 406; and this was followed by the same Court in the present case. It already is apparent that we agree with the Commissioner and not with the Court. Under the facts, we are of opinion that it does not appear that the use of the word as a trade mark upon the goods of the plaintiff will probably confuse or deceive the public to the injury of the defendant or of any other corporation. It follows that the refusal to allow the registration was erroneous." In the Australian case of "Southern Cross Refrigerating Company" (91 C.L.R. 592) the Registrar upheld the objection to the registration of this trade mark for "Gas absorption refrigerators and electric refrigerators and parts there of". The objection had come from the appellant who had "trade marks on the register consisting of the words 'Southern Cross' in respect only of (i) well drilling and boring machinery hand or power; (ii) milking machines; (iii) engines and windmills. It has trade marks on the register consisting of the device "S" over a cross in respect only of (iv) windmills, engines, well‑drilling machinery, pumps, pumping machinery, pump rods, pump rod joints, crab winches, saw benches, motor pull‑out winches, belt‑driven or gear‑driven pump heads; (v) all kinds of tubing and valve cocks and fittings for same (of metal); and (vi) milking machines. None of these goods can be said to be of the same description as refrigerators." The law pressed into service was section 114 of Australian Act making similar provision as did section 11 of English Act of 1938. The law officer conditionally allowed registration. On appeal the Court upheld the objection. On further appeal the Full Court also upheld the objection. The basis for allowing this objection appears from the following portion of the Full Court's judgment:‑‑ "Not only was there evidence which established the probability of confusion but, also, quite substantial evidence of actual confusion. But the appellant claims that any actual or probable confusion had proceeded or would proceed from a belief that the respondent had a monopoly of the 'Southern Cross' mark. This mistaken belief, it was said, alone had led to the actual confusion deposed to and this circumstance operated to strip the evidence of real weight. We do not agree. In part the confusion resulted from the use by the appellant of a mark which had long and widely been used by the respondent, in part from the fact that it was a mark which had been used by the latter with respect to such diverse objects as both manual and power well‑drilling and boring machinery, milking machines and engines and windmills, in part from the fact that in the course of business those articles frequently are and have, for a long time, been sold in country stores where, side by side with them, domestic refrigerators are stocked and sold, and last, but not least, from the circumstance that the name 'Southern Cross' is a mark of a general character and‑ ‑as appears from what we have already said of a wide and varied significance. A careful scrutiny of the evidence convinces us that the respondent made out a clear case, not only that a user of the mark by the appellant for the purposes proposed by' it would be likely to deceive, but that it has already done so in a not inconsiderable number of cases .or do we think it necessary In those circumstances we do not propose to traverse, the whole of the facts again." The basis of the decision clearly was (i) confusion found to exist as a fact', (ii) the diversity of the business of the objector, (ii) the common selling outlets for both the products, (iv) the generality or the business of the objector including, as a related trading activity, the specialty of the applicant. Rowntree & Co. Ltd., was the registered ,proprietor of the Trade Mark 'Black Magic' for goods in Class 42 in respect chocolates. Applicant was seeking registration o respect of "Medicated preparations in solid form of inter alia. chocolate and the words "Black Magic" in for human use as laxatives" in Class

3. The Assistant Comptroller allowed conditional registration by excluding "Preparations made with Chocolate". Not the applicant but the Objector appealed and was successful, the Court holding as follows:‑

(i) I may say at once that, in my view, if persons hearing of a laxative called 'Black Magic' or seeing advertisements of laxative called 'Black Magic' are likely to think that such laxative was made by the opponents, then the , the mark applied for is one which is likely to cause confusion within the meaning of the section. I also think that, if such persons are likely to wonder whether or not this laxative was made by the opponents, the mark applied for is one which is likely to cause' confusion, because people's minds will be put in a state of doubt or uncertainty. (ii) These chocolate laxatives are all medicated preparations. The evidence also shows that it is not unusual for chocolate manufacturers to supply the chocolate to the manufacturers of medicated preparations, or to make certain medicated pre parathions themselves the evidence shows, however, that no chocolate manufacturer h so far marketed a chocolate laxative. Certainty Messrs Rowntree are not marketed a chocolate laxative nor have they any present intention of doing so. It is also clear from the evidence that laxatives an chocolates are not infrequently sold in the same shops and over the same counter, though so far as the evidence goes would seem that the shops which combine the sale of chocolates and laxatives are general shops selling a large number of other articles. It. also to be noted that the evidence as regards probability of confusion is all on the side of the opponents. Traders, confectioners and members of the public have made declarations and some of them have given evidence before me. (iii) There are certain further facts which emerged only on the oral evidence which I have heard, There is evidence that Messrs Rowntree have a reputation as manufacturers of medicated goods, such, I think, as cough lozenges. There is evidence that Messrs Rowntree sell a sweetmeat known as, Smarties, The 'Smarties' are very much of the same shape as the Cascara Sagrada lozenges which Mr. Hack desires to market; they are in various colors and they are not by any means limited to chocolate colour. There is also evidence that there is at least one manufacturer of chocolates who makes laxatives, to this extent, that he manufactures liquorice which, according to the evidence, is sometimes bought as a laxative. I think the oral evidence also goes as far as this, that there is some evidence that persons might be deceived into thinking that the 'Black Magic' laxative was manufactured by Messrs Rowntree, even if they ascertained that the laxative did not contain chocolate." (iv) It seems to me there is some mischief in persons being led into the belief by the use of the words 'Black Magic' that the laxative in question contained chocolate For my part I go further than that: I think that a large. number of persons if they heard of a laxative called 'Black Magic' or saw advertisements of a laxative called 'Black Magic' would be likely to think that that laxative was made by the same firm who made the 'Black Magic' chocolates. If so, I think that confusion is caused within the meaning of section 11. think there are a number of other people who, without arriving at a conclusion that the 'Black Magic' laxative was made by the same persons as the 'Black Magic' chocolates, would wonder if it were or were not made by the same persons. I think further that there is a possibilities of that people who bought the 'Black Magic' laxative in a shop might be left, when they had bought it, under the impression that the 'Black Magic' laxative was made by the same persons as the 'Black Magic' chocolates." This decision is based on extensive and varied factual information in the form of evidence supplied by the parties and the conclusions drawn therefrom. Two fantastic characters 'Mickey Mouse' and 'Minnie Mouse' invented by Disney had acquired a worldwide popularity in cinematography pictures. The names and figures had been applied by the trader licence from Disney and applied for the registration as trade market of the words "Mickey Mouse' and 'Minnie Mouse' in living sets. The Registrar refused registration. On appeal the decision was maintained on the following views:‑‑ (i) The opponents have, in my opinion, shown that the names and the figures are so closely associated in the public mind, in Australia and elsewhere, with Walter E. Disney and his activities, that the use of either the names or the figures in connection with any goods at once suggests that the goods are 'in some way or other connected' with Walter E Disney. (ii) I do not decide this appeal upon the basis that the opponents have any exclusive right of any kind to the use of the words and figures in question whether by way of trade mark or under a copy‑right or otherwise. My opinion is based solely upon the ground that, as against the public, the applicants should not be granted the exclusive right to use the words in connection with any goods for the reason that the use of the words by them as a trade mark would be likely to deceive. (iii) It cannot be denied that the opponents have obtained great reputation or notoriety for the form and name of Mickey Mouse and Minnie Mouse, his feminine counterpart. But it is said that that reputation is unconnected with the sale or handling of goods and is analogous rather to the fame of some personage of fiction or history. In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name ,'Walt Disney' summons up a picture of 'Mickey Mouse' and the picture of Mickey Mouse reminds them of 'Walt Disney'. The foundation of this authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of 'Mickey Mouse' with 'Walt Disney. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. (iv) On the whole, I think there are present elements which leave them unable to discharge this burden. Those elements are, first, the belief which many people are not unlikely to hold that in some way or another Disney, or one of his companies has permitted, if not procured, the application of the name Mickey Mouse to the radio sets in connection with which it is used and, second, the unauthorized diversion to their own purposes on the part of the applicants of the celebrity and reputation obtained by the various activities of the opponents in relation to Mickey Mouse. The latter may give no cause of action but I think that, at any rate in conjunction with the former element, it would be enough to deprive the proposed mark of protection." This decision has certain unique features viz. (i) two well‑known fiction characters drawn from the cinema and its adjuncts, (ii) not directly connected with trading of goods of any class', (iii) extensive licensing system in vogue for using their characters and (iv) their commercial use on licensing basis for a large number of assorted goods. An application was made in register the word "Egall" which the applicant had used as a trade mark for five years in Class 42 in respect of dried eggs. The objection was on the ground that the objection was proprietor of Trade Mark 'Egrol' registered in Class 42 in respect of custard powders, blancmagne powders, baking powders and egg powders". The Registrar refused. The appeal failed. The reasons contained in the judgment are as follows:‑‑ "It seems to me that, even apart from the evidence which has been given on the part of the opponents, the Court might very probably have come to the conclusion ‑‑‑ I am not sure that I should not have come to the conclusion ‑‑that on the great similarity of the words themselves there would be a liability to confusion. But having regard to the evidence that has been given by the opponents of actual confusion, I come to the conclusion that the decision of the learned Registrar was quite right, and I must refuse this application." Apart from the cases and the decisions already referred to, there are numerous others where the goods though apparently of a different class or description were found to have same features which established a trading connection of a sort to suggest strongly the likelihood of confusion or deception of that section of the public which was affected by them. Some of these are briefly referred to hereunder:‑‑ (i) 'Lotus' Brand Honey in Class 30 and Lotus brand "hydrogenated vegetable oil and edible vegetable oils (refused)". (Appeal against Order No.424 of 1975 in the High Court of Judicature Madras ‑ 23rd July, 1976); (ii) 'Nuvol' in class 47 in respect of eliminating heating or lubricating oils and 'Nufol' in Class 3 in respect of medicinal preparation for human use (1926) 43 RPC 313' (iii) 'Honomol in respect of some liquid food preparations of honey and malt and "Honyol" in respect of an edible fat emulsion. (1943) 60 RPC 147; (iv) 'Glucovita' for buscuits in Class 30 and "Glucovita" in Class 30 in respect of Dextrose, a substance used as food or as an ingredient in food glucose for food ‑ AIR 1960 SC 142. (v) 'Kodak' registered for cycles was expunged on application by Eastman showing that they had made a specialty of cameras suitable for bicycles and the appliances for fixing the same to bicycles and had largely advertised "Bicycle Kodaks" (1898); (vi) 'Leesona' for carpets, mats and rugs refused because Leesone was renowned for winding machines and other machinery used in the textile industry (1955) 72 RPC 75. (vii) 'Players' for confectionery cigarettes was refused because "Players" was extensively used for cigarettes, tobacco etc. (1965) RPC 63; (viii)'Woodies for confectionary cigarettes refused because of Mark 'Wood bine for 'tobacco' (1965) RPC 366." Karley's Law of Trade Marks and Trade Names, begins with the following' leading principle governing trade mark before the Registration Acts were enforced and this would in fact represent the principles of Common Law already noted:‑‑ "The foundation upon which the law relating to trade marks and trade names developed is that the deception of the public by the offer for sale of goods as possessing some connection with a particular trader, which they do not in fact possess, is a wrong in respect of which the trader has a cause of action against any person who is the author of, or is responsible for, the deception. 'No man,' said James L.J. in Singer Manufacturing Co. v. Loog (1880) 18 Ch.D. 395 at p.412, "is entitled to represent his goods as being the goods of another man; and no man is permitted to use any mark, sign or symbol, device or means, whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer. That being, as it appears to me, a comprehensive statement of what the law is upon the question of trade mark or trade designation, I am of opinion that there is no such thing as a monopoly or a property in the nature of a copyright, or in the nature of a patent, in the use of any name. Whatever name is used to designate goods, anybody may use that name to designate goods; always subject to this, that he must not, as I said, make directly or through the medium of another person, a false representation that his goods are the goods of another person." The statutory principle governing the subject has been lucidly stated by Mr. Justice Parker in the Pianotist case (1906) 23 RPC 774 at 777 in the following words:‑‑ "You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion ‑‑that is to say not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods‑‑ then you may refuse the registration, or rather you must refuse the registration that case." There is indeed a cleavage of opinion in the judgments of Sind High Court on the subject. In the case of Kaiser Jeep Corporation v. Saber Saleem Textile Mills Ltd. PLD 1969 Kar. 376, a learned Judge held that a mark identical with another mark already on the register of trade marks, can be registered if the goods were of a different description and there was no likelihood of confusion and deception to the public. In that case the registered trade mark was 'Jeep' in words with the picture of a vehicle in Class 12(automobiles and vehicles). The applicant had applied for adopting the same trade mark in Class 23 in respect of threads and yarn of all kinds. The Court observed as follows:‑‑ "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 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." In Montgomery Flour and General Mills Limited' case, the then Chief Justice held that hard boiled sweet candies and drops though of a different description and class than the soft drinks in respect of which the registered trade mark user had a claim was yet such as to give rise to a likelihood of confusion and deception to the public and, therefore, hit by section 8(a). In the judgment under appeal now in respect of PANMASALA not only the goods were held to be of a different description but it was held that there was no likelihood of deception. So was held in Sony Kabushiki Kaisha v. Registrar of Trade Marks, Karachi and another PLD 1978 Kar. 161, which is also the subject‑matter of appeal before us. In yet another judgment now, in appeal before us, another learned Judge has taken up the position as was taken by learned Chief Justice in the Montgomery Flour and General Mills Ltd. A resolution of the question involved is definitely called for. Our statute law recognises and also protects trade mark in relation to goods, and not independently of the goods. Therefore, one is justified in claiming protection for a particular trade mark only if it is related to a particular good or class or category of goods. The generality of clause (a) of section 8 of the Act cannot be given the meaning and the content so wide as to embrace all registered and widely used trade marks so as to exclude their adoption and use for any and every class or category of goods, howsoever different and dissimilar. The generality advocated is limited by clause (a) of section 8 of the Act itself. The test provided therein is not the identity of the trade mark or of the goods but likelihood of deception or confusion such as to entitle protection in a Court of law. The test of the likelihood of deception or confusion is dependent on the nature of the goods, marketing methods, consumer awareness etc., all variables, differing from place to place, country to country and commodity to commodity. Even in the Caltex's case where the goods were totally different the Court proceeded to examine the first requirement and found it amply satisfied by holding that "The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man," and finally holding that "The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade". It has to be noted further that the likelihood of deception or confusion is tested not by the reactions of the immediate vendee but by those of the ultimate consumer. Applying the law to the facts of the cases before us, it is clear that the identity of the Trade Mark '7‑Up' for wool, thread, soap and 'Sony' for sports goods does not go beyond a stage where one can infer the slightest likelihood of deception or confusion to earn protection in a Court of law. The goods are entirely different ' . Their manufacturing and marketing methods are different. The category of consumers served is not the same. The outlets for. their sale are also different. With so many variables, all pertaining to the goods and consumers thereof, the mere identity of the trade mark cannot justify our interference in the conclusions drawn by the Registrar and the High Court, nor can such interference be sustained on the plain words of the statute. Therefore, the appeals, Civil Appeals Nos.K‑32, K‑33, K‑34 of 1977 and K‑83 of 1978 are liable to be dismissed and are dismissed with costs. As regards "Pan Masala", (Powdered Supari) and Sweet and Scented Supari, there are two conflicting judgments of the High Court. The fact that the Company "7‑Up" is a multinational of international repute in the market for beverages and for that reason not likely to engage itself in trading in such an indigenous product may academically be sound for a marketing analyst but really of no or very little concern to the class of consumers served by these products. Their sale points and outlet points are quite often the same. The consumers served are largely of the same category. Both the products though classified differently for the purpose of trade mark fall, from consumers' point of view, in the same category of hot refreshment or pep" preparations. Their features do make out a case of there being likelihood of confusion or deception with regard to their source. The applicants for this registration mark had a wide and open field to choose from. They decided upon the trade name of another which also happens to be name of the company which has heavily invested in that trade name and goodwill appurtenant to it. With that real likelihood of deception and confusion it wag dearly a case where registration should have been refused. For this reason Civil Appeal No.K‑35 of 1977 is allowed with costs and the judgment under appeal as well as the order of the Registrar is retained and registration of the Trade mark is refused, while Civil Appeals Nos.40 and 41 of 1985 are dismissed with costs. M.B.A 7499/S Order according