1992 PLP 694 (CLC)

Khalil Kizilbash for Respondents. Date of hearing: 13th May, 1991. By this common judgment I propose to dispose of Misc. Civil Appeals NosS4/86 and 55/86 as common questions of law and facts are involved therein.

2. So far as the facts of the first case are concerned, the learned Assistant Registrar, Trade Marks, Karachi while considering the application of M/s. Hamdosana Beverages Co., Karachi for registration of their Trade Mark "7 Spot" in class‑32 has dismissed the opposition filed by M/s. Seven‑Up Company, the appellant in this case, which was based upon the contention that numeral `T cannot be adopted by any other person as it conforms to the essential features of the appellant's trade mark "7‑Up". Opposition on similar grounds was filed by the appellant in Appeal No55/86 namely M/s. Canada Dry Corporation whose trade mark "Hi‑Spot" was earlier registered with the Registrar of Trade Marks.

3. The learned Assistant Registrar has found vide the impugned orders, both dated 9‑2‑1.986, that although the appellants in the two cases were proprietors of their registered trade marks "7‑UP" and "HI‑SPOT" respectively but the numeral "7" or the words "UP" or "SPOT" were open for registration separately. Reliance was placed by him on Parker‑Knoll Limited v. Knoll International Limited (1961 RPC 346). The learned Assistant Registrar also after taking into consideration sections 8(a) and 10(1) of the Trade Marks Act came to a conclusion that the trade marks of the respondents in the two appeals were not likely to cause any confusion to the customers. Although, according to him, numeral "7"' is common in the two trade marks namely "7 SPOT" and "7‑UP" or the word "SPOT" appearing in the two trade marks namely "HI‑SPOT" and "7‑SPOT" is common in the said trade marks but it was not desirable to compare the two trade marks bit by bit in regard to all their aspects. He further found that the said trade marks in question were easily distinguishable and even phonetically the said trade marks were dissimilar. Reliance in this respect was placed by the learned Assistant Registrar on the case of Smith Hayden & Coy., Ld. (1946) 63 RPC 97 wherein it had been observed as follows:‑ "Secondly, it was argued by Mr. Burrell that the Registrar had been influenced in his decision by the erroneous view that the word `Hovis' was, so very well known as to render confusion on that account less likely, so that the extent of protection to which Hovis, Lod., were entitled was, as it were, in inverse proportion to the notoriety of their mark. I have carefully read the passage in the Registrar's decision to which Mr. Burrell referred and, in my judgment, the Registrar did not in fact so misdirect himself. Where, as in the present case, the Opponents' mark has acquired a great reputation and is applied to goods of an everyday character, bought in shops by all classes of the population including children and uneducated persons, those are circumstances no doubt fairly to be taken into account in arriving at a just decision. I hope and believe that I have not disregarded them." Since, according to the learned Assistant Registrar, the goods involved in the present case were also of everyday character and the customers would ask for the drink of his own choice by its brand name out of different varieties of drinks, the Opposition filed by the respondent in the two cases was not well founded.

4. Mr. Khawaja Mansoor, learned counsel for the appellant has argued that "7‑UP" and "HI‑SPOT" being not only trade marks but also the respective trade names of the two appellants, the use of the essential features thereof are likely to cause confusion in the minds of the public or deceive them into believing that the goods of the respondent have business connection with those of the appellant. In this, according to the learned Counsel, the learned Assistant Registrar has completely ignored the provisions of Sections 10(1), 8(a) and 14 of the Trade Marks Act. Reliance was placed by the learned Counsel upon . the case of Jamia Industries Ltd. v. Caltex Oil (Pak) Ltd. (PLD 1984 SC 8). The facts of this case indicate that leave to appeal had been granted by the Supreme Court to the appellant in the case to examine the question, whether the refusal by the Deputy Registrar to register the appellant's trade mark with a device of five pointed star inside a crescent was justified and whether the High Court was correct in upholding the view taken by the Deputy Registrar. The Supreme Court after examination of the provisions of Sections 10(1) and 8(a) of the Trade Marks Act agreed with the view taken by the Registrar that the two trade marks in question in view of their common features which consisted of a device of star were similar and thus the competing trade mark came within the mischief and prohibition contained in sections 8(a) and 10(1) of the Trade Marks Act.

5. I find no force in the contention of Mr. Khawaja Mansoor. The provisions of sections 10(1) and 8(a) are to be read together and as is evident from the language used in section 10(1) it provides that "no trade mark can be registered in respect of any goods or description of goods which is identical with the trade mark belonging, to a different proprietor and is already on the register, 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." It is neither the contention of the learned Counsel that the trade marks "7‑UP" and "7‑SPOT" in any manner are identical or they even resemble each other in any material respects. The only argument of Mr. Khawaja Mansoor is that between the trade marks "7‑UP" and "7‑SPOT" that numeral "7" is common and between the marks "7‑SPOT" and "HI‑SPOT" the word "SPOT" is common. It may be pointed out that as has been held by the learned Assistant Registrar neither the numeral "7" nor the word "SPOT" have been separately registered as the respective trade marks of the two appellants. As to the question of confusion likely to be caused by the said trade marks the learned Assistant Registrar has rightly observed that the said trade marks are not identical from any angle, either visually or phonetically. Furthermore his observations that the popularity of the appellants' products viz. "7‑UP" and "HI‑SPOT" in this country, exclude the possibility of causing any confusion in the minds of the public also in my opinion, are not open to exception. The facts of the case decided by the Supreme Court and cited by Mr. Khawaja Mansoor are clearly distinguishable as the Registrar in the present case was dealing with products of everyday character and the customer would always order a drink of his own choice which he would select from among a variety of drinks available in the market. All the material aspects of the case have therefore been already examined by the learned Assistant Registrar and I wholeheartedly agree with him that the Opposition filed by the appellants in the case under the circumstances enumerated above was not justified.

6. In the result, I find no force in the two appeals and the same are dismissed but with no order as to costs. H.B.T./S‑825/R Appeals dismissed.