P L D 1977 Karachi 781 (PLP)

2. Mr. F. W. Vellani, the learned counsel for the appellant contended that mark ESSO was wrongly refused to be registered by the Registrar for the following reasons : (i) ESSO was an invented word and, therefore,' registrable as of right under clause (c) of subsection (1) of section 6 of the Trade Marks Act, 1940. (ii) ESSO was a distinctive mark and, therefore, registrable under clause (e) of subsection (1) of section 6 of the said Act and, assuming without admitting that the mark was long equivalent of letters S and O, it was registrable upon evidence of distinctiveness which was on the face of it available for admittedly the mark ESSO has been registered in this country nine times over in last twenty‑two years. (iii) That the appellant was prepared to disclaim the letters S and O under section 13 of the Act which would obviate any apprehended danger of confusion and also protect the rights of persons bona fide entitled for the use of these letters.

3. The first contention of the learned counsel that the word "ESSO" is an invented word has been adequately and sufficiently answered by the Registrar. A word representing phonetically the names of letters, not themselves registrable, is not an invented word. The mark "ESSO' is a phonetic rendering of letters "S. O." and indeed it is so intended to represent these letters for they are the initial letters of the appellant‑Company's name. Mr. Vellani, the learned counsel for the appellant was kind enough to, invite my attention to a recent decision relating to mark "ESSO" reported in 1972 R P C

283. In this case the appellant‑Company applied for the registration of the Trade Mark "ESSO" in part B of the Register under the provisions of section 20(1)(6) of the Trade Marks Act in England in class 12' in respect of -- "tyre for vehicle wheels ; parts and fittings included in class 12 for land vehicle and for water craft." The application was rejected by the Registrar but partly allowed in appeal. In England a mark may be registered under part 'A' or part 'B' of the Act, the former is under section 9 which is equivalent to our section 6 and, the latter is under section 10 for which we have no parallel in our Act. The distinction between the two registrations is, according to Kerly on pages 153 and 158 of his treatise on Trade Mark Law, is as follows:‑ "It will be apparent on comparing section 10 with section 9 that so far as registrability is .concerned, the differences between part A and part B are (1) that in former the mark must be 'adapted to distinguish,' and in tire latter 'capable of distinguishing' (the context being virtually identical) ; and d2) that in the case of names, signatures or words which do not fall within paragraphs (a) to (d) of section 9 (1). so that registration in part A can only be granted upon evidence of distinc tiveness, such evidence is not required for part B if it is possible without evidence to satisfy the tribunal that the mark is capable of distinguish ing the goods. Applications for registration in part B are rare most part B registration arise from the practice of allowing registration in part B of marks which are border‑line cases for registration in part A 'either unused marks, which just fail to be inherently distinctive in the sense of section 9, or used marks, for which the evidence of distinctiveness is just insufficient for part A," In the case: referred to above it is significant that the appellant did not apply for the registration of the mark under section 9 as an invented word but under part B as capable of distinguishing.

4. It is the second contention of the learned counsel which has given me some anxious moments. It :gas argued firstly that the Registrar should take notice that on not less than 9 occasions the mark "ESSO" has been registered as a trade mark in this country in last 22 years in different classes which would go to demonstrate that it was a distinctive mark. Now to begin with a distinctive mark i. e. a mark adapted in relation to goods in respect of which a trade mark is proposed to be registered to distinguish. with which the proprietor of the trade mark is certainly registrable under clause (el of subsection (1) of section

6. However, according to this very clause if the distinctive mark is a word which does not fall within the description of any of the previous clauses of this section, its registration is conditional upon evidence of its distinctiveness. Mr. Vellani again referred to 1972 R P it 283 in which according to him the mark was held to possess inherent capacity to distinguish and therefore, a distinctive mark. The observations to this effect are of little assistance to the learned counsel for his Lordship was consi dering the application of registration of a mark under part B and not under section 9 of the English Act which is equivalent of our section

6. I am even otherwise doubtful if the learned Judge has gone that far for there would have been no occasion. If this view had prevailed with him, to allow the application to proceed in respect of tyres for vehicle wheels having regard to the undoubted evidence of the extent of the appellant's activities in the motoring field and having regard to their registration covering fillers for use in the manufacture of rubber and artificial but not in respect of parts and fittings including in class 12 for land vehicles and water craft, for these covered, according to the learned Judge, altogether too extensive field. "The conclusion appears to be irresistible that the mark being phonetic combination of alphabetical letters was registrable under clause (c) of subsection (1) of section 6 only upon evidence of its distinctiveness. The argument: however, was that this evidence was clearly available for the mark "ESSO" has been registered and in use in clauses (1), (4) and (5) for over 24 years in this country but the Registrar has altogether ignored this aspect of the matter. The criticism is, to be fair to the Registrar, not justified, for this contention has been expressly repelled by him as not tenable as distinctiveness is to be considered only in respect of class and goods for which the registration of the mark is sought and the registration of the mark in other classes and for other goods, it has been observed by the Registrar, cannot be of any assistance in securing registration of the mark in the instant application which has been made to a different class and for altogether different goods. These remarks of the Registrar find support as was contended by Mr. Thakur, the learned counsel for the Department, in the observations of Kerly at page 145 that:‑ "A tribunal considering the question of distinctiveness must consider all the circumstances in particular the area and the period of use." I may here recall that in OGEE's case Sargeant, J., allowed the registration of the mark Ogee partly because he thought that the long user of the word and its previous registration in other classes bad made the word distinctive of the applicant's goods but the Court of Appeal while allowing the appeal dissented from this view. At the most Mr. Vellani can rely on 1972 ESSO's case referred to above in which the learned Judge proceeded to grant registration so as to cover those categories of goods falling within the specification of the application before him which can on reasonable basis be said to be fairly closely allied, to the pre‑existing fields of the applicant's activities. Though this case is strictly speaking not relevant to the present case for these registration was sought under part 'B'. I have examined the classes covered by the existing registration in favour of the appellants, namely, 1, 4 and 5 and class 17 to which the instant application relates and find that there is very little common between them. Mr. Vellani contended that the previous registration cannot altogether be ignored to which the short answer is that they refer to altogether different classes of goods and even otherwise in the instant case the appellant bad admittedly no evidence of distinctiveness in relation to the goods in respect of which the mark was proposed to he registered which alone would justify its registration.

5. The third contention relates to disclaimer of the letters S and O. First of all such a disclaimer was not offered before the Registrar. Secondly. Sargeant, J., who allowed the appeal and registered the word "Ogee" with of disclaimer of any right by virtue of registration to the exclusive right of the use of the letters O and G was expressly overruled by the Court of Appeal in the following words:‑ "That disclaimer seems to me in no way to improve the applicant's position. A firm whose initials are 'O' and 'G' letters would be troubled by the registration of Ogee. and the risk of confusion on the part of the public would still exist."

6. Before I part, I must refer to the argument of Mr. Thakur, the' learned counsel for the Department that there was no absolute right to' registration of mark under section 14 (1) of the Act which says that the' Registrar "may refuse application" and this Court will not interfere with the discretion of the Registrar which is of a special tribunal unless it is shown. that he has clearly gone wrong or that his decision is arbitrary and capricious (P L D 1974 Kar. 136). Having examined the same at length I am satisfied that the discretion vested in the Tribunal has been rightly exercised and the mark of the appellant rightly refused.

7. This appeal is, therefore, dismissed but in the circumstances there will be no order to as to cost. S. Q. Appeal dismissed.