1988 PLP 936 (MLD)

This Miscellaneous Appeal under Section 76 of the Trade Marks Act, 1940 is directed against the order of learned Registrar of Trade Marks, Karachi dated 12‑9‑1983.

2. The brief facts leading to this appeal are that the respondent filed an application bearing No. 70197 in Class‑2 for the registration of their mark "ROBBIALAC" alongwith letters" V.I.P. "which was advertised in the Trade Marks .Journal without disclaimer of letters "V.I.P." The appellant filed opposition to the registration of the said trade mark on the ground that his earlier application for registration of mark 'V.I.P.' for his goods in Class‑2 had been rejected by the learned Registrar on 15‑11‑1976 in opposition No. 44/1972 on the ground that letters 'V'.I.'P'. were not distinctive or descriptive. The appellant also filed an application at serial No. 73310 in Class‑2 for registration of label comprising of monogram with letters" V.I.P." which was opposed by the opponents on the ground that their mark had already been advertised m the Trade Marks Journal of December, 1981. On the opposition of the appellant the earned Registrar imposed disclaimer of the letters "VIP" holding that the letters 'V.I.P.' were to remain open for all the traders irrespective of the fact that how far and how long the letters have been used along with other distinctive features.

3. The learned Registrar also rejected the objection of the Respondents that by registration of the mark of the appellant any confusion would be created in the market. In his opinion, in view of the fact, that disclaimer had been imposed on the letters 'V.I.P: in the mark of the respondent, therefore, no confusion would be created. He, however, rejected the application for registration of the appellant's mark on the ground, that after disclaimer of letters 'V.I.P.' what remained on the label was the monogram which only had a real descriptive and no phonetic value. In his opinion, under such circumstances, the mark of the appellant in the market would be called with the disclaimed part which would be against the purpose and spirit of imposing disclaimer.

4. I have heard Mr. I.M. Patel learned counsel for the appellant and Mr. Shujaat Ali learned counsel for the respondent. The facts of the case are not disputed. Both the parties sell the same kind of goods in the market. The mark of ,the respondent consists of two words namely, word 'ROBBIALAC' and letters "V.I.P.", whereas the mark of the appellant consists of monogram and letters "V.I.P." Admittedly mark bearing word "ROBBIALAG7 had already been registered for the goods of the opponent under Registration Nos. 7398, 40189 and 57761. Mr. I. M. Patel Learned counsel for the appellant argued that in such circumstances the only other mark that would be registered was letters V.I.P. and as such the case of the respondent for the registration of his mark is not distinguishable from the case of the appellant. Mr. Shujaat Ali learned counsel for the respondent, however, argued, that the mark which has been registered is for superior quality of the same kind of material for which mark word 'ROBBIALAC' had earlier been registered. He further contended that if the consumer wanted to obtain superior quality he would ask for 'ROBBIALAC' V.I.P. and not for 'V.I.P: alone and as such the conjunctive use of two words distinguished the material which was required by the customer. It is further submitted that there is no distinctive feature with regard to the mark of the appellant, because his monogram has no phonetic significance and his goods can only be sold in the market in the name of V.I.P. which is bound to raise confusion in the mind of customers in spite of disclaimer by the appellant. It is further submitted that if the goods are sold with only mark 'V.I.P.' then the people are likely to be confused that it was 'ROBBIALAC'V.I.P.

5. It may be pointed, that in his appeal the appellant has not prayed for the cancellation of the registration of the mark of the respondent, but has only prayed that his mark Application No. 73310 be registered with the disclaimer of letters W.I.P'. The main objection to this registration in the opinion of the learned Registrar was that as the mark of the appellant had no other distinctive or phonetic feature, it shall be called by the name V.I.P. alone in spite of the disclaimer of the said letters which was against the purpose and spirit of the word 'disclaimer'. Considering the submissions of the learned counsels I do not find any ground to disagree with the view of the learned Registrar. As pointed above, he has kept open the use of letters V.I.P. for all the traders, but it is to be used with some other distinctive features. I accordingly find no merits in this appeal which is dismissed. However, it will be open to the appellant to apply again for registration of the mark if be used any other distinctive features alongwith the letters W.I.P'. In the circumstances of the case the parties are directed to bear` their own costs. AA./M‑558/K. Appeal dismissed.