P L D 1993 Karachi 144 (PLP)

This is appeal under section 76 of the Trade Marks Act (hereafter mentioned as the Act). On 1-4-1986 appellant American Telephone and Telegraph Company moved an application under section 14(l) of the Act, before the Registrar of Trade Marks at Karachi for registration of its trade mark "A T & T" in respect of all goods included in Class

9. The Registrar issued show-cause notice to the appellant, calling upon him to show-cause, as to why his application should not be refused under sections 10(l) & 8(a) of the Trade Marks Act, for being in conflict with a previously registered trade mark "L/TTT" bearing application No.37462 for electrical apparatus and instruments etc. The Registrar also raised ' objection to the effect that the applied mark per se was not distinctive in terms of the provisions contained in section 6(l)(e) of the Act. Said show cause notice was replied and the stand taken was that the applied mark was both visually and phonetically distinct from the registered mark, which comprised of mere letters T T T as against the former mark which was pronounceable as "A T E T" and which cannot be confused with the letters of registered mark. It was added that the two marks were readily distinguishable from each other with regard to the idea and sound and they cannot be confused with each other in the course of trade and their first and third letters were different. Referring to section 6(l)(e) of the Act, the appellant stated in his reply that the applied mark besides comprising of alphabets or letters is a distinctive pronounceable word mark, pronounced as ATET/ATT and as such register-able under section 6 of the Act. Applied mark was adopted by the appellant to distinguish his goods from goods of the other traders, as per the appellant. Applied mark "ATET" was sought to be registered in respect of telecommunication. equipment, computer software, computer and computer related goods and semi-conducter products failing in Class

9. During the sourse of arguments before the Registrar on 7-3-1990, the appellant agreed to disclaim letter "T". Consequently on 15-3-1989 the appellant applied for amendment of the mark in form TM-16. By way of amendment the appellant added device of globe to the letters A T & T. The Registrar took objection on 6-3-1990 that the application for amendment of the applied mark, was not in the official file. Upon this, a copy of the same was supplied on 10-3-1990. . Without deciding the application for amendment of the applied mark the. Registrar under his order dated 30-4-1990 refused to register appellant's application for registration and gave the -grounds of decision on 17-1-1991. Hence this appeal. Notice of this appeal was issued to the Registrar of Trade Marks, but none appeared for him. On behalf of the appellant I have heard Mr. Abdul Hameed Iqbal. Learned counsel for the appellant argued that the appellant sought amendment of the trade mark and wanted to add device of globe to the letters A T & T and that the applied trade mark was advertised by the Registrar in the Trade Marks Journal dated 1-6-1982 under section 15(l) of the Act and that after acceptance of the device of globe the Registrar could not have rejected the application. It was next argued that the Registrar should have considered the mark in the amended manner and form and not merely as "A T & T" without any space between A & T. It was also argued that the Registrar had not carefully read file of the case and had failed to take into consideration the fact that the applied mark was a composite mark comprising of Globe design with A T & T and not merely A T & T. Perusal of the grounds of decision dated 17-1-1991 shows that the Registrar Trade Marks has not considered the amendment sought by the appellant on 15-3-1989 under application in form T M-16. The impugned grounds of decision are based on the assumption that the applied trade mark was prima facie of letters AT & T and being constituent of three letters was not distinctive mark in terms of section 6(l)(d) of the Act. In the case of David Vaughan Racklin v. Deputy Registrar of Trade Marks (1986 MLD 1666) it was held by Nasir Aslarn Zahid, J. (as his Lordship then was) that in case the Registrar, Trade Marks finds that the trade mark applied for and the trade marks already registered in names of other firms, are confusingly similar, the application for registration of trade mark should not be rejected at preliminary stage, but the Registrar has to proceed with the application after notice to holders of Registered Trade Marks and after publication of the applied mark. In the instant case no notice appears to have been issued to proprietor of the trade mark TTT or to proprietor of any other mark. The Registrar should have considered if the applied trade mark, after amendment, was covered either by clause (e) or by clause (d) of section 6(1) of the Act. As a result of above discussion, the impugned order as well as the grounds of decision are set aside and the matter is remanded to the Registrar of Trade Marks for proceeding according to law. In the first instance the Registrar is required to decide the application for amendment of the applied mark after hearing all the concerned parties. Then he has to act in accordance with the observations made in the case of David Vaughan Racklin (1986 MLD 1666). The appeal stands decided in the aforesaid terms with no order as to costs. AA./A-1314/K Order accordingly.