1993 PLP 1222 (MLD)

Abdul Hamid Iqbal for Appellant. Date of hearing: 15th December, 1992. This order would dispose of Misc. Appeals No.27/92 to 32/92 as they are filed by the same appellant viz Major League Baseball Properties Inc. against the Assistant Registrar of Trade Marks, Karachi. The appellant moved six applications before the Registrar of Trade Marks, Trade Marks Registry, under section 14 (1) of the Trade Marks Act, for registration of certain trade marks in Category No.25 in respect of clothing, footwear, head gear, knitwear. However, the trade marks were different in each of the applications. In the application covered by MA. 27/92 the appellant sought registration of trade mark SD. In the application covered by MA. No.28/92, the appellant sought registration of trade mark KC. In the application covered by MA. No. 29/92 the appellant wanted registration of trade mark NY. In the application covered by MA. No.30/92, the appellant applied for registration of trade mark NY written in a different way than said letters written in application covered by MA. No. 29/92. In the application covered by MA. No.31/92 the appellant applied for registration of trade mark LA. In the application covered by MA. No. 32/92, the appellant sought registration of trade mark SF. After receipt of these applications in the Trade Mark Registry, a notice was issued to the appellant in each of the applications to show cause as to why the application should not be refused on the ground that the applied mark was objectionable under Section 6 (1) (e) of the Trade Marks Act. The notices were replied on behalf of the appellant by United Trades Syndicate. After hearing the parties on 28‑3‑1991 the Trade Mark Registry informed the appellant under letters dated 11‑4‑1991 that his applications had been refused registration under an order dated 4‑4‑1991. In each of the cases the appellant applied for grounds of decision which were given in identical terms. Hence these appeals. Mr. Abdul Hamid Iqbal, learned counsel for the appellant argued that in each of the cases there was combination of two letters in logo and that such Trade mark was distinctive mark. Referring to the grounds of decision, learned counsel for the appellant argued that in the present case two letter marks can be registered because they were in logo form and were not m an ordinary form as commonly written. In this respect learned counsel cited the case of KIA Industrial Co. Ltd and KIA Motor‑Cycle Co. Ltd. v. The Deputy Registrar of Trade Marks 1987 CLC 1286 where a mark consisting of device of broad black incomplete circle with a line jutting inside downwards from the right upper side was held to be registrable although its registration was refused by the Deputy Registrar Trade Marks on the ground that it was letter Q . Learned counsel for the appellant further argued that the applied trade marks consisted of letters in logo and they did not indicate name or signature or any word and as such evidence about distinctiveness was not necessary. Reference was made to Rule 111 (e) of Trade Marks Rules where restriction was put on registration of a mark consisting of fraction or letter fraction having less than three digits together and it was argued that such restriction applied to textile goods but not to footwear. Learned counsel also relied on an English. decision in the matter of applications by W. & G DU Cros LD (29) RPC

65. It was argued that the appellant was ready for disclaimer under Section 13 of the Trade Marks Act. Mr. Muhammad Abbas Khan, Assistant Registrar Trade Marks vehemently contested all the appeals and argued that the combination of two letters of English language was by no stretch of imagination a distinctive mark for the purposes of clause (e) of subsection (1) of Section 6 of the Trade Marks Act. The Assistant Registrar cited the cases of Standard Oil Company, USA (PLJ 1973 1973 Tr. C. 30 (Trade Marks), and Exxon Corporation, New York, U.S.A. v. Registrar of Trade Marks, Government of Pakistan, Karachi PLD 1977 Kar.

781. In the case of Exxon Corporation, New York, U.S.A. PLD 1977 Kar. 781, it was held that the mark "Esso" is a phonetic rendering of letters "S.O:" and that said mark being phonetic combination of alphabetical letters was not registrable under clause (c) of subsection (1) of section 6 except upon evidence of its distinctiveness. In the case of Standard Oil Company PI.J 1973 Tr.C. 30 (Trade Marks) where it was held that the word "ESSO" is equivalent to the letters "S.O." and as such the former cannot be registered without evidence of user and distinctiveness. According to subsection (2) of Section 64 of the Trade Marks Act the registration of letters or numerals or any combination thereof in respect of any textile goods, shall be subject to such conditions and restrictions as may be prescribed. Said provisions are to be read with clause (e) of Rule 111 of Trade Marks Rules. Clause (e) of Rule ill says that in respect of textile goods any fraction or letter fraction having less than three digits together, shall not be capable of registration. In respect of textile goods, clause (b) of Rule 111 says that a trade mark consisting of a single letter or any combination of letters or more than six letters not being a balanced numeral, shall not be capable of registration. The provisions just discussed, however, apply to textile goods and it was contended on behalf of the appellant that footwear or boots covered by class 25 are not textile goods. The terms "textile goods" has been defined by Rule 99 of the Trade Marks Rules. Rule 99 of Trade Marks Rules says that the "Textile goods" to which Chapter IX of Trade Marks Act applies and to which said rules apply, shall be Classes 22 to 27 of the Fourth Schedule below said rules. Class 25 below Fourth Schedule mentions "clothing including boots, A shoes and slippers". This shows that for the purpose of application of Trade Marks Act and the Trade Marks Rules the clothing, boots, shoes and slippers are textile goods. This is complete reply to the contention that footwear are not textile goods. In view of this discussion and in view of the bar contained in clause (e) of Rule 111 of Trade Marks Rules and subsection (2) of Section 641 of Trade Marks Act, the applied marks were not registrable. In the case of KIA Industrial Co. Ltd and KIA Motor‑Cycle Co. Ltd. 1987 C L C 1286 the applied mark was a black non‑descriptive circular geometrical design with a jutting projecting from the centre to the top of the circle at a slant to the right, which was held to be not English letter "Q" but a distinctive and .eye‑catching mark which could easily be remembered because of its unusual characteristics. In the instant case it is nobody's case that each of the applied marks consists of any thing other than two letters of English language. Hence the cited case is distinguishable. Moreover the applied mark in the cited case was in respect of vehicles etc. and not in respect of textile goods, for which certain restrictions exist. In the English case of W & G DU Cros LD (29 RPC 65) the applied mark consisted of two forms, one in script with a peculiar tail to the letter "G" and one in block letters and the mark in script with a peculiar tail to the letter `G' was allowed to be processed for registration for motor vehicles. In the cited case the applied trade mark consisted of two letters. joined by the symbol `&'. In the instant case the applied marks did not contain symbol like `&'. Since the applied marks were not registrable, the willingness of the appellant for disclaimer under Section 13 of 8 the Trade Marks Act is of no consequence. For the foregoing reasons I dismiss all these appeals with no order as to costs. A.A./M‑179/K Appeal dismissed.