2020 PLP 604 (CLD)

SHAHID KARIM, J.

This application under section 80 of the Trade Mark Ordinance, 2001 (Ordinance, 2001) seeks the invalidation of the entry in Trade Marks Register regarding the Trade Mark No.247291 dated 03.03.2008 in Class-3 ("The Trade Mark"). The said trade mark belongs to respondent No.1 (trading as Hamza Cosmetics) (hereinafter, Hamza). In a nub, the case of the applicant is that the registration of the trade mark be declared invalid on the ground that the trade mark was registered in breach of section 14 of the Ordinance, 2001. Primarily the declaration of invalidity has been sought or the ground of section 80(3)(a) and (b) which provide that: "

80. Grounds for invalidity of registration.- (3) The registration of a trade mark may be declared invalid on the ground that there is- (a) an earlier trade mark in relation to which the conditions set out in subsections (1), (2) or (3) of section 17 obtain: or (b) an earlier right in relation to which the condition set out in subsection (4) of section 17 is satisfied, unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.

2. Section 17, in turn, is to the following effect: "

17. Relative grounds for refusal of registration.- (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for, are identical with the goods or services for which the earlier trade mark is registered. (2) A trade mark shall not be registered because- (a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is registered; or (b) it is similar to an earlier trade mark and is to be registered for goody or services identical with or similar to those for which the earlier trade mark is registered and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark. (3) A trade mark which- (a) is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered shall not be registered if or to the extent that, the earlier trade mark has a reputation in Pakistan and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier trade mark. (4) A trade murk shall not be registered if or to the extent that, its use in Pakistan is liable to be prevented- (a) by virtue of any law, in particular, the law of passing off, protecting an unregistered trade mark or other mark used in the course of trade: or (b) by virtue of an earlier right other than those referred in subsections (1), (2) and (3) or clause (a) of this subsection, in particular by virtue of the law of copyright design right or registered designs. (5) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier consents to the registration, (6) Where separate applications are made by different persons to be registered as proprietor respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar, if thinks fit, may refuse to register any of them until their rights have been determined by the High Court or a District Court.

3. The applicant contends that the trade mark of Hamza is identical with an earlier trade mark of the petitioner and resembles it in respect of the goods being marketed by the petitioner. The meaning of the term 'earlier trade mark' has been elucidated in section 18 of the Ordinance, 2001 and has been defined to mean a registered trade mark as per the Paris Convention which has a date of application for registration earlier than that of the trade mark in question. As adumbrated, the question at the heart of the challenge is that the trade mark of Hamza is identical with and similar to an earlier trade mark registered by the petitioner to the extent that the earlier trade mark has a reputation in Pakistan and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.

4. The facts are simple and may be stated shortly. The parties are on common ground with regard to a substantial portion of the facts. The applicant is a company registered under the laws of Kingdom of Thailand and is a global distributor of the world's leading cosmetics brands including but not limited to Tellme, Nature Bright, Sunway. Lawland, Effi'n, Elfi'. Promina cover Art and Arche'. The applicant is a worldwide agent of Arche products and its various brands of cosmetics which include Arche' Pure Thai Pearl Cream, Arche' White and Brite, Arche' White Pearl Cream etc. Paragraph 4 of the petition gives a list of the countries and the detail of the registration of Arche trade mark in the name of the applicant. In short, the applicant is the exclusive owner of the trade mark `Arche' and on this basis establishes its right over the intellectual property relating to Arche. The respondent No.3 is the authorized agent of the applicant in Pakistan and is responsible for marketing, selling or exporting its products in Pakistan. The applicant in its capacity as the exclusive owner of the intellectual property in Arche products applied for the registration of the trade mark 'Arche' in Pakistan on 11.05.1973 in respect of perfumery, lotions and other cosmetic goods falling in Class-3. The Registrar Trade Mark, Pakistan registered the following trade mark having registration No.58907 in the name of the applicant w.e.f. 11.05.1973:

5. The trade mark was renewed from time to time and lastly according to the contents of the application, w.e.f. 11.05.2009 for a period of ten years and continued to be registered in the name of the applicant till date. According to the applicant, vide application dated 26.3.2014 the applicant has further applied for the registration of trade marks for various other products in Class-3 and the process of registration of the trade marks is pending with the respondent No.2. During this time, the applicant became aware of the fact regarding registration of identical trade mark by Hamza for cosmetics products which is similar to the earlier trade mark of the applicant and resembles the said trade mark in material particular. The trade mark of Hamza was registered as trade mark No.247291 in Class-3 on 7.8.2014 w.e.f. 3.3.2008. The following is the pictorial depiction of the trade mark registered in the name of Hamza:

6. The applicant asserts that Hamza's trade mark is identical to the earlier trade mark of the petitioner in the following manner: i. The Respondent No.1's trade mark also contains the name of the Petitioners brand ARCHE' in English and Thai language as mentioned the Applicant's earlier registered trade mark. ii. The Respondent No.1's trade mark also contains the mark which is the exclusive intellectual property of the Applicant by virtue of its registered trade mark.

7. Thus, the trade mark of Hamza contains the name of the applicant's brand Arche in English as well as its transliteration in Thai language. The distinctive trade mark of the applicant which is the exclusive intellectual property of the applicant and which can be found above the word `Arche' (a hand curled in a distinctive style with three fingers pointing upwards and the index finger making a loop with the thumb) in the trade mark of the applicant can also be seen in the trade mark of Hamza.

8. The applicant takes strong exception to the registration of the trade mark in the name of Hamza which imitates the trade mark of the applicant and is being used in an identical cosmetic as that of the applicant and which results in the infringement of the trade mark of the applicant and the proprietary rights in the earlier trade mark. The trade mark is deceptive and is designed purportedly to deceive the public and is an attempt in bad faith to reap the benefits of reputation and goodwill of the applicant and consequently to harm the business interest of the applicant by adopting and imitating as identical trade mark. This has been done according to the applicant knowing well that the trade mark `Arche' is the property of the applicant and is a dishonest attempt to taint the proprietorship of Arche brand owned and marketed by the applicant.

9. It can be discerned from the facts brought forth above that the property in use of trade mark is indisputably that of the applicant. Thus, the case of the applicant is that the consistent use of the trade mark has become entrenched in the mind of the consumer and thus it will not be in the interest of the public to allow Hamza to use the mark, in connection with the goods in question. At this juncture, it would be relevant to refer to the definition of the word "mark" as defined in section 2(xxiv) of the Trade Marks Ordinance, 2001, which reads as under:- "(xxiv) "mark" includes, in particular, a device, brand, heading. label, ticket, name including person name, signature, word, letter, numeral, figurative elements, colour, sound or and combination thereof."

10. Thus, a mark includes a device, brand, name, word, letter, figurative elements or and combination thereof. Thus, a word, brand label or a figurative element taken alone would also be categorized as mark and any of these taken together in combination would also constitute a mark within the definition of the term given in the Ordinance, 2001. The trade mark of the applicant indeed carries a word namely `Arche' and a figurative element which has been artistically reproduced above the word 'Arche' and is a peculiar sign being made by hand. Below the word 'Arehe' mentioned in the English language there is a transliteration of the word in Thai and Siamese languages and which also constitute part of the mark which was got registered by the applicant. This can be seen upon a visual comparison of the mark registered by the applicant on 11.5.1973 and the one got registered by Hamza much later on 3.3.2008. The trade mark of Hamza resembles in material particulars with the trade mark of the applicant not only in the word `Arche' but also in respect of the figurative elements in the same manner as in the trade mark of the applicant. Thus, the colour scheme, design and getup of Hamza has an uncanny resemblance with the trade mark of the applicant and, prima facie, it seems that the right of the applicant as claimed by virtue of the registration of the features of the whole label i.e. colour scheme, design, getup etc. as also on account of the prior use of the trade mark is being infringed by registration of the trade mark in the name of Hamza. It cannot be argued by Hamza that either the mark is different from the mark of the applicant in respect of the label, word or figurative clement and thus there is no likelihood of confusion. It may also be noted and this is the basis of the rule laid down by respectable authority that when one feature of a label consisting of a combination of a mark is adopted or copied, infringement or copying of that feature takes place which ought to be rectified. Thus, when one or more of the essential features of a mark or a label is infringed, infringement as a whole takes place. See, for example, Cecil De Cordova and others v. Vick Chemical Co. (PLD 1951 Privy Council 108), Jamia Industries Ltd. v. Caltex Oil (Pak) Ltd. and another (PLD 1984 SC 8), Messrs Mehran Ghee Mills (Pvt.) Ltd. and others v. Messrs Chilton Ghee Mill (Pvt.) Ltd. and others (2001 SCMR 967) and Messrs Hilal Confectionary (Pvt.) Ltd. v. Messrs Naveed Enterprises and another (2018 CLD 1).

11. A reference may also be made to Messrs Burney's Industrial and Commercial Co. Ltd. v. Messrs Rehman Match Works (PLD 1983 Kar. 357) for the proposition of law settled therein that the first step in an infringement action is for the similarities and dissimilarities to be considered between registered trade mark and offending trade mark but the decision of the court does not depend upon the number of similarities and dissimilarities alone which is only one of the factors in reaching the ultimate decision. What is at the heart of the inquiry is that the offending mark is likely to deceive a person and the guiding rule is that the person will be deceived when he sees one trade mark in the absence of another and thus to the mind of an incautious or unwary purchaser the resemblance is likely to cause utter confusion. The observations of the Supreme Court of Pakistan in Jamia Industries Ltd. and a reference to Kerly on Law of Trade Marks and Trade Names, captures the essence of the inquiry: "The examination of reported cases indicates that a decision on the question whether a mark so nearly resembles another as to be likely to deceive or cause confusion is not an exercise of discretion by a Tribunal but a finding of fact. Kerly in his book Law of Trade Marks and Trade Names (1966 Edit.) at page 838 makes the following observations on the principles to be followed in comparing the two marks. "Two marks, when placed side by side may exhibit many and various differences yet the main idea left on the mind by both may be same. A person acquainted with one mark and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of ball, another mark may show players in a different dress, and in very different positions and yet the idea conveyed by each might be simply a game of football. It would be to much to expect that persons dealing with trade marked goods, and relying, as they frequently do upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollect of the whole. Moreover, variations in details might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."

12. Thus, according to the portion quoted in Jamia Industries Ltd., marks are remembered rather by general impressions or by some significant detail than by any photographic recollect of the whole. Moreover, variations in details might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own. Also while determining whether a mark bears resemblance to another mark and is likely to deceive, the underlying rule is to determine by considering what is the leading characteristic of each of these marks.

13. The marks of both, the applicant as well as Hamza, have been reproduced above and there is no doubt in the mind of this Court that the two marks resemble each other to such an extent that they are likely to deceive the mind of an unwary customer who will have to rely upon the leading characteristic of the mark of the applicant which characteristics are also comprised in and are part of the mark registered in the name of Hamza. Upon a visual comparison too the two marks are identical to each other and the mark registered in the name of Hamza has been registered for goods similar to those for which the earlier trade mark of the applicant was registered.

14. To reiterate the real question to decide in such cases is to see as to how a purchaser who must be looked upon an average mind of ordinary intelligence would look to a particular trade mark and what impression he would form by looking at the trade mark. Applying the aforesaid principles to the instant case, not only visual appearance of the two marks are similar but they also relate to the same products and thus an average mind of ordinary intelligence would consider the goods of Hamza as that of the applicant. Thus, the registration in the name of Hamza is likely to deceive or confuse the customers. Also the applicant is the exclusive user of the mark not only in Pakistan but equally in other countries and has acquired the proprietorship of the mark and lays a rightful claim to the intellectual property of the said mark.

15. The learned counsel for Hamza did not address oral arguments and sought to rely on the contents of the written statement filed by the respondent. A reading of the written statement does not bring forth any substantial defence having been put up by Hamza so as to stunt the challenge made by the applicant to the issuance of the trade-mark in favour of Hamza. It has merely been stated that the issuance of the trade mark was a legal and genuine document issued by the Registrar of Trade Mark after search made by him under section 27(2) of the Ordinance, 2001. In paragraph 12 of the written statement, it has been stated that: "In respect of pars No.12 Denied, the pronunciation of word "Arche" in Thailand is "Archoo" hence the claim of the applicant being owner "Arche" falls flat on the ground."

16. Thus, in the estimation of Hamza pronunciation of the word `Archie' is Archoo in the Thai language and on this basis the claim of the application is sought to be discarded. There is absolutely no merit in the assertion made by Hamza and it is not discernible as to how this gives a license to Hamza to use the trade mark Arche. Clearly the challenge to a trade mark does not depend upon the pronunciation of a word in a given language but it is other factors which have been narrated above. In paragraph 15 likewise, the following statement has been made: "In respect of para No. 15 Denied, that the respondent No.1 has adopted and used the identical trade mark (Arche) of the applicant, since this fact is to be proved through evidence, let the applicant prove it. The applicant has never been prevented by the Respondent No.1 to do his legal business."

17. Once again Hamza has simply denied that an identical trade mark is being used by it and has put the onus on the applicant to prove the fact.

18. During the course of the hearing the original record was produced by the office of the Registrar which shows the application of the trade mark made on 3.3.2008. A show cause notice was issued under section 27 of the Ordinance, 2001 to Hamza with specific reference to the trade mark registered in favour of the applicant priorly and on the basis of earlier conflicting trade mark. It cannot be gleaned from the record as to whether these proceedings culminated in an order passed by the Registrar or not. Be that as it may, the trade mark was registered ultimately and for whose invalidity the instant proceedings have been brought by the applicant.

19. In view of the above, this application is allowed. Trade mark registration No.247291 dated 3.3.2008 is declared invalid under the provisions of section 80(1) read with sections 14 and 14(4) of the Ordinance, 2001, and is struck off the Register of Trade Marks. The original record which was retained with the Court Associate of this Court vide order dated 13.11.2018 is handed over to the representative of the Trade Mark Department present in the Court. MWA/U-4/L Application allowed.