1989 PLP 1701 (CLC)

(2) That the learned Registrar has failed to apply correctly the provisions of the Act, particularly sections 10(1), 8(a) and 14(1) as he should have himself taken judicial notice in respect of the reputation and goodwill earned by the appellants through widespread sales, advertisements and consumption of their products bearing the trade mark "TOSHIBA".

6. The provisions of the Trade Marks Act, 1940, (hereinafter referred to as "the Act") relevant for the purpose of deciding this appeal are contained in sections 8(a), 10(1) and 14(1)of the Act and the same, for convenience of reference, are reproduced as under:‑ "

8. No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would‑‑ (a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice;" "10.‑(1) Save as provided in subsection (2), no trade mark shall be registered in respect of any goods or description of goods which are identical with a trade mark belonging to a different proprietor and in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion:' "14.‑(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous to registering it shall apply in writing to the Registrar in the prescribed manner, and subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit."

7. A plain reading of sections 8(a) and 10(1) of the Act makes it clear that although the object of the two sections may be common in many respects but their scope is different. The difference between the two has been well declined by

1. Mahmud, J (as he then was) in Glaxo Laboratories' case (PLD 1977 Kar. 858). "The distinction between the two subsections", said the learned Judge, "is that under section 10(1) of Trade Marks Act, 1940 the opponent may rely purely on A his statutory right obtained by registration of his trade mark and no user of the trade mark need be shown by him. Under this section, the question of likelihood of deception or confusion becomes purely, a question of comparison of the trade marks themselves for similarity; whereas, under section 8(a), the opponent, who alleges similarity of the marks must further show that having regard to his user, the use of the mark by the applicant for registration for the same goods would be likely to deceive or to cause confusion".

8. Admittedly, the appellant failed to lead evidence in support of its case. Mr.Shaukat Ali has, however, argued that the learned Registrar should have taken suo motu notice in regard to the reputation that the goods of the appellant enjoyed, both internationally and in Pakistan. Although to some extent Mr. Shaukat Ali is correct as a duty is cast upon the Registrar to thoroughly examine trade marks before their registration. 1t was said in the case of Pianotiest Company Ltd. (1906) 23 R.P.C. 774). "....You must take the two words. You must judge of them, both of their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all these circumstances, you come to the conclusion that there will be a confusion that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public, which will lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that case". It is, however, to be seen to what extent such test was applied by the learned Registrar.

9. There is no contest on the point that the trade marks of the appellants and the respondents are phonetically similar. However, no evidence has been led by the appellants that they cover goods of the same description. It was held in Australian Wine Importers' case (1889) 41 Ch.D.278) that the question whether the goods are of the same description cannot be decided by reference merely to the Registrar's classification. In Panda's case (1946) 63 R.P.C. 59), according to Romer, J. the following matters are to be taken into consideration to determine the question "(a) nature and composition of the goods; (b) the respective uses of the articles; and (c) the trade channels through which the commodities respectively are brought and sold." Admittedly, no such evidence was produced before the Registrat. However, in The Seven‑uo Co.' USA v Abdul Aziz Noon Muhammad PLD 1976 Kar. 895, while referring to the question of onus, it was observed by Dorab Patel, J. (as he then was) as under:‑ "Secondly, what is the precise nature of the burden of proof on a person seeking registration under section 8? If the trade mark is sought to be registered for the class of goods for which an identical, or, similar trade mark has been registered, then the burden of justifying registration is obviously on the person seeking registration. But would the burden of proof still be on the person seeking registration, if registration is sought for a class of goods different from that for which the opponent's trade mark has been registered? On the one hand, section 8 of the said Act does not draw any distinction between classes of goods, but, on the other hand, a statute has to be read as a whole, and section 5 permits the registration of a trade mark only for a class, or, classes of goods; therefore, a point, which requires examination., is, whether the burden of proof under the section would remain on the person seeking registration, even when the registration of the trade mark is sought for a class of goods different, or very different, from the class of goods for which the opponent's trade mark has been registered. It is necessary to emphasise this point, because it could not arise for determination in the Eno's case, as the appellant had withdrawn its registration under the English Patents, Designs and Trade Marks Act. But I would also refrain from examining this point because no arguments were advanced. However, it will require examination sooner or later." Admittedly, the trade mark of the respondents was sought to be registered for the same class of goods for which a similar trade mark was already registered by the learned Registrar. The question, therefore is, whether the burden of proof would still be on the appellants to establish that registration of the respondents' mark was likely to cause deception to the unwarry purchasers. Although for establishing that the goods of the applicant and the opponent arc goods of the same description or there is any trade connection between them, the onus would be on the opponent but when admittedly, the applicant is seeking registration for the same class of goods for which the Registrar has already registered the same or similar trade mark, then, in my view, the burden would be on the‑applicant to show that no deception was likely to be caused by registration I of his trade mark. I am fortified to some extent in my view by the case just referred to by me above. Besides that Rules 23 and 24 of the Trade Marks Rules of 1963 also place the initial burden in this respect on the applicant. There is nothing in the Rules to indicate that after the opponent enters into opposition the burden would entirely shift to him and the applicant would be completely I absolved of his responsibility.

11. However, I find that the learned Registrar has already considered all the relevant questions and after doing the same, he was convinced that there was no likelihood of any confusion being caused in the mind of the public since the trade nark of the respondents is in Urdu and the same has been used without any let or hindrance since 1978. Moreover, according to the learned Registrar, similar goods of the respondents are not in the market. Consequently, according to the learned Registrar the question of confusion did not arise. Needless to say that the findings of the Registrar can only be interfered with when the same are found to be absurd or perverse which does not appear to be the case here. Moreover, the learned Registrar has allowed registration of the mark subject to certain conditions which, in my opinion, can reasonably safeguard the interest of the appellants.

12. For the aforesaid reasons, the appeal is dismissed and the order passed by the learned Registrar is maintained. There will, however, be no order as to costs. H.B.T./K‑132/K Appeal dismissed.