IN THE HIGH COURT OF SINDH AT KARACHI
M.A. No.34 of 2004
J U D G M E N T
Date of hearing: 03.03.2010 and 4.3.2010.
Appellant: JATCO Kabushiki Kaisha through Ms.Amna Salman, Advocate.
Respondent: Registrar of Trade Marks through Mr.Salim Ghulam Husein, Advocate.
MUHAMMAD TASNIM, J : This appeal under Section 76 of Trade Marks Act, 1940 (hereinafter called the Act), has been filed against the impugned order dated 7.1.2004 passed by the respondent on the application made by appellant for registration of trade mark JATCO applied under Application No.152196 in class-12 in respect of specification of goods, namely, automobiles, buses, clutches for land vehicles, converters for land vehicles, trucks, electric vehicles, wagons, water vehicles being goods included in class-12. The operative part of the impugned order dated 7.1.2004 is reproduced below:-
“Heard the Advocate. The two requests on formTM-16 dated 29.11.2001 and 2.11.2002 are allowed. It is admitted position that the goods auto parts are registered under the cited registered mark JACO vide No.102021, the objection under section 8(a) and 10(1) are still maintained as the appellant’s mark is proposed to be used; hence application under No.152196 in class-12 is refused registration under section 10(1) and 8(a) of the Trade Marks Act 1940.”
2. The facts leading to this case are as under:
3. The appellant had filed the above mentioned trademark application on 31.12.1998 for goods falling in class 12 of the 4th Schedule of the Act, in respect of the goods, namely, automobiles; buses; clutches for land vehicles; converters for land vehicles; motor cycles; transmission for land vehicles; trucks; electric vehicles; wagons; water vehicles. The appellant’s application was granted being No.152196 in class 12 and after examination a show cause notice was issued by the Trademark Registry (hereinafter called the Registry) dated 21.10.2000, where it objected to the registration of subject mark under Sections 10(1) & 8(a) of the Act on the basis of an earlier registered trademark JACO under registration No.102021 in class 12 for auto parts. A reply to the above show cause notice was submitted on 16.3.2001. Due to subsequent change in name and address of the appellant, he moved a request for the same alongwith supporting papers vide letter dated 20.11.2000 for recordal of change of name and address of the appellant. The Registry thereafter issued another show cause notice vide letter dated 21.10.2000 and same was replied to by the appellant vide letter dated 30.5.2001.
4. After considering the reply to show cause notice as unsatisfactory the Registrar of Trademarks delegated the said case to Assistant Registrar of Trademarks to hear and decide the matter. The matter was fixed for hearing and was heard on 31.10.2001. During the course of arguments the Assistant Registrar directed the appellant to amend the specifications of goods as to add words “excluding auto parts” in the application. In compliance to the aforesaid direction of the assistant Registrar, appellant filed a request for amendments of goods, which excluded the goods “spare parts”. The case was again heard on 31.01.2002 and was reserved for orders, thereafter the Registry vide its letter dated 22.5.2002 intimated the appellant that the aforesaid application has been refused.
5. An appeal was preferred against the order dated 22.5.2002 in this Court being M.A. No.39 of 2002, and the matter was remanded to the Registrar vide order dated 11.8.2003 for fresh consideration of the grievances of the appellant.
6. The matter was again heard and the appellant argued that if his request for amendment of specification of goods was allowed the goods for the competing marks will become different. After hearing the case was reserved for orders. Thereafter, the Registry vide its letter dated 16.2.2002 intimated the appellant that his request for deletion of goods “Auto Parts” was allowed, however he vide impugned order informed that the application of the appellant for registration of mark JATCO was refused registration, hence this appeal against order dated 7.1.2004
7. I have heard Ms. Amna Salman, learned counsel for the appellant, and Mr. Salim Ghulam Husein, learned counsel for the respondent, and have examined the record, written arguments filed by the respective parties and have also gone through the case law cited by them.
8. Ms. Amna Salman, learned counsel for the appellant, has made the following submissions:-
i) That the application for registration of trademark JATCO has been rejected at the preliminary stage without issuing notice to proprietor of trademark concerned whose trademark was deemed to be similar to trademark applied for.
ii) That the Registrar of Trademark has wrongly applied and interpreted the provisions of Section 8(a) of the Act in violation of rule laid down by the Hon’ble Supreme Court of Pakistan in the case of SEVEN-UP COMPANY VS. KOHINOOR THREAD BALL FACTORY AND OTHERS (PLD 1990 SC 313).
iii) That the registrar had not acted within his jurisdiction but has wrongly invoked Section 10(1) of the Act.
iv) That the impugned order has been passed without any reason in violation of Section 24-A of the General Clauses Act.
v) That the Registrar has acted mechanically without applying his independent mind to the case and has ignored the submissions made by the appellant before him and impugned order has been passed arbitrarily.
9. In support of her above submissions learned counsel for the appellant has relied upon the cases reported as (1) THE ASSISTANT REGISTRAR OF TRADE MARKS, KARACHI VS. M/S. LAKSON TOBACCO COMPANY LTD (1992 SCMR 2323), (2) M/S. COLGATE-PALMOLIVE (PAKISTAN) LTD. VS. ASSISTANT REGISTRAR OF TRADE MARKS (PLD 1992 Karachi 15), (3) DAVID VAUGHAN RACKLIN VS. DEPUTY REGISTRAR OF TRADE MARKS, KARACHI (1986 MLD 166), (4) AZAD FRIENDS & COMPANY (PVT) LTD. VS. DEPUTY RGISTRAR OF TRADE MARKS (NLR 1993 AC (Civil) 396) and SEVEN-UP COMPANY VS. KOHINOOR THREAD BALL FACTORY AND OTHERS (PLD 1990 SC 313).
10. As against the above Mr. Salim Ghulam Husein, learned counsel for the respondent, has submitted as under:
i) That the Registrar of Trade Marks has rightly rejected the application of appellant without advertising or inviting opposition from the registered trade mark.
ii) That the Registrar Trademarks has rightly invoked the provisions of Section 8(a) of the Act while rejecting the application summarily.
iii) That the Registrar has acted within his jurisdiction and has acted in accordance with law while passing the impugned order by invoking Sections 10(1) and 8(a) of the Act.
11. In support of above submissions learned counsel for the respondent has relied upon the cases reported as (1) PHILIPS MORRIS INCORPORATED VS. LAKSON TOBACCO COMPANY LTD. AND ANOTHER (PLD 1986 Karachi 482), (2) ERWIN MULLAR GMBH & CO. VS. ASSISTANT REGISTRAR OF TRADE MARK (2008 CLD 1003), (3) TRANSPAK CORPORATION LTD. VS. THE REGISTRAR OF TRADE MARKS (1991 MLD 658), (4) KERLY’S LAW OF TRADE MARKS AND TRADE NAMES (Fourteenth Edition 2007), (5) LAW OF TRADE MARKS & PASSING OFF P. NARAYANAN (Fifth Edition, 2000), (6) LAW OF TRADE MARKS & PASSING OFF P. NARAYANAN, (Fifth Edition, 2000), (7) KERLY’S LAW OF TRADE MARKS AND TRADE NAMES (Eleventh Edition Para 4-07 Page 29), (8) LAW OF TRADE MARKS & GEOGRAPHICAL INDICATIONS BY K.C. KAILASAM AND RAMU VEDRAMAN (2003 Edition Page 223), (9) UNI LEVER PLC. VS. AL-AMEEN INDUSTRIES (2003 CLD 623), (10) TRANSPAK CORPORATION LIMITED VS. THE REGISTRAR OF TRADE MARKS (1991 MLD 658), (11) THE LAW OF TRADE MARKS AND PASSING OFF BY DR. S. VENKATSWARAN (Fourth Edition 1963 (Reprint 1999)), (12) LAW OF TRADE MARKS & PASSING OFF P. NARAYANAN (Fifth Edition 2000), (13) EKHLAS AHMAD VS. DAE HEALTH LABORATORIES LTD. (1980 scmr 625), (14) UNI LEVER PLC VS. AL-AMEEN INDUSTRIES (2003 CLD 623), (15) SENITH LABORATORY (PAK.) LTD. VS. M/S. BRITISH DRUG HOUSE LTD. (PLD 1970 Dacca 772), (16) THE WELCOME FOUNDATION LTD. VS. KHAWAR AND OTHERS (1990 SCMR 561), (17) M/S. AL-ANIS LABORATORIES VS. M/S. AL-CHEMIST AND ANOTHER (1987 MLD 2823), (18) BANDANAWAZ LTD. VS. REGISTRAR OF TRADE MARKS, KARACHI AND ANOTHER (PLD 1967 Karachi 492), (19) LAW OF TRADE MARKS AND PASSING OFF BY P. NARAYANAN (Fifth Edition para 17-16 Page 224), (20) CRESCENT PENCILS LTD. VS. INDUS PENCIL INDUSTRIES LTD AND ANOTHER (1989 CLC 2005), (21) SEVEN-UP COMPANY VS. KOHINOOR THREAD BALL FACTORY (PLD 1990 SC 313) and (22) ABDUL WAHID VS. HAJI ABDUR RAHIM AND ANOTHER (PLD 1973 SC 104).
12. Now taking-up the first submission of the learned counsel for the appellant that the application for registration of trademark JATCO has been rejected at the preliminary stage without issuing notice to trademark concerned whose trademark was deemed to be the similar to trademark applied for. To deal with the above issue it is advantageous that the judgments already rendered by the Superior Courts on the subject be quoted hereunder:
13. In the case of M/S. COLGATE-PALMOLIVE (PAKISTAN) LTD. (PLD 1992 Karachi 15) a learned Single Judge of this Court while dealing with the issue in hand has held:-
“. . . . . In the Supreme Court case M/s. Lakson Tobacco Company Limited moved for registration of trade mark ‘Clipper’ in class 34 in respect of Cigarettes, tobacco manufactured and raw, smokers’ articles, etc. Said application was later on amended and registration of trade mark ‘Lakson Clipper’ was sought. The Assistant Registrar of Trade Marks declined the application, on the ground that the trade mark ‘Clipper’ had been already registered as “Player’s Clipper Notingham Castle” and “Clipper”. Order of the Assistant Registrar of Trade Marks declining to register the trade marks as proposed by M/s. Lakson Tobacco company Limited, was set aside in appeal by a learned Judge of this Court, who remitted the case to the Assistant Registrar of trade Marks for issuing notices to the proprietors of the already registered trade marks and for decision after publication in accordance with law. The Supreme Court of Pakistan declined to interfere with such decision by learned Judge of this Court. In the instant case the Assistant Registrar of Trade Marks rejected the application of the appellant at a preliminary stage without issuing any notice to proprietor of the trade mark ‘Top’ or to proprietor of the trade mark ‘Tip Job’. In view of the case law cited at the bar, I hold that order of the Assistant Registrar requires to be set aside.
14. In the case of AZAD FRIENDS & COMPANY (PVT.) LTD. (NLR 1993 AC (Civil) 396 a learned Single Judge of this Court while dealing the issue in hand has held as under:-
“Mr. sultan Ahmad Shaikh invited my attention to cases of Sunbeam Motor Car Company Limited (33 CPC 397), British Cycles & Motor-cycles Manufacturers and Traders Union Limited (40 CPC 226) and Thomas Bear & Sons (India) Limited v. Prayag Narian & Jagennath (58 CPC 25).
Prima facie the principles laid down in the above decisions are applicable to the facts of the instant case. The trade marks have been registered in respect of goods which are different from the goods for which the appellant is seeking registration in its pending application for SKY BIRD. The finding is against the principles laid down in the above decisions.
In Abdul Wahid v. Haji Abdur Rahim and another 9PLD 1973 S.C. 104), it was held that it is an accepted principle that words have a common suffix but if earlier portion of these words are different, and if they do not conflict, they are held to be distinctive. Where two words have the same suffix, the earlier portion of the words is the natural and necessary mark of distinction. The principle laid down has not been followed in the instant case.
I am of the humble view that the respondent should have proceeded with the issuance of notice to the registered trade mark and should have advertised the mark in the Trade Marks Journal for inviting objections and thereafter holding proper inquiry and should have passed an order in accordance with law.”
15. Lastly in the case of THE ASSISTANT REGISTRAR OF TRADE MARKS VS. M/S. LAKSON TOBACCO COMPANY LTD. (1992 SCMR 2323) the Hon’ble Supreme Court of Pakistan had dealt with the issue as under:-
“6. Mr. A. Aziz Khan, the learned counsel for the respondent has brought to our notice various decision in which in similar circumstances, the action of the Registrar to prematurely refuse application for registration of a trade mark, without advertising the application has been consistently held as improper and the practice was deprecated. He referred to unreported judgments of Sindh High Court in Misc. Appeal No.42 of 1987 (Lakson Tobacco Company Limited v. The Assistant Registrar of Trade Marks-II and Misc. Appeal No.8 of 1988 (Lakson Tobacco Company Ltd. V. The Registrar of Trade Marks) i.e. both in the cases of respondent. Reference was also made to the case of David Waughan Racklin 1986 MLD 1666 relied on in the impugned judgment and a judgment of the Bombay High Court in Misc. Petition No.1522 of 1976 (Central Camera Company Ltd. v. The Registrar of Trade Marks) reported in the Industrial Property Law Reporter at p.1.
7. After careful consideration of the arguments and the law cited before us, we feel it is a sound principle that in cases like the present one it is not proper to refuse the application for registration at initial stage without advertisement. It will be appropriate to advertise the trade mark and invite opposition, as in such case a decision taken will avoid multiplicity of litigation, besides enabling the Registrar to have his decision on material produced by holders of trade marks who file opposition.”
16. From the narration of the above one thing is clear that the action of the Registrar to refuse application for registration of a trademark prematurely without advertising the application has been consistently held as improper and the practice was deprecated. The Hon’ble Supreme Court of Pakistan in the above referred case has already ruled that it is not proper to refuse the application for registration at initial stage without advertisement. Applying the rule laid down by the Hon’ble Supreme Court of Pakistan the argument raised by the learned counsel for the appellant is weighty and it is held that the action of Registrar rejecting the application at the preliminary stage without advertising the same and inviting the opposition from the side of registered trademark is patently illegal and in violation of rule laid down by the Superior Court particularly the cases noted hereinabove, hence the impugned order cannot be sustained on this ground alone.
17. Ms. Amna Salman, learned counsel for the appellant, while making her submissions on Points No.(ii) and (iii) noted hereinabove has submitted that mark applied for is entirely different then the registered trademark already in the field. She further added that trademark JATCO is visually and phonetically not similar to trademark JACO already registered under the Act and shall not cause any confusion and deception to general public. The trademark JATCO is entirely different then the already registered trademark JACO and can be easily distinguishable from each other. She further added that the nature and composition of the goods of the appellant are different from those covered under the registered trademark. She further added that the appellant’s mark has been applied for automobiles, buses, converters for land vehicles, motorcycles, transmission for land vehicles, trucks, electric vehicles, wagons, water vehicles, excluding auto parts whereas the goods covered by the registered trademark are only restricted to spare parts. In the end she submitted that trade generation of the goods covered under the competing marks are also different. The goods of the appellant are sold in selected markets and showrooms whereas auto parts are sold at different places and different shops. In support of her submissions learned counsel for the appellant has heavily relied upon the judgment rendered by the Hon’ble Supreme Court of Pakistan reported as SEVEN-UP COMPANY VS. KOHINOOR THREAD BALL FACTORY AND OTHERS (PLD 1990 SC 313). The relevant observation of the Hon’ble Supreme Court appears at pages 344-345 which are quoted hereunder:-
“Our statute law recognizes and also protects trade mark in relation to goods, and not independently of the goods. Therefore, one is justified in claiming protection for a particular trade mark ony if it is related to a particular good or class or category of goods. The generality of clause (a) of section 8 of the Act cannot be given the meaning and the content so wide as to embrace all registered and widely used trade marks so as to exclude their adoption and use for any and every class or category of goods, howsoever different and dissimilar. The generality advocated is limited by clause (a) of section 8 of the Act itself. The test provided therein is not the identity of the trade mark or of the goods but likelihood of deception or confusion such as to entitle protection in a Court of law. The test of the likelihood of deception or confusion is dependent on the nature of the goods, marketing methods, consumer awareness etc., all variables, differing from place to place, country to country and commodity to commodity. Even in the Caltex’s case where the goods were totally different the Court proceeded to examine the first requirement and found it amply satisfied by holding that “The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man,” and finally holding that “The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade”. It has to be noted further that the likelihood of deception or confusion is tested not by the reactions of the immediate vendee but by those of the ultimate consumer.
Applying the law to the facts of the cases before us, it is clear that the identity of the Trade Mark ‘7-up’ for wool, thread, soap and ‘Sony’ for sports goods does not go beyond a stage where one can infer the slightest likelihood of deception or confusion to earn protection in a Court of law. The goods are entirely different. Their manufacturing and marketing methods are different. The category of consumers served is not the same. The outlets for their sale are also different.”
18. Applying the above rule laid down by the Hon’ble Supreme Court of Pakistan it can conveniently be held that the Registrar of Trade marks had wrongly invoked the provisions of Section 8(a) and Section 10 of the Act and has reached to an erroneous conclusion while passing the impugned order. In my view, in the light of Hon’ble Supreme Court observations quoted hereinabove provisions of Section 8(a) and Section 10(1) of the Act are not applicable, hence findings recorded by the respondent cannot be sustained as it over-looks the rule laid down by the Hon’ble Supreme Court on the issue.
19. In support of her contention noted as Serial No.(iv) that the impugned order has been passed without assigning any reason in violation of Section 24-A of the General Clauses Act. The operative part of the impugned order has been quoted in the opening of this judgment which was attacked by the learned counsel for the appellant in view of Supreme Court judgment on the subject and has relied upon a famous judgment of the Hon’ble Supreme Court of Pakistan reported as M/S. AIRPORT SUPPORT SERVICES VS. THE AIRPORT MANAGER, QUAID-E-AZAM INTERNATIONAL AIRPORT, KARACHI AND OTHERS (1998 SCMR 2268) relevant appears at page 2277 which reads as under:-
“The doctrine has further been recognized and augmented by the recent insertion of section 24-A in the General Clauses Act, 1897, which delares that where a statute confers a power to make any order or to give any direction to any authority, office or person, such would be exercised reasonably, fairly, justly and for the advancement of purpose of the enactment. What is more, the order or direction, so far as necessary or appropriate would reflect reasons for its making or issuance and, where the same is lacking, an affectee may demand the necessary reasons, which, in response, would be furnished.”
20. Since there appears no reason for rejection of the application for registration of the trademark of appellant except mentioning Sections 10(1) and 8(a) of the Act. It clearly violated the above judgment of Hon’ble Supreme Court of Pakistan and on this ground as well cannot be upheld and the same is liable to be set aside. In support of her contention that Registrar has acted mechanically without applying his independent mind to the case and has ignored the submissions made by the appellant before him. She has invited my attention to a case reported as M/S. COLGATE-PALMOLIVE (PAKISTAN) LTD. VS. ASSISTANT REGISTRAR OF TRADE MARKS (PLD 1992 Karachi 15) wherein it has been observed as under:-
“. . . . . In the supreme Court as M/s. Lakson Tobacco Company Limited moved for registration of trade mark ‘Clipper’ in class 34 in respect of Cigarettes, tobacco manufactured and raw, smokers’ articles, etc. Said application was later on amended and registration of trade mark ‘Lakson Clipper’ was sought. The assistant Registrar of Trade Marks declined the application, on the ground that the trade mark ‘Clipper’ had been already registered as “Player’s Clipper Notingham Castle” and “Clipper”. Order of the Assistant Registrar of Trade Marks declining to register the trade marks as proposed by M/s. Lakson Tobacco Company Limited, was set aside in appeal by a learned Judge of this Court, who remitted the case to the Assistant Registrar of Trade Marks for issuing notices to the proprietors of the already registered trade marks and for decision after publication in accordance with law. The Supreme Court of Pakistan declined to interfere with such decision by learned Judge of this Court. In the instant case the Assistant Registrar of Trade Marks rejected the application of the appellant at a preliminary stage without issuing any notice to proprietor of the trade mark ‘Top’ or to proprietor of the trade mark ‘Tip Job’. In view of the case law cited at the bar, I hold that order of the Assistant Registrar requires to be set aside.”
21. If the respondent-Registrar should have applied his mind to the record and judgments of Superior Courts and submissions of the appellant he might have not committed error of rejecting the application through the impugned order.
22. Now dealing with the submission No.1 of learned counsel for the respondent that the Registrar Trade Marks has rightly rejected the application of appellant without advertising or inviting opposition from the registered trade mark, learned counsel has invited my attention to the procedure being adopted by the Registrar of Trade Marks. Learned counsel for appellant has submitted that an application for registration is made under Section 14(1) of the Act. He has further stated that application is examined under Rule 23 of the Revised Trade Mark Rules, 1963, and under such rules search is made amongst the registered trade marks and pending mark for the purpose of ascertaining whether they are on record in respect of the same goods or description of goods any mark identical with the mark sought to be registered or so nearly resembling it as to render it likely to deceive or cause confusion. Learned counsel further stated that under Rule 24(1) if the Registrar has any objection or proposes any amendment, modification, etc. he shall communicate such objection or proposal in writing to the applicant. He further added that normally objections are raised under Sections 8 and 10 of the Act as per Rule 24(2) within two months from the issuance of show cause notice and the applicant is asked to submit reply to said show cause notice. After hearing the parties orders are passed by the Registrar. In support of the aforesaid submissions learned counsel has relied upon the Cases (1) PHILIPS MORRIS INCORPORATED VS. LAKSON TOBACCO COMPANY LTD. AND ANOTHER (PLD 1986 Karachi 482), (2) ERWIN MULLAR GMBH & CO. VS. ASSISTANT REGISTRAR OF TRADE MARK (2008 CLD 1003), (3) TRANSPAK CORPORATION LTD. VS. THE REGISTRAR OF TRADE MARKS (1991 MLD 658), (4) KERLY’S LAW OF TRADE MARKS AND TRADE NAMES (Fourteenth Edition 2007), (5) LAW OF TRADE MARKS & PASSING OFF P. NARAYANAN (Fifth Edition, 2000) but learned counsel while making his submissions did not address the Court on the point of publication in Trade Mark Journal or inviting opposition from the registered trade mark as held by the Superior Courts in the earlier judgments which are being followed by me in the present judgment. I have already held that advertisement in the Trade Mark Journal was necessary so that opposition could have been filed by the registered trade mark to the application for registration made by the present appellant. In view of my aforesaid findings no further discussion on the issue is called for.
23. With regard to submission No.(ii) of learned counsel for the respondent that the Registrar Trade Marks has rightly invoked the provisions of Section 8(a) of the Act while rejecting the application summarily I have already dealt with the issue in paragraphs 17 and 18 above while dealing with the second and third submissions of learned counsel for the appellant. No further discussion on the issue is called for in view of aforementioned findings.
24. With regard to submission No.(iii) of learned counsel for the respondent that the Registrar has acted within his jurisdiction and has acted in accordance with law while passing the impugned order by invoking Sections 10(1) and 8(a) of the Act. It is provided in Section 8 of the Act that 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 or which would by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice. This aspect of the matter has been dealt by the Hon’ble Supreme Court of Pakistan in the case of SEVEN-UP COMPANY VS. KOHINOOR THREAD BALL FACTORY AND OTHERS (PLD 1990 SC 313) wherein the test of the likelihood of deception or confusion has been dealt with and has been held that “deception or confusion is dependent on the nature of the goods, marketing methods, consumer awareness etc. all variables, differing from place to place, country to country and commodity to commodity”. It has been further held that “where the goods are entirely different, their manufacturing and marketing methods are different, the category of consumers served is not the same and the outlets for their sale are also different”. Applying the above rule to the present case it shall be noticed that the application for registration was made by the present appellant for automobiles, buses, converters for land vehicles, motorcycles, transmission for land vehicles, trucks, electric vehicles, wagons, water vehicles, excluding auto parts whereas the goods covered by the registered trademark are only restricted to spare parts. From the reading of the above it is clear that outlets for above are different then the spare parts. The consumers of above articles are different then the consumers of spare parts and the goods are not similar to each other. In view of above it is held that there was no question of deception or confusion for the customer for the above mentioned articles then for the spare parts which are covered under the registered trademark, hence the provisions of Section 8(a) of the Act was wrongly pressed into service by the Registrar of Trade Marks. Section 10 of the Act provides “save as provided in sub-section (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietors and either already on the register 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.” As stated above, the applied trade mark was dealing with automobiles, buses, converters for land vehicles, motorcycles, transmission for land vehicles, trucks, electric vehicles, wagons, water vehicles, excluding auto parts and the registered trade mark was only in respect of auto parts, hence provisions of Section 10 of the Act was wrongly applied in the circumstances of the case.
25. With regard to powers of the Registrar there can be no cavil with the proposition that it is for the Registrar to exercise his discretion in matter of acceptance of an application and if it patently comes within the prohibition of the provisions of the Act ex-facie not to be accepted in that case he may not advertise the application. The question here is not of competency but of the exercise of discretion on the part of Registrar. The discretion vested in him can be exercised on sound principle in accordance with law and not arbitrary. As consistently held by the Superior Courts that without advertising the application and calling opposition from the registered trade mark action of the Registrar was deprecated. In this view of the matter the jurisdiction exercised by the Registrar rejecting the application of the appellant for registration at the initial stage without advertisement was not appropriate, hence cannot be sustained in the eyes of law.
26. Now taking with the case law cited by the learned counsel for the respondent (1) PHILIPS MORRIS INCORPORATED VS. LAKSON TOBACCO COMPANY LTD. AND ANOTHER (PLD 1986 Karachi 482), (2) ERWIN MULLAR GMBH & CO. VS. ASSISTANT REGISTRAR OF TRADE MARK (2008 CLD 1003), (3) TRANSPAK CORPORATION LTD. VS. THE REGISTRAR OF TRADE MARKS (1991 MLD 658), (4) KERLY’S LAW OF TRADE MARKS AND TRADE NAMES (Fourteenth Edition 2007), (5) LAW OF TRADE MARKS & PASSING OFF P. NARAYANAN (Fifth Edition, 2000). These cases deal with the procedure being adopted by the Registrar of Trade Marks while dealing with an application for registration of trade mark apart from the judgments other laws on the subject have been cited. The judgment cited by the learned counsel for the respondent are distinguishable on facts and are not applicable in the circumstances of the case. It has been consistently held by the Hon’ble Supreme Court of Pakistan that publication is to be effected inviting objection or opposition from the already registered trade mark and thereafter application for registration of trade mark is to be decided by the Registrar.
27. Learned counsel for the respondent thereafter tried to distinguish the rule laid down by the Hon’ble Supreme Court of Pakistan in the case reported as 1992 SCMR 2323 (THE ASSISTANT REGISTRAR OF TRADE MARKS, KARACHI VS. M/S. LAKSON TOBACCO COMPANY LTD) and has cited in support of his contention the judgments rendered by the High Courts. In view of Hon’ble Supreme Court of Pakistan judgment on the subject no discussion on the issue is called for in view of article 189 of the Constitution of Pakistan. No other judgment in which the contrary view has been taken then in the above noted judgment has been brought to the notice of the Court. The cases reported as (1) EKHLAS AHMAD VS. DAE HEALTH LABORATORIES LTD. (1980 SCMR 625), (2) UNI LEVER PLC VS. AL-AMEEN INDUSTRIES (2003 CLD 623), (3) SENITH LABORATORY (PAK.) LTD. VS. M/S. BRITISH DRUG HOUSE LTD. (PLD 1970 Dacca 772), (4) THE WELCOME FOUNDATION LTD. VS. KHAWAR AND OTHERS (1990 SCMR 561), (5) M/S. AL-ANIS LABORATORIES VS. M/S. AL-CHEMIST AND ANOTHER (1987 MLD 2823), (6) BANDANAWAZ LTD. VS. REGISTRAR OF TRADE MARKS, KARACHI AND ANOTHER (PLD 1967 Karachi 492), (7) LAW OF TRADE MARKS AND PASSING OFF BY P. NARAYANAN (Fifth Edition para 17-16 Page 224) have been relied upon by the learned counsel for the respondent in support of his submission that no trade mark shall be registered in respect of any goods or description of goods which is identical with the trade mark belonging to different proprietor in respect of same goods or description of goods which so nearly resembles such trade mark as to likely to deceive or cause confusion. In the instant case as pointed out hereinabove that already registered trade mark was in respect of auto parts whereas the appellant had applied for automobiles, buses, converters for land vehicles, motorcycles, transmission for land vehicles, trucks, electric vehicles, wagons, water vehicles, excluding auto parts. The goods being produced by the appellant are not identical to those goods which are covered under the registered trade mark already in the field. Outlet for sale of both items are different, the customers for both the items are entirely different and the goods are neither similar to each other nor create any deception. In this view of the matter the judgments cited by the learned counsel for the respondent are of no help to him. Even otherwise, the judgments cited by learned counsel for the respondents are distinguishable on facts and are not applicable in the circumstances of the case.
28. While elaborating his arguments on Section 8(a) of the Act the learned counsel for respondent has placed reliance on the judgment reported as CRESCENT PENCILS LTD. VS. INDUS PENCIL INDUSTRIES LTD AND ANOTHER (1989 CLC 2005). This judgment as well is distinguishable on fact and does not apply to the case in hand. The cases of SEVEN-UP COMPANY VS. KOHINOOR THREAD BALL FACTORY (PLD 1990 SC 313) and ABDUL WAHID VS. HAJI ABDUR RAHIM AND ANOTHER (PLD 1973 SC 104) relied upon by the learned counsel for the respondent are in relation to the discretion being exercised by the Registrar of Trade Marks. This aspect of the matter has been dealt by me in the earlier part of this judgment and needs no further debate on the issue.
29. For the foregoing reasons the appeal succeeds which is accordingly allowed and the order passed by the respondent-Registrar Trade Marks on 07.01.2004 in Application No.152196 in class-12 is set aside. The matter is remanded to the respondent-Registrar Trade Marks with the direction to advertise the trade mark of appellant into Trade Mark Journal and to invite opposition, if any, and thereafter decide the matter in accordance with law. However, there will be no order as to cost.
JUDGE
Karachi:
Dated:
S.Akhtar