1986 CLC 649

KOHINOOR CHEMICAL CO. LTD. VS REGISTRAR OF TRADE MARKS

Petitioner: KOHINOOR CHEMICAL CO. LTD. VS Respondent: REGISTRAR OF TRADE MARKS

Court: Sindh High Court

Full Judgment Text & Judicial Ruling

1986 C L C 649

1986 C L C 649 [ Karachi ]

Before K. A. Ghani, J

KOHINOOR CHEMICAL Co. Ltd.‑‑Appellant versus THE REGISTRAR OF TRADE MARKS‑‑Respondent

Miscellaneous Civil Appeal No. 50 of 1977, decided on 13th October, 1985.

(a) Trade Marks Act (V of 1940)‑‑

‑‑‑S. 6(1)(d)‑‑Trade mark "French Girl"‑‑Registration of‑‑Mark, "French Girl" would not have direct reference to character or quality of goods‑ Same was not in ordinary significance, geographical name or sur‑name‑ Words "French Girl" would not indicate that goods sold under said trade mark were of French origin‑‑‑‑Trade mark consisting of combination of words is a distinctive mark not likely to deceive or cause confusion. Scotsman Trade Mark (1965) R.P.C. 358 ref.

(b) Trade Marks Act (V of 1940)‑‑

‑‑‑S. 13(b)‑‑Trade mark "French Girl"‑‑Registration of‑‑Mark "French Girl", _held, could not have been refused merely on ground that word "Girl" was common to trade and that to use of each word taken independently disclaimer had been notified by applicant of trade mark.

(1964) R.P.C. 129 and Marks Act, 1940 by K.S. Shavaksha ref.

‑‑‑S. 13‑‑Trade mark‑‑Effect of disclaimer to exclusive use of each of two combined words‑‑Such disclaimer of two words used independently and or separately, held, was justified in view of fact that application for disclaimer could be considered, if other requirements for registration of trade mark were satisfied.

(1921) 38 R.P.C. 373 ref.

(d) Trade Marks Act (V of 1940)‑‑

‑‑‑S.13‑‑Trade mark‑‑Specification of goods‑‑Amendment of‑‑Effect‑ Undertaking as to amendment of specification of goods of trade mark, held would not render appeal against non‑registration of Trade mark as infructuous.

Ashraf Ali for Appellant. Ali Murtaza for Respondent.

Date of hearing: 13th October, 1985.

JUDGMENT

This is an appeal preferred against the decision, dated 10th August, 1977 of the Registrar of Trade Marks, Karachi, communicated to the appellants by his letter, dated 28th August, 1977 by which he dismissed the appeal and thereby he rejected the Appellant's Trade mark Application No. 65030.

The brief facts of the case are that the appellants, a private limited company registered at Karachi under the Companies Act, 1913, filed the abovementioned application on 17‑12‑1976 for registration of the trade mark "FRENCH GIRL" in relation to:

"Face Cream, liquid and dry make‑ups cosmetics, Face Powders, Talcum and dusting powders, Nail polishes, Nail polish removers, lip‑sticks, liquid and solid perfumes, Eau de Cologns Lavenders, preparations for beautifying eyes, mascaras, shampoos, hair sprays, hair oils, hair lotions, toilet soaps, preparations for colouring hairs, hair removing creams, tooth pastes and detergents, all being goods falling in Class 3."

The Registrar by his letter, dated 19th March, 1977 called upon the appellants to show cause why the application should not be refused registration on the ground that the mark was objectionable under sections 10(1) and 8(a). It was also pointed that the mark was objectionable under section 6(1)(d) of the Trade Marks Act, 1940 on the ground that the "French" is a geographical name. A reply was sent by the appellants on 28th May, 1977 to the aforementioned show‑cause notice whereupon after hearing the appellant's counsel, the Registrar dismissed the application and thus refused the registration of the mark on the grounds:

"(i) that the word French is objectionable under section 8(a) because there is likelihood of deception with the consumer that he might accept the goods as of foreign origin, and that the said word "French" being a geographical name of significance cannot be accepted as a trade mark,

(ii) that the word "Girl" has already been declared common to trade in class 3."

2. Aggrieved by the abovementioned decision of the Registrar this appeal has been referred by the appellants under section 76 of the Trade Marks Act, 1940.

The learned counsel for the appellant at the very outset pointed out that the observation of the Registrar to the effect that as the word "Girl" has already been declared common to trade in this class therefore the same cannot be accepted separately as a mark is based upon misconception. Learned counsel submitted that the said word (Girl) has never been declared common. The learned Advocate for the Registrar conceded that the word "Girl" has not been notified to be common to trade and that the word "LADY" and device of a lady have been declared common to trade in class 3, vide Pakistan Trade Marks Journal No. 323 of December, 1977. It may, however, be observed that Mr. Murtaza submitted that a word or device may be common to the trade and thus may not be registered.

4. The second aspect of this case relates to the observations of the Registrar that the application was liable to be refused on the ground that the mark was objectionable under sections 10(1) and 8(a) of the Trade Marks Act, 1940. The marks enumerated below were cited as conflicting marks.

Registration Numbers Trade Mark 39194 ..... COVER GIRL (words) 51350 ...... BUSY GIRL " 45663 ..... LUCKY GIRL " 33031 ..... OUTDOOR GIRL " 42148 ..... STUDIO GIRL " 4295 ..... ANNE FRENCH "

Pending Applications 62423 ....:... GIPSY GIRL 64623 FLORA‑DE‑FRANCE"

5. At the hearing of the appeal the learned counsel for the parties confined their arguments on the following points:‑------

(i) Whether the trade mark was rightly refused to be registered on the ground that "French" is geographical name?

(ii) Whether word "Girl" has been declared common to the trade?

(iii) What is the effect of disclaimer of right to the words "French" and "Girl" used separately on the application for registration of Trade Mark "FRENCH GIRL" as combination of words?

6. As regards the point No.1, the learned counsel for the appellant conceded that word "French" being a geographical name could not be accepted as a trade mark for registration. He, however, argued that the Trade Mark "French Girl" applied for registration ought to have been considered as a whole as it constitutes a combination of words and the registration could not be refused on the mere ground that the word (French), to the exclusive use of which the appellant has notified its disclaimer, taken separately is a geographical name.

Mr. Ali Murtaza, the learned counsel for the respondent however supported the impugned order contending that the word "French" is a geographical name and that the trade mark in question i.e. "French Girl" though combination of words, would still be objectionable as it would deceive consumers as they are likely to consider that the products of foreign origin namely from France of which country "perfumes, Eau de Cologns, Lavenders" are well‑known throughout the world.

7. In order to appreciate the arguments advanced by the learned counsel it would be relevant to refer here to the provisions of section 6(1)(d) and section 8 of the Trade Marks Act, 1940 which are reproduced herein below as the arguments of both the counsel were based upon them:‑---

"Section 6(1)

A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely:‑-

(a) ............................................................... (b) ............................................................... (c).............................................................

(d) one or more words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification, a geographical name or surname or the name of a sect, caste or tribe in Pakistan;"

Section 8 reads as follows:‑-

"Section 8.‑ Prohibition of registration of certain matters: 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; or

(b) be likely to hurt the religious susceptibilities of any class of the citizens of Pakistan; or

The requirements of section 6(1)(d) reproduced above, it appears, stand satisfied in the present case as the Trade Mark "French Girl" has no direct reference to the character or quality of the goods. It is A also not in its ordinary significance, a geographical name or surname. The use of the words "French Girl" in my opinion does not indicate that the goods sold under the said trade mark, are of French origin. The inference reached by me is fully supported by the case reported as SCOTSMAN Trade Mark (1965) R.P.C. 358. The facts of the said case briefly stated were that the applicant company, applied for registration of trade mark which consisted of word SCOTSMAN in plain to block capitals, in class 11.

Objections taken to the mark under provisions of subsections (c), (d) and (e) of section 9(1) of Trade Marks Act, 1938 on the ground that it is not invented, that it has direct reference to the character or quality of the goods and that it is not distinctive and that it connotes goods of Scotish origin, were upheld by the Assistant

In the appeal preferred the contention raised in opposition to the grant of application that the public seeing the applicants goods e.g., refrigerators in Scotland with word "SCOTSMAN" upon them might well think that they were Scotish goods, was repelled. The following observations made by the learned Judge for purposes of the present case being relevant are reproduced below:‑------

" ---------If it had been established or even if it appeared likely that the use of the word SCOTSMAN on goods in class 11 would normally lead to the belief that the goods were associated with Scotland, then registration would have to be refused, because even if the mark could be regarded as having some distinctive element it would be deceptive. I do not consider that the known circumstances lead to that conclusion. The Registrar's decision rests upon a very narrow proposition. ‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑

It should here be explained that one is concerned to have regard only to some definite indication or suggestion conveyed by the word in question that the goods are associated with Scotland. A figurative or fanciful suggestion of association, which the public would accept as such and no more, would not be objectionable."

The Registrar was accordingly ordered to proceed with the application subject to directions given in the judgment.

8. Reference may also be made here to the case of ROMAN HOLIDAY Trade Mark reported in (1964) R.P.C. 129.

Objection to the application for registration of the above mark which consisted of the words "ROMAN HOLIDAY" in block capitals was taken under sections 9(1)(c)(d) and (e) of the (English) Trade Marks Act, 1938 on the ground that it is not an invented or invented words, that it consists of a word having direct reference to the character or quality of the goods followed by the word having surname significance and that it is in consequence not an inherently distinctive trade mark. Objection was also taken under section 12 of the said Act on the ground of the presence on the Register of two trade marks registered for persons other than the applicants. Under section 11 of the Act objection was also taken on the ground that it is likely to deceive.

The applicants accepted the Registrar's decision in respect of the objections made under section 9 and section 12 of the Act and necessary requirement for amendment on requisite form was made but they refused to undertake to use the mark only on the goods manufactured in Rome. Arguments before the Registrar thus were to the objection raised to the mark under section 11 of the Act. The Registrar refused the application holding that the words ROMAN HOLIDAY alone when used as a trade mark might well lead people to believe that the goods on which it was used were connected with the modern city of Rome and that as the specification of goods for the said application (as limited) covered emanating from places other than Rome, the mark was open to objection under provision of section 11. It may be also noted here that the applicants were not prepared to give undertaking to use the said mark only in relation to goods manufactured in Rome as already noted above.

Appeal was preferred against the above decision of the Registrar.

It was contended, inter alia, before the learned appellate Court that the term ROMAN HOLIDAY in relation to the goods concerned is purely fanciful and that nobody would suppose that the mark indicated that the goods had any connection with Rome still less that they were manufactured in Rome. Agreeing with the submissions thus made, the learned Court held the proposed mark was free from objection under section 11 of the Act and directed the Registrar to proceed with the application for registration of the said mark. The observations made by the learned Court relevant for the purposes of this case are reproduced below : ‑‑

"I consider that this argument is well‑founded and with all respect to the Registrar I think that there is an error in his reasoning in the passage of his decision which I have quoted. The fact that to some persons the mark will indicate a connection with the modern city of Rome does not mean that such persons will believe that the connection has anything to do with the origin of the goods. The phrase HOLIDAY IN ROME would convey the same indication as ROMAN HOLIDAY and yet the former phrase would clearly be as unobjectionable for trade mark purposes as the mark EVENING IN PARIS which is already registered by the applicants in the same class. The statement in the Registrar's decision that the adjective ROMAN in the proposed mark will be taken as referring to the perfume or lipstick and, therefore, as indicating that the goods concerned originated in Rome is in my view not justified having regard to the normal use of language according to which the adjective ROMAN would be understood as referring to the holiday and not to the goods. It would not be right to judge the mark on the basis of some strained interpretation. I regard the term ROMAN HOLIDAY (if it is not to be given the classical meaning) as synonymous with HOLIDAY IN ROME and as such just as fanciful in relation to the goods as EVENING IN PARIS and can see no reason for believing that purchasers of the goods would understand the mark in any other way and thereby be deceived because the goods are not in fact made in Rome."

9. Useful would it be to refer here to the commentary under section 6 of the Trade Marks Act, 1940 by K.S. SHAVAKSHA where the learned author summarised as follows:‑

"So far single words, geographical names and surnames have been taken into consideration. There may, however be a combination of words. There may be two or more words or a word and a geographical name or a surname and a word or any other such combination. Although any one of these words may be wholly unregistrable by itself, yet in combination the mark may be registrable. For instance, as already stated, the word "Kitchen" for culinary utensils would not be registrable, but the words "Kitchen‑Imp." would be registrable for such articles with disclaimer of the word "Kitchen". In the same way, although "India" is not registrable, the words "The Indian Clown" would be considered registrable on the ground that it has no direct reference to the character or quality of the goods. A few illustrations of such marks registered in India are: "Burma Girl" "Gateway of India", "Nottingham Castle", "Evening in Paris", "The Light of Asia", "London Tower". I would like here to mention the fact that alongwith the memo. of appeal, the appellants filed statement of disclaimer of word "FRENCH".

Significant fact to be noted is also that appellants are registered proprietors of the following Trade Marks ending with the word "GIRL":‑

Registration No. Trade Mark

55075 ... GARDEN GIRL 55335 ... ENGLISH GIRL 56529 ... FASHION GIRL

Thus the objection argued under point Noj (i) abovementioned, in my opinion cannot be sustained.

10. I would now take up the points Nos. (ii) and (iii) together for sake of convenience as the same are interlinked.

Mr. Ashraf Ali, the learned counsel for the appellant submitted that the device declared common to the trade, amongst others, is that of "LADY" but the word 'GIRL' has never been declared common. In support of his submissions he produced "The Trade Mark Journal" wherein is given the list of devices which have been notified to have been declared common to trade. At page 818 of the said Journal the following entry appears.

Trade Mark Class Goods "Device of Lady 3 Soap and all other goods in Class 3 (Note‑‑ Photo copies of the pages 817 and 818 of the Journal are placed on the record.)

It was further submitted by the learned counsel that the statement made on behalf of the appellant before the Registrar that appellant as to its right to use of word "Girl" "agreed to its disclaimer" was due to misconception as it was based upon the observations of the Registrar of Trade Marks that the said word GIRL has already been declared common whereas it is now found that the said word has not been, declared common. This submission of the learned counsel for the appellant appears to be correct as would appear from the impugned order where in this regard it is stated:‑------

"When attention of the learned counsel was drawn to the fact that the word 'Girl' has already been declared common to trade in class 3 he voluntarily agreed to its disclaimer."

Mr. Ashraf Ali further argued that the mark "FRENCH GIRL" could not be dissected and then made subject of objection that each word taken up separately could not be registered on the ground that one word is geographical name and the other is common to the trade. The learned counsel further contended that even if there was a disclaimer as to both the words, each taken separately, that would not be a valid ground to refuse the registration of the trade mark of the appellant which consists of combination of words.

Mr. Murtaza, learned Advocate for the Registrar though unable to point out that the word 'GIRL' has already been declared common argued that the registration of a trade mark in question was rightly supported the impugned order contending that the word "French" is a geographical name and that the trade mark in question i.e. "French Girl" though combination of words, would still be objectionable as it would deceive consumers as they are likely to consider that the products of foreign origin namely from France of which country "perfumes, Eau de Cologns, Lavenders" are well‑known throughout the world.

"Section 6(1)

A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely:‑--

(a) ............................................................... (b) ............................................................... (c) ...............................................................

Section 8 reads as follows:‑--

(a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; or

(b) be likely to hurt the religious susceptibilities of any class of the citizens of Pakistan; or

The requirements of section 6(1)(d) reproduced above, it appears, stand satisfied in the present case as the Trade Mark "French Girl" has no direct reference to the character or quality of the goods. It is also not in its ordinary significance, a geographical name or surname. The use of the words "French Girl" in my opinion does not indicate that the goods sold under the said trade mark, are of French origin. The inference reached by me is fully supported by the case reported as SCOTSMAN Trade Mark (1965) R.P.C. 358. The facts of the said case briefly stated were that the applicant company, applied for registration of trade mark which consisted of word SCOTSMAN in plain to block capitals, in class 11.

" ------If it had been established or even if it appeared likely that the use of the word SCOTSMAN on goods in class 11 would normally lead to the belief that the goods were associated with Scotland, then registration would have to be refused, because even if the mark could be regarded as having some distinctive element it would be deceptive. I do not consider that the known circumstances lead to that conclusion. The Registrar's decision rests upon a very narrow proposition. ‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑

The Registrar was accordingly ordered to proceed with the application subject to directions given in the judgment.

8. Reference may also be made here to the case of ROMAN HOLIDAY Trade Mark reported in (1964) R.P.C. 129.

Appeal was preferred against the above decision of the Registrar.

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