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Petitioner: PHILIP MORRIS PRODUCTS INC. UNITED STATES OF AMERICA VS Respondent: DEPUTY
Court Name: Sindh High Court Judge(s): Hamid Ali Mirza Title:PHILIP MORRIS PRODUCTS INC. UNITED STATES OF AMERICA vs DEPUTY
JUDGMENT
Reported As: PLD 1996 Karachi 122 Result: Appeal dismissed Judgment JUDGMENT ' This is an appeal under section 76 of the Trade Marks Act, 1940 (hereinafter referred to as the 'Ace), filed by appellant Philip Morris Products, Inc. Against the decision dated 22-12-1992, passed by Deputy Registrar of Trade Marks, Karachi, whereby after hearing the parties rejected the opposition No,103190 and allowed the respondent No,2's Application No,94645 dated 4-6-1987 in Class 34 thereby allowed registration of Trade Mark consisting of words "Red & Bright" (label) for "Chewing Tobacco" on an Application No,94645 in Class 34 filed by respondents/applicants. ' The respondent No,2 applied for registration of Trade Mark consisting of words "Red & Bright" for "chewing tobacco" on 4-6-1987 as per their application No,94645 before the respondent No,1 in Class 34 which application was advertised in Trade Marks Journal No,461 of June, 1989 at page 111, to which the appellants filed notice of objection No,103/90 on Form T.M.5 with respondent No,1 to oppose the registration of Trade Mark "Red & Bright" on the grounds that the mark of the respondent No,2 was closely similar to their mark "Red & White" and goods were of the same class and description to that of appellants' Trade Mark "Red & White" which' has been internationally registered and marketed and the said mark has been used extensively around the world in relation to "Tobacco whether manufactured or unmanufactured" and as a result the product sold under the said Trade Mark "Red & White" has acquired great popularity, reputation and goodwill, hence the mark of the respondent No,2 was liable to be refused under sections 10(1) and 8(a) of the Act, as the said mark was likely to cause confusion and deception among the general public regarding the source of goods and further the said mark was also objectionable under section 14(1) of the Act. The respondent No,2 also filed counter-statement on Form TM-6 denying all those objections and
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claiming that the said mark was already registered in their name in Class 30 in respect of Pan Masala under No,50412 after contest through opposition filed by predecessor-in-interest of the appellants in Opposition No,62 of 1973 against which no appeal was filed, therefore, said mark "Red & Bright" of the respondent No,2 was accepted. After completion of all the formalities and hearing the both representatives on 2-12-1992; the above impugned decision was made by respondent No,1, hence this appeal. ' I have heard Mr. E.A. Nomani of M/s. Surridge & Becheno for the appellants and Mr. Abdul Hameed Iqbal for respondent No,2 but none has appeared for respondent No,l. ' Learned counsel for the appellant's contention is that respondent No,1 has erred in not arriving at the conclusion that respondent No,2's proposed trade mark "Red & Bright" was deceptively similar to the appellant's trade mark "Red & White" considering that first word "Red" in both the marks was identical. He has further urged that respondent No,1 has erred in observing that section 8(a) looked for likelihood of confusion or deception but not for actual or practical confusion considering that goods were in the same class and of the same description in respect of which appellant's mark was registered and used throughout the world. He has further argued that the people who smoke tobacco were mostly the same class of people who chew tobacco to derive a particular sensation from smoking or chewing of tobacco and since the selling cut-lets of both the products were the same, i,e, Pan shops, therefore, confusion and deception would be very much there. He has further contended that second word of both trade marks, i,e, "White" and "Bright" conveyed almost similar meanings and the same were phonetically similar, therefore, the same would lead to confusion in the market as the purchasers of "Red & Bright" chewing tobacco would think that the said product emanates from the manufacturer of the famous "Red & White" cigarettes. He has further argued that respondent No,1 failed to appreciate that Pan Masala was registered and placed in Class 30 and the same did not contain tobacco and was basically consumed by children for its sentenced taste and colourful packing while the present goods contained tabacco similar to the goods of the appellants, therefore, Pan Masala and the chewing tabacco were not goods of same description. He has in the end argued that the respondent No,1 has failed to consider the cases cited by him. He has placed reliance upon PLD 1990 SC 313 7-Up case, 29 RPC 489 (1912), PLD 1973 Kar. 567 Montgomery Flour case, AIR 1964 Mad. 204, 1977 USPQ 183 Loe's Theatre case, 1965 RPC, 363 Player's case, 1965 RPC 366 Woodies v. Woodbine case in support of his contentions. ' Learned counsel Mr. Abdul Hameed Iqbal for respondent No,2 has argued that the same mark has already been registered in their name in Class 30 in respect of Pan Masala under No,50412 and further that the respondent No,2's mark was different from the mark of the appellants so also the goods were different in description and that there have been 50 marks on the register in the name of different proprietors with pre-fix "Red". He has placed reliance upon Thomas Bear & Sons Ltd. v. Prayag Narain, 58 RPC 25 (1941) J. Lyons & Co. Ltd. (1959 RPC 120), 63, RPC, 59 (1946) Panda's case, (1969) RPC 600 Dai Quiri Rum case, 63 RPC 1 (1945) Morex case, (1909) 26 RPC 428 Maltese Cross case, 6 RPC 311 (1889) Golden Fleece case, 1987 MLD 2864 in support of his contention. ' The Deputy Registrar of Trade Mark has based his decision on the following grounds:- "(a) The trade mark is a whole thing as it appears on the product and as such it should be considered as a whole while comparing with the other mark in order to see whether it is confusingly similar or not. In the light of above-settled principle the subject mark 'Red & Bright' is quite dissimilar and distinguishable from the mark "Red & White". The principle relied by the opponent as per reported case, PLD 1973 SC 104 is not relevant in this case because in the said decision there is only one word whereas in this case both the marks consist of two words hence this case alongwith other cases are distinguishable on this ground; (b) The goods claimed by the applicants (respondent) are only 'Chewing tobacco' which are normally used in Pakistan and India alongwith Pan and considered as an ingredient of Pan.
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Moreover, there is a clear authority reported in (1941) 58 RPC 25, wherein it was held that chewing tobacco and smoking tobacco (pipe) and cigarettes are goods of the different description....; (c) The applicants (respondents) are the registered proprietor of the same mark in Class 30 in respect of Pan Masala, hence this application which is for the same description of goods, although falling in different class should be allowed. ' Section 8(2) of the Act reads as under:- "No trade mark nor part of trade mark shall be registered which consists of or contains any scandals 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 the Court of justice; or (b) . ' Section 10(1) of the said Act runs:-- "Save as provided in subsection (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 proprietor 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." ' The above provisions of Act prohibit the registration of a trade mark in respect of any case or description of goods which is identical with the trade mark belonging to a different proprietor, in respect of same goods or description of goods or which nearly resembles such trade marks as to be likely to deceive or cause confusion. In the instant case the plea of learned counsel for the appellants is that use of trade mark "Red & Bright" would cause deception and confusion in respect of trade mark of the appellants as the first word "Red" was common to the trade mark of the parties and the second word of both the trade marks "White" and "Bright" conveyed almost similar meaning and the same were phonetically similar and further that the product of the appellants and that of respondents was made of tobacco, therefore, the product was of the same description which was bound to cause confusion and deception upon the users thereof. It has been repeatedly held by superior Courts that mere adoption of registered trade mark, irrespective of class or category of goods would not be decisive to attract the provisions of clause (a) of section 8 of the Act as otherwise other provisions of the Act would become redundant. I may state that the element of deception and confusion would depend upon number of factors as well as question of similarity of the mark and the get up. It is possible that mark may be similar without there being any likelihood to cause one mark being confused with the other. The registration of new trade mark in respect of any product or description of goods is to be refused if an identical trade mark in respect of same goods or description of goods belonging to different proprietor is already registered or it so nearly resembles the latter trade mark that is likely to deceive or cause confusion. Reference is made to Pakistan Soap Factory v. Chittagong Soap Factory PLD 1970 SC 460. Mr. Noorul Arfin, J. (as he then was) observed in Jamia Industries v. Caltex Oil (Pakistan) Limited PLD 1973 Kar. 246:-- "The rule is now established judicial consensus that in making comparison of two marks emphasis should be laid down on their leading features and that in doing so, it should be determined as to what are the leading characteristics of each of the competing trademarks. The same rule has been stated in different words, that is what would be the impression left on the mind, whether there is any likelihood that, by adoption from a registered trade mark of one of its leading characteristics, the proposed trade mark may create the impression that the goods under both trademarks originated from same source. A judicial review of the cases shows that though ordinarily totality of two marks should be seen to ascertain whether they are similar to each other or distinctive from each other, but where a dominant feature of registered trade mark is incorporated in the competing trade mark; then there is not only possibility but also probability of deception and confusion being caused and, therefore, the rule has been accepted that a trade mark is infringed if
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a person other than registered proprietor or authorised under incorporates in his trade mark one or more essentials or characteristic features of the registered trade mark." ' In Kaiser Jeep Corporation v. Saber Saleem Textile Mills Ltd. (PLD 1969 Karachi 376 at page 380) Mr. Noorul Arfin, J. (as he then was) observed:-- "To determine whether deception or confusion was likely to arise, Evershed, J. (as he then was) formulated this test in the `Ovax case' (Smith Hayden & Co. Ltd.'s Apin.) (1946) 63 HPC 97, 101 'Is the Court satisfied that the mark applied for if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons'. In another case, Jellinek's Apin. (1946) 63 RPC 59, Roomer, J. Approved the view that it is not necessary to prove that there is an actual probability of deception leadings to a passing-off, but it will be sufficient to show that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source, and, further, that it would be enough if the ordinary person entertains a reasonable doubt. On the same question, some further judicial observations may also be noted with advantage. In `Gro-Pal case' (Gaines) Animal Foods Ltd.'s Apln.) (1951) 68 RPC 178, Lioyd-Jacob, J. Said: 'If the marks have no resemblance, the most extensive reputation in relation to one cannot create confusion in the use of the other; nor, if one mark is wholly unknown in the market, could a confusingly similar mark involve deception'. In Somerville v. Schembri (1887) 12 ACT 453, Lord Watson observed: 'The acquisition of an exclusive right to a mark or name in connection with a particular article of commerce cannot entitle the owner of that right to prohibit the use by others of such mark or name in connection with goods of a totally different character, and that such use by others can as little interfere with his acquisition of the right." In the instant case leading characteristic as contended in the trade mark of appellants is the word prefix "Red" which is folldwed by suffix word "white" in case of marks of the appellants while the word "Bright" suffix is followed in case of mark of the respondents and further the product of the appellants is cigarette while that of the respondents is the chewing tobacco, therefore, there would not be any possibility of deception or cause of confusion even in respect of their source to an ordinary person hence there would be no infringement of the appellant's mark. In the instant case admittedly the product of respondents (Red & Bright) is made from tobacco and is used for chewing with Pan while the product of the appellants, though made from tobacco, is used for smoking in cigarettes. The learned counsel for the appellants has failed to persuade me that the same class of people generally use chewing tobacco and cigarettes. It may be that the out-lets of both products may be the same but it would not lead to the fact that there was likelihood that the trade mark of chewing tobacco and trade mark of cigarettes could cause deception or confusion considering also the packing of both the trade marks was to be different and distinguishable from each other to the respective users thereof. It is correct that the first word "Red" of the marks of the appellant is same to the mark of respondent No,2 when the second word of the both marks is different. Second word of the appellants product is "White" while that of respondent No,2's product is "Bright". The words "White & Bright" have no similarity so far their spellings and meanings are concerned. The two words "White & "Bright" have different meanings and are used in different sense. The word "Bright" is defined in Chamber's Twentieth Dictionary as:-- "Shining: full of light: vivid: clear: beautiful (arch.): cheerful: vicarious: clever: Illustrious. ' While the word 'White' is defined as:-- "of the colour of pure show: snowy: of the light complexion characteristic of Europeans: that absorbs the minimum and reflects the maximum of light rays: pale, pallid: bloodless: pure: unblemished, innocent: purified from sin: bright:" The competing trade marks are to be seen as a whole and in totality of impression to be left on the mind in respect of the product in question which would be the determining factor as to whether
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there would be any likelihood of deception or confusion being caused to purchaser of the appellants' product. I have already said that the mark "Red & Bright" of respondent No,2 was for chewing tobacco generally used with Pan while trade mark "Red & White" cigarettes of the appellants containing tobacco was for smoking purpose. Learned counsel for the appellant has not cited any case-law whereby it could be said that chewing tobacco and cigarettes containing tobacco for smoking are of same description. On the contrary learned counsel for the respondents has cited (1941 RPC 25) wherein it was held that "chewing tobacco" and smoking tobacco (pipe) and cigarettes were goods of different description in the stated evidence of case. It is also admitted position that respondent No,2 was earlier earmarked same trade mark for Pan Masala in Class 30 under Registration No,50412 though it was contested by the appellants the said mark was finally allowed to be retained by respondent No,2. Decision cited Abdul Wahid v. Abdul Rahim PLD 1973 SC 104 by Mr. EA. Nomani is of no help to him in this case as in the said case there was only first syllable which was considered decisive to resolve the conflict of likelihood of the deception and confusion but in the instant case besides the first word "Red" there is second word "Bright" which is suffix and dissimilar to the word "White" of the appellant's mark, which could not be said to be identical to the appellant's mark. In the circumstances there could not be confusion to the purchaser's eye between the suffix "White" of appellant's mark, which is not similar to word "Bright" of the appellants and being of not similar in description to that of appellant's mark and product hence would not fall within the mischief of provisions of sections 8(a) and 10(1) of the said Act. There is no sufficient evidence on record that in the stated circumstances there was probability of deception or confusion which could arise in the mind of public while making purchases of the goods either of appellants or of respondent No,2. There is no evidence on record to show that the appellants also produce and market chewing tobacco, to the product and marketed by the respondent No,2, therefore, the question of likelihood of deception or confusion would not arise in the circumstances of the instant case. The label of chewing tobacco is quite different to the design of label on the packet of cigarettes of "Red & White", therefore, on the said count as well there could be no probability or possibility of deception or cause of confusion. Chewing tobacco and smoking tobacco for pipe or in cigarettes are so different that it could not be said that it would cause any confusion to the public. Mere fact that chewing tobacco and smoking tobacco for pipes and cigarettes could be available at the same shop, would not by itself bar the registration of the mark of the respondent in the circumstances of the present case. In Thomas Bear & Sons India Ltd. v. Prayag Narain and Jagennath and another AIR 1940 PC 86 it was observed:-- "It is clear that the right of property that may be acquired in such a trade mark is based on the proved association in the market of the device, name, sign, symbol or other means in question with the goods of the plaintiff, so that the use by the defendant on such goods of the trade mark will amount whether the defendant intends it or knows it or not--to the false representation that the goods are manufactured or put on the market by the plaintiff. There can obviously be no monopoly in the use of the trade mark. A manufacturer of cigarettes under an undoubted trade mark such as an animal, or any other device cannot legally object to the use of the identical mark on, say, hats, or soap, for the simple reason that purchasers of any of the latter kinds or goods could not reasonably suppose, even if they were well-acquainted with the mark as used on cigarettes, that its use on hats or soap denoted that these goods were manufactured or marketed by the cigarette manufacturer. Those would be simple cases, but some much more difficult ones can be suggested. If a manufacturer of a special kind of smoking tobacco under a trade mark seeks to restrain the use of it on cigars, on a very different kind of smoking tobacco, or on cigarettes. or on snuff, or on chewing tobacco, or on tabacco in some form sold for use as a weed killer--all these things being made of tobacco--question, sometimes of great difficulty, may arise. It is however, very important to observe that each of these questions will be a question of fact to be decided on
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the evidence adduced. The vital element in such a case is the prohibility of deception. This may depend on a number of materials as well as the question of similarity of the marks or of the get-up. Witnesses can be called to prove the circumstances and the places in which the articles are sold, the classes of persons who buy them, and whether they include persons who are illiterate or ignorant or the reverse, the manner in which the public are accustomed to ask for the articles, and any other matters which will assist the Court to decide whether deception is probable. Evidence of actual deception may be available and if available may be very valuable. There is no such person as an expert in human nature, and it is not well-settled that a witness cannot be called to say that it is likely that purchasers of the goods will be deceived. This can only be a matter of opinion formed after the dispute has arisen and too often without any judicial consideration of the opposing contentions. On the other hand, a person who is accustomed to buy the articles in question may be called to say that he would himself be deceived, and cross-examination will often show what weight should be attached to such a statement." ' In case of "Daiquiri Rum" (1969) RPC 600 at page 620, it was observed:-- " The expression 'goods of the same description' is used elsewhere in the Trade Marks Act, 1938, in particular sections 12 and 26, and no reason appears why it should not bear the same meaning throughout. The words are not perhaps self-explanatory. Taken by themselves, they would suggest that it is necessary to search for a description, by species, genus or wider category which would include all the goods in question. Taken in relation to the Act of 1938, they might suggest a grouping by reference to the classification of goods for trade mark purposes contained in the Third or Fourth Schedules to the Trade Marks Rules. But reference to the classification shows at once that this cannot be the basis of 'description', for there are many cases where a single class contains goods of different descriptions, while goods which one would think were of the same description may be found in different classes. Nor, on the more general test, is it sufficient to find a single trade description covering each of the goods in question. Thus, in Lyons & Co. Ltd.'s Application (1959) RPC 120, `sweets' though covering ice-cream and jellies was thought to be too wide a description to be suitable." ' In (1963) RPC page 1 at page 3, it has been observed:-- "Before proceeding to deal with the specific issues involved in the present proceedings it may be convenient if here I made a few preliminary observations (a) as regards the classification of goods any `goods of the same description', and (b) as regards the interpretation of section 7 and the onus which falls thereunder upon an applicant and opponent in opposition proceedings. (a) Relevant to the first of these two matters section 3 of the Act provides as follows: 'A' trade mark must be registered in respect of particular goods or classes of goods, and any 'question arising as to the class within which any goods fall shall be determined by the Registrar, whose decision shall be final'. It is obvious from the wording of this section that it is none of the Registrar's duties to decide the allocation to different classes of new machines, new apparatus and new materials as and when the necessity arises, and in this duty, as in considering the question of `goods of the same description' he adopts as far as possible the principle suggested by the learned Master of the Rolls in Gutta Perclia and Rubber Manufacturing Co. Ltd.'s Application, 26 RPC 428 at page 433, that 'the matter' should be looked at from a business and commercial point of view. Nevertheless it has been emphasised in various reported cases that the classification in the schedule to the Trade Mark Rules is no criterion as to whether or not two sets Of goods are of the same description." ' At page 5 of the above judgment, it has further been observed:-- "(I) In determining whether two sets of goods are of the same description various tests have been referred to in the reported cases. Consideration has to be given, e.g. To the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in
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the same shops over the same counter during the same seasons and to the same class or classes of customer, and whether by those engaged in the manufacturer and distribution of the goods they are regarded as belonging to one and the same trade. No single one of these tests is conclusive in itself. Now I think it may be specifically stated that the production of steel and the production of steel tools are two different industries; and in…
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