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Petitioner: JATCO KABUSHIKI KAISHA VS Respondent: REGISTRAR OF TRADE MARKS
Court Name: Sindh High Court Judge(s): Muhammad Tasnim Title: JATCO KABUSHIKI KAISHA vs REGISTRAR OF TRADE MARKS Case No.: Miscellaneous Appeal No,34 of 2004 Appeal No,34 of 2004 Date of Judgment:2010-03-22 Reported As: 2010 CLD 676 Result: Case remanded
JUDGMENT
JUDGMENT ' 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 Form TM-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 sections 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 trade-mark 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) and 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
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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 along with 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 Trade-Marks delegated the said case to Assistant Registrar of Trade-Marks 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 afore-said 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 31-1-2002 and was reserved for orders, thereafter the Registry vide its letter dated 22-5-2002 intimated the appellant that the afore-said 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 Hussain, 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 Trade-Mark JATCO has been rejected at the preliminary stage without issuing notice to proprietor of Trade-Mark concerned whose trade-mark was deemed to be similar to Trade-Mark applied for. (ii) That the Registrar of Trade-mark has wrongly applied and interpreted the provisions of section 8(a) of the Act in violation of rule laid down by the Honourable Supreme Court of Pakistan in the case of Seven-Up Company v. 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 v. Messrs Lakson Tobacco Company Ltd. 1992 SCM R 2323, (2) Messrs Colgate-Palmolive (Pakistan) Ltd. v. Assistant Registrar of Trade Marks PLD 1992 Kar. 15, (3) David Vaughan Racklin v. Deputy Registrar of Trade Marks, Karachi 1986 MLD 166, (4) Azad Friends and Company (Pvt.) Ltd. V. Deputy Registrar of Trade Marks PLD 1993 Kar. 571 and Seven-Up Company v. 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:--
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(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 Trade-Marks 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 v. Lakson Tobacco Company Ltd. And another PLD 1986 Kar. 482, (2) Erwin Mullar GMBH and Co. v. Assistant Registrar of Trade-Mark 2008 CLD 1003, (3) Transpak Corporation Ltd. v. The Registrar of Trade Marks 1991 M LD 658, (4) Kerly's Law of Trade Marks and Trade Names (Fourteenth Edition 2007), (5) Law of Trade Marks and Passing Off P. Narayanan (Fifth Edition, 2000), (6) Law of Trade Marks and 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 and Geographical Indications by K.C. Kailasam and Ramu Vedraman 2003 Edition Page 223, (9) UNI Lever PLC. V. Al-Ameen Industries 2003 CLD 623, (10) Transpak Corporation Limited v. The Registrar of Trade Marks 1991 M LD 658, (11) The Law of Trade Marks and Passing Off by Dr. S. Venkatswa ran (Fourth Edition 1963) (Reprint 1999), (12) Ekhlas Ahmad v. DAE Health Laboratories Ltd. 1980 SCM R 625, (13) Senith Laboratory (Pak.) Ltd. v. Messrs British Drug House Ltd. PLD 1970 Dacca 772, (14) The Welcome Foundation Ltd. v. Khawar and others 1990 SCM R 561, (15) Messrs Al-Anis Laboratories v. Messrs Al-Chemist and another 1987 M LD 2823, (16) Bandanawaz Ltd. v. Registrar of Trade Marks, Karachi and another PLD 1967 Kar.942, (17) Law of Trade Marks and Passing Off by P. Narayanan (Fifth Edition paras 17-16 page 224), (18) Crescent Pencils Ltd. v. Indus Pencil industries Ltd. And another 1989 CLC 2005, (19) Seven-Up Company v. Kohinoor Thread Ball Factory PLD 1990 SC 313 and (20) Abdul Wahid v. 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 trade-mark JATCO has been rejected at the preliminary stage without issuing notice to trade-mark concerned whose trademark was deemed to be the similar to trade-mark 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 Messrs Colgate-Palmolive (Pakistan) Ltd. PLD 1992 Kar.15 a learned Single Judge of this Court while dealing with the issue in hand has held:-- ...In the Supreme Court case Messrs 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 Messrs 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 trademark "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 and Company (Pvt.) Ltd. PLD 1993 Kar.571 a learned Single Judge of this Court while dealing the issue in hand has held as under:--
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"Mr. Sultan Ahmad Shaikh invited my attention to cases of Sunbeam Motor Car Company Limited (33 C.P.C. 397), British Cycles and Motorcycles Manufacturers and Traders Union Limited 40 C.P.C. 226 and Thomas Bear and Sons (India) Limited v. Prayag Narian and Jagennath 58 C. P. C.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 9 PLD 1973 SC 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 therefore 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 v. Messrs Lakson Tobacco Company Ltd. 1992 SCM R 2323 the Honourable 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 decisions 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 Miscellaneous. Appeal No,42 of 1987 (Lakson Tobacco Company Limited v. The Assistant Registrar of Trade Marks-II and Miscellaneous 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 M LD 1666 relied on in the impugned judgment and a judgment of the Bombay High Court in Miscellaneous 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 trademarks 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 trade mark prematurely without advertising the application has been consistently held as improper and the practice was deprecated. The Honourable 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 Honourable 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 trade-mark 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.
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17. Ms. Amna Salman, learned counsel for the appellant, while making her submissions on Points Nos.(ii) and (iii) noted hereinabove has submitted that mark applied for is entirely different than the registered trade-mark already in the field. She further added that trade-mark JATCO is visually and phonetically not similar to trade-mark JACO already registered under the Act and shall not cause any confusion and deception to general public. The trade-mark JATCO is entirely different than the already registered trade-mark 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 trade-mark. She further added that the appellant's mark has been applied for automobiles, business, 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 trade-mark 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 Honourable Supreme Court of Pakistan reported as Seven-Up Company v. Kohinoor Thread Ball Factory and others PLD 1990 SC 313. The relevant observation of the Honourable Supreme Court appears at pages 344-345 which are quoted hereunder:-- "Our statute law recognizes and also protects trademark in relation to goods, and not independently of the goods. Therefore, one is justified in claiming protection for a particular Trade- Mark only if it is related to a particular goods 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 fikelihood 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 Honourable 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 Honourable 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 Honourable Supreme Court on the issue.
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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 Honourable Supreme Court of Pakistan reported as Messrs Airport Support Services v. The Airport Manager, Quaid-e-Azam International Airport, Karachi and others 1998 SCM R 2268 relevant appears at page 2277 which reads as under:-- "The doctririe has further been recognized and augmented by the recent insertion of section 24-A in the General Clauses Act,. 1897, which declares 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 trade-mark of appellant except mentioning sections 10(1) and 8(a) of the Act. It clearly violated the above judgment of Honourable 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 Messrs Colgate-Palmolive (Pakistan) Ltd. v. Assistant Registrar of Trade Marks PLD 1992 Kar. 15 wherein it has been observed as under:-- "....In the Supreme Court of Pakistan as Messrs 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 trademarks as proposed by Messrs 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 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 good any mark identical with the mark sought to be registered or so nearly resembling it as to render it
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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 reliedupon the cases (1) Philips Morris Incorporated v. Lakson Tobacco Company Ltd. And another PLD 1986 Kar. 482, (2) Erwin Mullar GMBG and Co. v. Assistant Registrar of Trade-Mark 2008 CLD 1003, (3) Transpak Corporation Ltd. v. The Registrar of Trade Marks 1991 M LD 658, (4) Kerly's Law of Trade Marks and Trade Names (Fourteenth Edition 2007), (5) Law of Trade Marks and 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…
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