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Petitioner: MESSERS MONTGOMERY FLOUR AND GENERAL MILLS LTD. VS Respondent: REGISTRAR, TRADE JUDGMENT
Court Name: Sindh High Court Judge(s): Tufail Ali A. Rehman Title:MESSERS MONTGOMERY FLOUR AND GENERAL MILLS LTD. vs REGISTRAR, TRADE
JUDGMENT
Reported As: PLD 1973 Karachi 567 Result: Appeal dismissed Judgment JUDGMENT This is an appeal under section 76 of the Trade Marks Act, 1940, against the decision of the Registrar of Trade Marks, refusing the application of the appellants for the registration op a trade mark which had been opposed by the respondent No. 2, which is the Seven-Up Company of United States of America. 2. The facts which have given rise to this appeal are that on the 27th of April 1967, the appellant applied to the Registrar of Trade Marks for the registration of the Trade Mark '7 Up' in Class 30. The application was duly numbered in the Registrar's office as 47327. The reference to the class number is based upon rule 11 of the Revised Trade Marks Rules, 1963, made by the Government of Pakistan, in pursuance of the rule making power conferred upon it by the Act; that rule provides that for the purposes of the registration of Trade Mars, goods shall be classified in the manner specified in the Fourth Schedule to these rules. The goods enumerated in the class are "coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread biscuits, cakes, pastry and confectionary ices; honey, treacle, yeast, baking powder; salt, mustard, pepper, vinegar, sauces; spices; ice." The application of the appellant was, however, limited to "hard boiled sweets, candies and drops"; it is unnecessary for the to examine whether these would come under any of the goods enumerated in Class 30 since the Registrar and both the parties before me have assumed that it does. In accordance with the procedure prescribed under the rules the application was duly advertised and the respondents gave notice or opposition. The respondents are and were, at that time, the proprietors of two trade marks both in Class 32, the first
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being >even U p Registration No. 1583 and the second being 7 Up libel registration No. 28680. Class 32 enumerates the following goods :- "Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages." The actual registrations, however, namely, registrations No. 1583 and 28680, are for "Carbonated, non-alcoholic, non-cereal, maltless beverages sold as soft drinks and preparations for making such beverages" and "Soft drink beverages and syrups favour and extracts for making soft drink beverages all being goods included in Class 32" respectively. Subsequently, however, that is as from the 22nd October 1967, the respondents have also been granted registration in respect of all goods covered by Class 30 for the Trade Marks 7 Up and Seven Up by registration numbers 46715 and 46716 respectively. 3. It is an admitted position in this case that the respon--dents are a world-wide known company and that in Pakistan, particularly, over a long number of years they have manufactured and sold flavoured non-alcoholic carbonated water under the Trade Marks in question bur. Have not yet manufactured or sold candies despite the fact that they have obtained registration in respect of goods mentioned in Class 30. On the other band the appellants claim to have sold boiled sweets, candies and drops under various names even before the application for registration of trade mark and these include such goods under the name "Montgomery 7 Up Candies" but the respondents say, that there is no evidence of this and in any case vehemently deny that such sales have been either for along period or of any considerable volume. Upon this point the Registrar has held in favour of the respondents holding that, although the appellants have obtained the use of their mark since 1965, they have led no evidence upon the point. 4. Upon the objections raised by the respondents under section 8(a) and section 14(1) of the Trade Marks Act, the Registrar held in favour of the appellants. Finally, however, holding that the objection of the respondents under section 10(1) was valid inasmuch as the Trade Marks applied for by the appellants were identical with those registered in favour of the respondents and both were used on goods of the same description, hg rejected the application of the appellants and refused registra-- petition. The appeal is directed against this decision. 5. Learned counsel for the appellant Mr. Sharif Hussain, who has appeared before me in this appeal has argued first that the Registrar was wrong in holding that there was no evidence that the appellants have used the mark in question since 1965. He points out, among other things, to the affidavit of Shaikh Muhammad Shafi, Managing Director of the appellants which states that the appellants have been using the Trade Mark 7 Up since 1965 and that, by virtue of long and continuous use, the mark has become distinctive of the goods manufactured and sold by the appellants and denotes the goods of the appellants. Certain vouchers and accounts were also produced to show sales of sweets which were described as Seven Up. Mr. Fateh A.I Vellani, learned counsel for the respondent, on the other hand, points out that this affidavit and the other documents mentioned were filed by the appellants at the stage when they had only filed their application for registration and not after notice for opposition was given In order to appreciate the force of Mr. Vellani's contention it is necessary to refer to the procedure laid down by the rules for the determination of such matters before the Registrar of Trade Marks. Rule 22 provides that ail applications for the registration of a Trade Mark shall on receipt be acknowledged by the Registrar. After provision is then made for search for made Marks in respect of a goods already registered, rule 24 provides that if, on consideration of the application and of any evidence of use or distinctiveness or of am: other matter which the applicant may or may be required to furnish the Registrar, has any objection to the acceptance of the application or proposes to accept it subject to certain conditions, he shall communicative such objection or proposal in writing to the applicant. It is to be noted, therefore, that at this stage, long before any body has appeared in
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opposition to the application for registration, provision is made for evidence to be taken. The Registrar then after hearing the applicant makes his decision under rule 25. (I am not quoting the rules in extenso nor even referring to every thing which they provide for but only so much as is material for my present purposes). Now these rules, namely, rules 22 to 25 are all contained under the heading "procedure on receipt of application for registration of a Trade Mark"; then follows rule 26 which is irrelevant for our present purposes and thereafter begins a number of rules under the heading "advertisement of application". These provide for the manner in which an application for trade mark required or permitted to be advertised by section 15 of the Act, itself is to be advertised. It is only thereafter that we have a set of rules which are headed "opposition to registration", these rules provide for any interested party giving notice of opposition to the registration of a Trade Mark and rules 30 and 31, having providers for the time within which such notice of opposition is to be given and the form in which it is to be given including the particulars therein to be stated, rule 32 provides for a counter-statement to be made by the applicant in which he is required to state what facts, if any, alleged in the notice of opposition are admitted by him. It is only thereafter that under rule 33 is the opponent required to leave with the Registrar such evidence by way of affidavit as be may desire to adduce or to intimate to the Registrar in writing that he does not desire to adduce any such evidence. Role 34 then requires that within two months of the receipt by the applicant of the copies of the affidavit in support of the opposition the applicant shall leave with the Registrar similar evidence and deliver to the opponent copies thereof. There are other rules under this heading but none that are material for my present purpose. Mr. Vellani therefore, argues that the evidence that is required in question is the evidence which is to be given after notice of opposition is given To adopt his own language the rules envisage two different stages, one of which might be called the pre-trial stage and the other the actual trial of the case. The pre-trial stage is a matter which is entirely between the Registrar and the applicant and it is only when the Registrar has not refused to grant the trade mark or the applicant has accepted the limitations under which he will grant it that the question arises of any body else interested in opposing the grant of the application to be heard. Admittedly in this case such affidavits as has been filed by the appellant were filed in what might be called the pre-trial stage and there is no question of the respondent No. 2 having been given any copies thereof or making any answers thereto. On the other hand after notice of opposition actually is given it is the person who objects to give evidence first and the appellant then gives evidence, of course both being by affidavit. In this case admittedly the respondent No. 2 filed three affidavits; these are of John T. Tabor, Taj M. Yahya and Noor Elahi. The first of these is by an American citizen in the employment of respondent No. 2 and, starting with the fact that the company sold its present products for the first time under the Trade Mark 7 Up and Seven Up in 1928, proceeds to set out the volume of business which they have done not only in the United States of America but in various other countries, including Pakistan, and lists also a number of Trade Marks that it owns in the United States Trade Marks Registrations and it is worthwhile noticing that, with a few exceptions, all of these Trade Marks which number as many as 20, the word "Up" is a part of the Trade Mark. Neither by counter- affidavit nor in argument before me have the facts stated in this affidavit been disputed. The next affidavit is that of Taj M. Yahya, a Director of Messrs A & B Beverages Ltd., and be states that in the year 1962 his company entered into an arrangement with respondent No. 2 for a license to bottle and market a non-alcoholic beverage under the Trade Mark of respondent No. 2 that is to say 7 Up and Seven Up in the city of Karachi and then goes on to give some figures of the sales which are substantial amounting to over Rs. 80,00,000. Finally the affidavit of Noor Elahi is to the effect that he is a Director of Seven Up Bottling Company Limited, which appears to be a Pakistani company, and that this company is the appointed bottler and registered user in respect of the respondents' Trade Marks 7 Up and Seven Up in Pakistan and then goes on to give the sale figures during the various years from 1962 to 1968,
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the lowest figure in any particular year being over Rs. 23,00,000 and the highest being over Rs. 44,00,000. These affidavits also have not been controverted either before the Registrar or before me. Mr. Fateh All Vellani, therefore, argues that what the Registrar meant when he said that no evidence had been adduced by the appellants as to the use of the mark since 1965 by themselves referred to the evidence at that stage of the matter before the Registrar and, indeed, he argued that in the case of an opposition it is only this kind of evidence. That is to say evidence given after notice of opposition has been given. That can be regarded as evidence in the matter at all. I think Mr. Vellani is clearly right both upon the language of the rules in question and on general principles. I have already quoted the material portions of the rules and clearly they do envisage this evidence at a time when both the parties are before the Registrar and the Registrar is not dealing with the applicant alone. Even on general principles it is obvious that evidence must mean evidence given in the presence of the opposite side who is aware of the evidence being given and who is, therefore, in a position to counter it by cross-examination or any other method known to and permitted by the law. Certainly it seems clear that the Registrar understood the requirement of the evidence is this sense. The question is of course one of law and I am not bound by the Registrar's view of it but if there was any ambiguity, and I am far from holding that there was, I should certainly be inclined to give great weight, as has been given in the English cases to the views of the Registrar, whose daily work, it is to deal with matters of this kind. I, therefore, hold that the Registrar was quite right in finding that the appellants had not led evidence of user since 1965 or at all. 6. In this view of the matter learned counsel for the appellant suggested that I should remand the case for enabling the appellants to lead evidence but I do not think that that would be the proper course to persue in this case. In the first place it is not the appellants who are making a grievance of not having been allowed to lead evidence and indeed there is no question of the Registrar having refused any opportunity to the appellants of leading evidence. It is rather the appellant company itself which failed to lead the evidence in question. Cases can and should be remanded to the trial Courts for allowing a party to lead evidence when he has not had a proper opportunity to do so and when the failure to give him such an opportunity has materially affected the case. Here it. Is not even the appellants' grievance that he was not given an opportunity or an adequate opportunity to lead evidence. Besides this question is not tae real controversy between the parties and for me to remand the case when, in my opinion, upon other and more important questions the entire case can be decided, would only mean protracting the proceedings to no real purpose. I, therefore, see no reason for remanding the case in order to allow the appellants to give further evidence. Before the Registrar of Trade Marks. 7. Reliance is placed by learned counsel for the appellants upon section 8(a) of the Trade Marks Act and he argues that there can be no question of any likelihood of deception or confusion and, on this point, indeed, the Registrar has held in favour of the appellant upon the ground that the goods covered by the registered mark are yet to be offered for sale in the market meaning thereby that, although the respondent No. 2 has obtained a registration mark in respect of all goods covered by the enumeration in Class 30 they have yet to manufacture goods of that kind or to put them in the market. The Registrar gives no further reasoning on this point and I am not in entire accord with his finding. The expression "Trade Mark" is defined in section 2(b) of the Act in the following language :- " `Trade Mark' means a mark used or proposed to be used lit relation to goods for the purpose of indicating or so as to indicate a connection in the course of trace between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person;". It will be seen that the definition is so worded as to indicate a connection in the course of trade between the goods and some person having the right to use the mark and not merely a person
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having the right to use the mark in respect of goods of that particular kind. Section 8 of the Act itself is in the following language :- "Prohibition of registration of certain matter.--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 (c) be contrary to any law for the time being in force or to morality." It is obvious that clauses (b) and (c) are not attracted and indeed there has been no argument before me or before the Registrar based on these clauses; the only clause in question is (a). It seems to me that the deception which is sought to be avoided by Clause (a) is deception to the effect that a person might assume in buying particular goods that they have been manufactured by a company having the right to use the Trade Mark and no the description that the goods are certain other goods which are in fact manufactured by that company. In this view I think I am supported by the decision of Mr. Justice Waheeduddin Ahmed, then a Judge of the High Court, in S. M. Taufiq v. National Biscuit Company (PLD 1962 Kar. 355). In that case the appellants had been manufacturing biscuits since 1951 under the name "Nabisco" and applied for registration of the Trade Mark "Nabisco" but, during the pendency of this application, the respondent, namely, the National Biscuit Company, also filed an application for the registration of the same Trade Mark in respect of the same kind of goods; it was an admitted position in that case that the respondents had for a long time been using the Trade Mark all over the world including undivided India but never in Pakistan. On the other hand there was no question but that the appellant had been using the word Nabisco at least since 1951 in Pakistan and one of the questions that arose, and Indeed the principal question upon which the case was decided, was, whether by reason of the world-wide user of the Trade Mark in question by the respondent, the application of the appellant for registration ought to be refused. In holding in favour of the appellants his Lordship was pleased to observe :- "Thus the evidence of the parties disclose that whereas the respondents have not established any user or reputation of Trade Mark of Nabisco in Pakistan from 1947 onwards, the appellants have established the reputation and user of their Trade Mark in the territories of Pakistan, particularly in East Pakistan from 1951 onwards. In my opinion, if the appeals were to be decided on question of user or prior user the appellants should have succeeded. "But the question for consideration in these appeals is whether the Trade Mark "Nabisco" sought to be registered on behalf of the appellants is likely to deceive or cause confusion or otherwise be disentitled "to protection in a Court of justice in Pakistan. The utmost, and of that I have no doubt, the respondents have established is that the Trade Mark "Nabisco" has acquired international character of trade and that this Trade Mark is registered in neighboring India and several countries of the world on behalf of the respondents. But can this fact be taken into consideration for refusing registration of this Trade Mark in favour of the appellants? I have heard the learned counsel for the parties on this question at length and in my opinion unless it is proved that "Nabisco" Trade Mark sought to be registered on their behalf is likely to cause-deception or confusion in the local market it cannot be refused registration in Pakistan. This question was considered by the Rouse of Lords in Boord & Son (Incorporated) v. Bagots, Hutton and Co., Ltd., Earl Loreburn at p. 393 In this connection expressed himself in the following terms :- "In any case there can be no ground for saying that a Trade---Mark otherwise appropriate for registration here should be dented registration because it may be unfairly used some where else."
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"It seems to me that the whole contention rests on a mis--apprehension. For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard. For that purpose foreign markets are wholly irrelevant, unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods. If a manu--facturer having a mark abroad has made goods and supported them into this country with the foreign mark on them, the foreign mark may acquire in this country this characteristic, that it is distinctive of the goods of the manufacturer abroad. If that be shown, it is not afterwards open to somebody else to register in this country that mark, either as an importer of the goods of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign country, but that it is something which has been used in the market of this country in such a way as to be Identified in the market of this country hi such a way as to be identified with a manufacturer who manufactures in a foreign country. That. I venture to think, is the basis of the decision in the Appollinaris' case." This view was also expressed in a later English case in Gainses Animal Foods Ltd's Application Lloyd-Jacob. J., stated at page 179 that for the purpose of seeing whether a mark is distinctive or likely to deceive or not it is to the market of this country alone that one has to have regard. "In the light of the above discussion, the question arises whether a different view of the law should be adopted in construing the provisions of section 8 of the Trade Marks Act. Mr. Ibadat Yar Khan, the learned counsel for the respondents, has not been able to satisfy me why the above-- mentioned principles should not be followed in this country. It therefore appears to ire that for the purposes of registration under the Act, the Tribunal should ordinarily consider the user in this country to which the Act applies. If the case of the appellant is considered on this view of the law, there is not, a shred of evidence on the record to establish that the public or a common man in this country will In any way be deceived or confused while purchasing goods under the Trade Mark "Nabico" manufactured by the appellants. The respondents have no market of this Trade Ma-k In respect of any goods in this country. They have no reputation and as such there can possibly be no deception or confusion in the mind of the public of this country that the goods manufactured by the appellants belonged to the respondents. In these circumstances the respondents had not established a reputation for their mark upon which an opposition could be founded. The learned Deputy Registrar therefore was not justified in refusing registration of "Nabisco" Trade Mark in favour of the appellants. " So far as the applicant of the respondents for the regis--tration of Trade Mark "Nabisco" is concerned, it is bound to cause confusion and deception in the markets of Pakistan. There is ample evidence on the record to establish that from 1951 up to 1957, the appellants have sold goods of sizable value under the Trade Mark "Nabisco" in this country. Thus, the Trade Mark "Nabisco" has acquired reputation by sufficiently long user in Pakistan for the goods of the appellants. If the respondents' application is granted, it is bound to cause confusion and deception in repeat of a Trade Mark which 13 in long use on behalf of the appellants. In my opinion, therefore, the learned Deputy Registrar was not justified in granting the application of the respondents for the registration of "Nabisco" Trade Mark merely on the ground that this Trade Mark had acquired an international character or has been registered by the respondents in the "neighbouring country of India or in other parts of the world. The real question in such cases is always the position in the local market and the question before me is, always to be decided after taking into consideration this fact." 8. It is true, of course, that in this particular case the goods were in fact of the same kind, namely biscuits, but the principle upon which the learned Judge proceeded was not a question of a reputation established or a Trade Mark used in connection with particular kinds of goods. On the contrary the learned Judge was looking at the matter from the point of view of seeing whether the
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Trade Mark had been used and had acquired for the respondent a reputation in Pakistan as distinct from a reputation outside Pakistan. Not only did his Lordship not base his decision upon the identity of the goods in question but there are passages in the judgment which show clearly that that would have made no difference to his Lordship's decision. For instance, in the passage that I have quoted his Lordship observed "the respondents have no market of this Trade Mark in respect of any goods in this country. They have no, reputation and as such there can possibly…
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