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Petitioner: SHAHID MIRZA VS Respondent: MERLONI FINANZIARIA S.P.A. and another
Court Name: Sindh High Court Judge(s): Syed Haider Ali Pirzada Title: SHAHID MIRZA vs MERLONI FINANZIARIA S.P.A. and another Case No.: Miscellaneous Appeal No. 24 of 1986 Date of Judgment:1991-07-11 Reported As: PLD 1991 Karachi 425 Result: Appeal dismissed
JUDGMENT
JUDGMENT ' Dated 20-2-1986 rejecting the application and allowing the first respondent's opposition. ' The facts leading to the filing of the above appeal are that the appellant is the proprietor of Trade Mark ARISTON label wherein the word ARISTON' has been written in stylized manner. The case of the appellant as set out in the memo of appeal is that the appellant is using the aforesaid trade mark since 1981 in respect of "Gas storage, Water heaters, electric water coolers, Desert coolers (Room coolers), Gas room heaters, stoves and burners". On 22-11-1981 the appellant applied for the registration of his Trade Mark `ARISTON' Label in respect of "Gas & Electric Water Heaters, cooking ranges, Gas room heaters, stoves burners, all being goods included in class 11". The application was numbered as 75532. The application was opposed by the first respondent, Merloni Finanziaria S.P.A. (an Italian Joint Stock Company), Italy on the sole ground that the first respondents are the world's renowned manufacturers and merchants of inter alia kitchens,' hot plates, refrigerators, freezers, washing machines, dish washing machines, bath tubs, wash basins etc. The case of the first respondents, as set out in that opposition is that the Trade Mark `ARISTON' has been used by them in respect of the goods covered by their Application No. 81376 since 1958 in Italy and since 1962 around the world. The Trade Mark `ARISTON' has been projected widely by them or their authorised agents/representatives as a result of which the Trade Mark `ARISTON' is exclusively associated with them and by virtue of such promotion and use in Pakistan since 1974, it has become distinctive of their products and the average buyer is able to recognize it through identity park `ARISTON' of the first respondents' company. The first respondents are bona fide entitled to claim use of the Mark `ARISTON' in Pakistan since 1974 in view of the fact that their products were actually imported in Pakistan under personal baggage scheme in 1971; that the Trade Mark `ARISTON' of the first
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respondents is pending registration under No. 81376 in class 11 as from 14-12-1983 in respect of refrigerators, freezers, bath tubs, wash basins, shower tubs, electric operated water heaters, gas operator heaters, water heating devices as far as included in this class, ovens, cooling plates as far as included in this class, prefabricated modular units for bath rooms as far as included in this class. Also another application for `ARISTON' in Urdu is pending under No. 83416 in class 11 for the same goods. ' The case of the first respondents is that the appellant's trade mark is identical to the Trade Mark ARISTON' of the first respondents and is in respect of the same goods or goods of similar description in respect of which they are worldwide proprietors and users of the Trade Mark `ARISTON' including Pakistan. They prayed that the Registrar should refuse the appellant's application in the exercise of his discretion under section 14(1) of the Trade Marks Act, 1940 (hereinafter referred to as the Act). ' After hearing the parties and considering the affidavits filed by the parties, which comprised of two affidavits, that is Vittorio Merloni and Abdus Salam on the side of the first respondents and the affidavits of Shahid Mirza, Asif Baig and Habibullah on the side of the appellants, the learned Deputy Registrar of Trade Marks, by the impugned order, allowed the opposition and refused the trade mark application of the appellant. ' The learned Deputy Registrar held that the mark sought to be registered by the appellant is similar and is likely to create confusion and deception in the market. He was of the opinion that the mark was not registrable because of the provisions of section 8 of the Act. He was further of the opinion that the adoption and use of the mark by the appellant is not honest and he cannot claim to be proprietor of this mark under section 14(1) of the Act. It was on these grounds that he made the order of refusal against which the present appeal has been preferred. ' I have heard Mr. Sultan Ahmed Shaikh, learned counsel for the appellant and Mr. Ashraf Ali, learned counsel for the first respondents at length. The second respondent though served, remained absent. ' The main points that were debated before me are (1) whether section 8(a) operates as bar to the registration of the appellant's mark?; (2) whether the appellant is entitled to concurrent registration under section 10(2) of the Act; (3) the procedure followed by the Trade Marks Registry was irregular calculated to cause prejudice to the appellant. ' It is obvious that the burden of proving that the mark in respect of which registration is sought, is entitled to go on the register, is on the appellant and if there should be any doubt in the matter, the application will have to be refused, and that the burden or onus becomes heavier still when the Deputy Registrar has exercised his discretion and come to the conclusion that the mark in question is deceptively similar or identical with the first respondent's mark and the appellant's mark is sure to deceive or cause confusion. Unless the Deputy Registrar has gone clearly wrong in his perspective of approach, his decision, ought not to be lightly interfered with. ' I shall now take up the first question as to whether section 8(a) operates as a bar to the registration of the appellant's mark? While dealing with this question, it is necessary to extract the relevant provisions of section 8. Section 8(a) reads as under:- "8. 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 (c).. ' The facts relating to Application No. 75532 are as follows. This application was filed on 22-11-1981. In the application, he claimed user of the mark since 1980. The appellant in his affidavit claimed user since 1981.
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' The main ground on which the learned Deputy Registrar of Trade Marks refused to register the trade mark is that there is similarity. I have been taken through a number of decisions by both the sides, each supporting its own stapd. It may be frankly stated that it is difficult to deduce any principle of law from these decisions. The decisions have been rendered on the facts of the case and some times appear to be irreconcilable. In the circumstances, I would follow the principles laid down in by the use of mark or a name, the mark at the date of the application for registration if used in a normal and fair manner in connection with any of the goods concerned by the proposed registration, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons (see 38 Halsbury's Laws of England pp. 342, 543). ' The facts relating to Application No. 75532 are as follows:-- ' This application was filed on 22-11-1981. In the application, the appellant claimed user of the mark since 1980. He claimed in his affidavit user since 1981. Thus there is satisfactory evidence to show that the appellant claimed user since 1981. The statements made in the affidavits were contradictory to the statement made by the appellant in his application. In any case, the facts as appearing from the affidavits and admitted before me, only must lead one to the conclusion that the user was since 1981. ' With introductory words on the question of user, I now pass on to the consideration of the evidence as to user which has been adduced in this case. Now it is well-settled that in the case of all applications for registration of Trade Marks, including opposed applications, the rights of the parties are to be determined as at the date of the application for registration. The evidence which is rendered before the Registrar is normally by way of affidavits of persons who are competent to testify to the user of the particular mark (See section 70 of the Act). The principal affidavit on behalf of the appellant is of Shahid Mirza, dated 11-8-1985. It appears from the affidavit that he has been using the mark since 1981. The supporting affidavits of Asif Baig and Habibullah also show that the appellant has been using the mark since 1981. The principal affidavit on behalf of the first respondents is of Vittorio Merloni dated 18-11-1984. It appears from the affidavit that Mr. Vittorio Merloni has been the Managing Director of the first respondents since 1959 and the Trade Mark ARISTON' has been used by them in Italy since the year 1958 and in Pakistan the said mark has been vested to them since 1974. The Trade Mark ARISTON' is world famous in respect of the goods manufactured by the company or under their authority (See para. 4 of the notice of opposition). Section 6 of the Act prescribes the kinds of trade marks which may be registered. Subsection (2) of section 6 states that for the purposes of this Act, the expression "distinctive" means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration. ' It should be necessary to consider the question as to whether there can or there cannot be a property in a trade mark. In Collins and Co. v. Brown (1857) 3 K&J 423 (426) = 69 ER 1174 V.C., Page- wood observed: "It is now settled law that there is no property whatever in a trade mark, but that a person may acquire a right of using a particular mark for articles which he has manufactured to the exclusion of everybody else." ' The following passage from the judgment of Sir John Romilly in Hall v. Barrows (1862-63) 32 L.J. Ch. 548, has since been accepted as a correct statement of law on the point:-- "It is clear from a variety of decided cases, that a manufacturer who has originally stamped his goods with a particular brand, has a property in his mark at law, and can sustain an action for
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damages for the use of it by another. It is also clear that Courts of equity will restrain the use of it by another person." ' Sir John Romilly observed in the same case as follows:-- "It has sometimes been supposed that a manufacturer can only acquire such a property in a trade mark as will enable him to maintain an injunction against the piracy of it by others, by means of a long-continued use of it, or, ,t6ast, such a use of it as is sufficient to give it a reputation in the market where such goods are sold. But I entertain great doubt as to the correctness of this view of the case. The interference of a Court of equity cannot depend on the length of time the manufacturer has used it. If the brand or mark be an old one, formerly used, but since discontinued, the former proprietor of the mark undoubtedly cannot retain such a property in it, or prevent others from using it; but, provided it has been originally adopted by a manufacturer, and continuously, and still used by him to denote his own goods when brought into the market and offered for sale, then I apprehend, although the mark may :rot have been adopted a week, and may not have acquired any reputation in the market, his neighbours cannot use that mark. Were it otherwise, and were the question to depend entirely on the time the mark had been - used, or the reputation of it had been acquired, a very difficult, if not an insoluble inquiry, would have to be opened in every case, namely, whether the mark had acquired in the market a distinctive character denoting the goods of the person who first used it. The adoption of it by another is proof that he considers that at that time it is likely to become beneficial; and if the manufacturer who first used it were not protected from the earliest moment, it is obvious that malicious and pertinacious rivals might prevent him from ever acquiring any distinctive mark or brand to denote his goods in the market by adopting his mark, however varied, immediately after its adoption or change by the original user of it. This evil would not be obviated by putting his name in full, for if the name of the manufacturer was a common one, it would be difficult for him to point out to the public what goods were or were not manufactured by him." ' The question as to what amount of user of a mark is necessary to invest the proprietor thereof with the right to use it to the exclusion of others was considered in Nicholson and Sons Ltd. v. Bass, Ratcliff and Gretton Ltd. (1931) 48 RPC 227 by the Court of Appeal in England. In that case, an application for registration of a triangle mark used prior to 13th August, 1875 was made and the question for consideration of the Court related to the construction of a phrase "a trade mark in use" before 1875, on the assumption that Nicholson and Sons Ltd., had failed to establish that the triangle mark had 'become known and recognized by the public concerned as a whole as being their trade mark. Lord Justice Lawrence after reviewing several authorities observed at page 251 as follows:-- "Be that as it may, however, I am clearly of opinion that no evidence of recognition by the public is required in order to prove that a distinctive mark was in use as a trade mark before 1875. What is required for that purpose is proof that the mark before that date was in fact used as a Trade Mark, that is, was used by the trader in his business upon or in connection with his goods, and it is not necessary to prove either the length of the user or the extent of the trade. In other words, the character and not the length or extent of user is the only thing that has to be established. Ever since Lord Cottenham in Millington v. Fox (1838) 3 M & Cr. 338, decided that fraud was not an essential ingredient in order to obtain an injunction to restrain infringement of a trade mark, it was recognised by Courts of Equity that there was a right of property in a trade mark, and that such right did not depend on length of user or reputation in the market. Before the Act of 1875 it had been definitely established that the only essential quality for constituting property in a trade mark (unobjectionable in itself) was that it should have been used by the proprietor in his business upon or in connection with some vendible article."
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' These observations of Justice Lawrence A well as similar observations of Justice Romer in the case cited above were approved by the House of Lords in Bass, Ratcliff and Gretton, Ltd. v. Nicholson and Sons Ltd. (1932) 49 RPC 88. Lord Russel of Killowen in this connection observed at page 107 as under:-- "Nor is it in my opinion necessary in this connection to establish that the mark has been recognised by the public as a mark distinctive of the user's goods. The reasoning of Lord Justice Lawrence and Lord Justice Romer satisfies me upon this point." ' These observations of Lawrence, L.J. Were approved by the House of Lords in "Bali" Trade Mark (1969) 472. Lord Upjohn in this connection observed at page 494 as follows:-- "My Lords, I have set out the changes in section 11, for in spite of the changes of nomenclature over the years these vital words, upon which counsel for Bali pins his faith, must take some colour from the original Act of 1875, and for this reason, too, it seems to me relevant to consider the common law relating to trade marks before 1875. This was most lucidly explained in the judgment of Lawrence, L.J. In the Court of Appeal in Nicholson and Sons' Application (1931) 48 RPC 227 at 252. His judgment made it clear that, in his view, no evidence of recognition by the public was required in order to prove that a distinctive mark was in use as a trade mark before 1875. He quoted from the judgment of Sir John Romilly in Hall v. Burrows (1862) 32 L.J. Ch. 548 containing this passage which draws a clear distinction between the use of a trade mark and the essence of a passing off action." ' He further observed: "It may be that Sir John Romilly went too far in saying user for a week would be sufficient; that must be a matter of fact and degree, but it illustrates the point to which I shall return, that a trade is only entitled to protection for a mark which he has in use at the relevant time. Then, after quoting some further authorities, Lawrence, L.J. When on (at page (sic) disapprove the statement of Lord Esher (sic) chards v. Butcher (1891) 2 Ch. 522 who held that to constitute a trade mark you must show that the market accepted it as a distinguishing mark of the trader's goods. In this disapproval he was expressly upheld on appeal to the House of Lords (1931) 49 RPC 88 by Lords Buckmaster, Russell and Macmillan." Thus it will be seen that in case of distinctive mark within the meaning of the Act, right to the exclusive use thereof can be acquired immediately on that mark being used as a trade mark i.e. Used by the trader in his business upon or in connection with the goods and it is not necessary to prove either the length of the user or the extent of the trade. It may be noted that the word "Ariston" in this case is a distinctive mark and, therefore, it followed that if it is shown that this mark was used by the first respondents as a trade mark in this country upon or in connection with their products even prior to the use of that mark by the appellant in 1981, and if there is no evidence to show that this mark was abandoned by them, it would be entitled under section 14 of the Act to apply for registrgion of that mark as their trade mark and also to oppcise an application made by any other trader for the purpose of registering that mark in his name. ' Registration under the Statute does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout the country and it established the record of facts affecting the right to the mark. Priority in adoption and use of a trade mark is superior to priority in registering. ' Going back to the facts of this case, the mark "ARISTON" is undoubtedly an old one so far as the first respondents are concerned, inasmuch as they have been using it on their products for long many years and in several countries of the world. But so far as this country is concerned, it was a new one at the time when their products with that mark were first imported and, being a distinctive mark, they acquired a right to use it to the exclusion of all others, and became entitled to resist registration thereof by any one else. As a matter of fact, the first respondents could have
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straightaway applied for registration of the mark without ever using it on their goods in this country under section 14 of the Act as a mark proposed to be used by them in connection with their products. As it happened, however, the first respondents did make the applications for the registration of the mark. The applications were registered as 81376 dated 14-12-1983 in class 11 claiming user since 1974. The other applications were registered as 83416, 83418, 83415, 83413, 81369, 81368 and 81371. Some of the applications have already been accepted for registration. ' I am of the view that the first respondents which on the affidavits are shown to have extensive sales of their products in many countries of the world under the mark `ARISTON' which is also registered as a trade mark in several of these countries, was in use in Pakistan since 1974 as appears from the affidavits and evidenced by the invoices. Admittedly the appellant had not used this mark `ARISTON' at any time prior to 1981. ' The first respondents' objection to the registration of the mark in question falls in clause (a) of section 8. It may fall under that Clause because by reason of the identity of the mark `ARISTON', there is phonetic similarity. ' In a case reported as (1898) 15 RPC 105, the Court found that the Eastman Company had invented and had for some years used the word 'Kodak' in connection with their goods and especially for cameras; and the word occurred in all their registered trade marks. The company had made a speciality of cameras suitable for bicyclists and the appliances for fixing the same to bicycles and had largely advertised "Bicycle Kodaks". The opponent company had applied for and obtained registration of the word 'Kodak' for bicycles. The Eastman Company and the Kodak Co. Ltd., applied foi an injunction to restrain the defendants from carrying on the business under the name of Kodak Cycle Company Ltd. And from passing off their goods as the goods of the plaintiffs. The Court held that the word 'Kodak' had become identified with the Eastman Company and with their goods, that the evidence showed a close connection between the bicycle and photograhic trades, that registration had been obtained by an untrue statement to the Registrar, that the defendants were trying to get the benefit of the reputation of the Eastman Company and that the trade mark must be expunged as being calculated to deceive. ' In the matter of an Application by Edward Hack for the registration of a trade mark (1941) 58 RPC 91, the application was for registration of the words `Block Magic' in respect of laxatives, which was opposed by the proprietors of the Mark 'Black Magic' in respect of 'Chocolate & Choclates'. The Court held that there was a risk of confusion in that some persons would be likely to think that the two 'Black Magic' preparations were made by the same manufacturers, and others to wonder if this might be the case. As a result, the registration was refused. In Seven-Up Company v. Kohinoor Thread Ball Factory and 3 others PLD 1990 SC 313, it was held as follows at page 345:- "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 of their sale are also different. With so many variables, all pertaining to the goods and consumers thereof, the mere identity of the trade mark cannot justify our interference in the conclusions drawn by the Registrar and the High Court, nor can such interference be sustained on the plain words of the statute. Therefore, the appeals, Civil Appeals Nos.K-32, K-33, K-34 of 1977 and K-83 of 1978 are liable to be dismissed and are dismissed with costs. ' As regards "Pan Masala" (Powdered Supari) and Sweet and Scented Supari, there are two conflicting judgments of the High Court. The fact that the Company "7-Up" is a multinational of international repute in the market for beverages and for that reason not likely to engage itself in trading in such an indigenous product may academically be sound for a marketing analyst but
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really of no or very little concern to the class of consumers served by these products. Their sale points and outlet points are quite often the same. The consumers served are largely of the same category. Both the products though classified differently for the purpose of trade mark fall, from consumers' point of view, in the same category of light refreshment or "Pep" preparations. Their features do make out a case of there being likelihood of confusipn or deception with regard to their source. The applicants for this registration mark had a wide and open field to choose from. They decided upon the trade name of another which also happens to be name of the company which has heavily invested in that trade name and goodwill appurtenant to it. With that real likelihood of deception and confusion it was clearly a case where registration should have been refused." ' In Messrs Alpha Sewing Machine Company v. Registrar of Trade Marks and another PLD 1990 SC 1074 the appellant applied for registration of Trade Mark 'Philip' for sewing machines. The respondent which is an International Limited Company and which owned and controlled international group of companies, opposed the registration of the trade mark 'Philips' and stated that it was the proprietor of the trade mark 'Philips' which had been…
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