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Civil Appeal No: 8 of 1964 decided on 11th April 1966.

‑Trade mark, having distinctive requisites, used from before or propose to be used in future‑Can be registered‑‑Mere finding that applicant has not been using trade mark for number of years before‑Does not render application liable to rejection.

Abdur Rashid Khan for B. N. Choudhury for Appellants.

S. S. Haldar for Respondent No. 1.

‑The appellants before us filed an application on 15th November 1954, for registration of their Trade Mark before the Registrar of the Trade Marks, Karachi, in respect of coaltar, item No. 19 of the 4th Schedule of Trade Marks Act, 1940. Another application was presented by the respondents before the Registrar of Trade Marks, Karachi, on 19th June 1956, for regis tration of their trade mark. Notice of opposition on behalf of the S. B. Trading Co. against the application of the appellants was filed on 22nd January 1960. The appellants also filed a counter statement which is dated 10th November 1960. Affidavits were also filed by the consumers in respect of the‑ claim of the appellants but no affidavit was filed by the consumers on behalf of the respondents. In addition to the affidavit by the Manager the respondents filed some documents which were marked exhibits.

The matter was taken up for consideration by the Deputy Registrar of Trade Marks, Chittagong. He rejected the applica tion of the appellants on the ground that the appellants were guilty of making a fraudulent statement and that if the appellants' trade marks be registered, then the customers would be misled as the same was likely to cause confusion or deception amongst the substantial number of persons.

It is contended that in view of the provision of clause (2) of section 6 of the Trade. Marks Act, 1940, the application for registration of the petitioners' trade mark could have been rejected only when the petitioners had failed to prove any distinctive requisites for the, purpose.

Subsection (2) defines distinctive thus‑

"For the purpose of this section, 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 limita tions, in relation to use within the extent of the registra tion."

If this section 6 be read with section 14, it will be clear that registration can be effected in a case where the trade mark has distinctive requisites and has been in use from before or is proposed to be used in future.

The above being the position of law, it is further contended that the Deputy Registrar should not have refused the prayer for registration of the Trade Mark in question. We find substance in this contention.

Subsection (1) of section 14 provides:

"Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of register ing it shall apply in writing to the Registrar in the prescribed manner:

So on the above ‑ground alone namely the finding ‑that the petitioners have not been using the trade mark since 1947 the e application 'for registration of the trade mark cannot be rejected. .

Now having in view the findings arrived at by the Deputy Registrar that the trade mark for which an application has been made for registration was not in use, since 1947, whether the application can be, otherwise, entertained and trade mark registered. The Deputy Registrar has observed that if registra tion be allowed of the trade mark claimed to be belonging to the appellants, a substantial number of persons are likely to be confused and deceived inasmuch as the trade mark of the respondents is similar to that of the appellants. We are unable to accept this contention. We ourselves have gone through the two trade marks, one claimed by the appellants and the other claimed by the respondents, and we find no similarity in the least between these two trade marks. They are quite distinct from each other. None of them likely to be confused or to deceive if the two trade marks are used in any goods to be sold in the market.

In the aforesaid facts and circumstances, we cannot but set aside the order of the Deputy. Registrar of trade mark, Chittagong refusing the application of the appellants for registration of their trade mark.

We accordingly allow the appeal, set aside the order complained of and direct the Registrar of the Trade Marks to register the trade mark in question. Having regard to the facts, we direct the parties to bear their respective costs of this Court.

.‑I agree.

K. B. A.

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