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Miscellaneous Appeal No. 106 of 1964, decided on 3rd December 1967.

S. 8(a)‑Trade‑mark‑Regis tration‑Chemical preparation having particular effect on textiles, named "Resloom" manufactured by foreign company and used as its trade‑mark‑Inland company importing such preparation for using it on self manufactured textile piece goods and subsequently adopting word "Resloom" as trade‑mark of its own textile piece goods‑‑Application for registration of trade‑mark "Resloom" by both parties‑Likelihood of deception or confusion, not existence of reputation, important to examine in case‑Goods need nut be of same class‑Trade relation between both, if of such nature as to create impression that manufacturer of one might be manufacturer of the other and product of one might have been used in production of the other's goods, sufficient Impression, in circumstances, held, can be created that textile piece goods bearing name "Resloom" may have been treated with chemical preparation "Resloom"‑‑Foreign company's opposition accepted.

The real point is not whether the goods belonged to the same class or to different classes, but whether there is any trade relation between them of such a nature as to create an impression that the manufacturer of one might be the manufac turer of the other; or the products of one manufacturer might have been used in the production of the goods of the other manufacturer. From this point of view, there is a likelihood of deception and confusion if the chemical liquid, which is used for giving a finish to textiles and for protecting them against shrinkage hits the same name as the textiles themselves, because the impression can easily be created that the textile piece goods which bear the name of "Resloom" may have been treated with the chemical preparation of the other manufacturer.

Future confusion and deception are not relevant when the situation existing on the date of the applications is considered.

But it would be relevant for exercising discretion to make a choice between the two parties in respect of their future trade because, the likelihood of confusion and deception in the, event of the parties developing their respective trades is undeniable. While making such a choice the likelihood of future confusion or deception is a material consideration; what is, therefore, necessary is that discretion be exercised realistically.

Taking into consideration the definite likelihood of deception and confusion, the Court observed that discretion in the case should be exercised with proper care and such care led the Court to the conclusion that instead of dismissing the oppositions of both parties, discretion should be exercised in favour of accepting the opposition of the foreign company.

In re: Dunn's Trade‑mark 7 R P C 311; Evered & Co. Ltd.'s Applications 15 R P C 105; la re: An Application by Edward Hack for the Registration of a Trade‑mark 58 R P C 91; H. J. Lees & Son (London) Ltd .'s Application for a Trade mark 72 R P C 75 ; A. & F. Pears Limited v. Ghulam Haider P L D 1959 Kar. 154; corn Products v. Shangrila Food Products A I R 1960 S C 142 and In the case of "Players" Trade mark 1965 R P C 363 eel.

Dr. I. Mahmud for Appellant.

S. K.. Hasan Rizvi for Respondents.

Date of hearing: 3rd October 1967.

This is an appeal under section 76 of the Trade Marks Act, 1940, against the order of the Assistant Registrar of Trade Marks, Karachi, dated the 30th of May 1964, by which he exercised his discretion against the oppositions of both the parties who are the appellant and respondent No. 2 in these proceedings.

2. The facts which from the background of this appeal are not in question. According to counsel for the parties, the appellant is using the word "RESLOOM" as its trade mark on a chemical preparation, which is a liquid and is used' for treating textiles for giving a finish and resistance to shrinkage of such goods. This business of the appellant is carried on in the United States of America. The respondent imported 2,375 lbs. of this preparation from the appellant in December 1960 for using it on the textile piece goods manufactured by the respondent. Subsequently, the respondent decided to adopt the word "RESLOOM" as the trade mark of its own textile piece goods.

3. In order to make safe, the adopted use of the word, which was admittedly coined by the appellant, the respondent applied to the Registrar of Trade Marks, Karachi, for its registration as trade mark in January 1961. The respondent's application was numbered as 33856. The respondent alleged that it was using the word as its trade mark from July 1960. The application was advertised in the Trade Marks Journal No. 128 of September 1961. The appellant came to know of it, and applied for getting the word registered as its own trade mark in December 1961. The appellant's application was given the number 35875. The respondent's application was in Class 24, and that of, the appellant in Class 1.

4. The parties opposed one another's application: Evidence was produced in the form of affidavits, which disclosed that neither party had acquired any reputation for this trade mark in Pakistan market. The Registrar accepted the applications of both of them and rejected their oppositions‑--

5. The respondent has accepted the view of the Registrar and has not appealed from it. The appellant has appealed to this Court and taken the stand that its opposition should have prevailed resulting in the dismissal of the application of the respondent for registration of the word as its trade mark.

6. Dr. I. Mahmud appearing on behalf of the appellant has criticised the decision of the Assistant Registrar by raising the contention that the Registrar was wrongly influenced by the absence of reputation of both parties in the market of Pakistan for coming to the conclusion that oppositions of both of them be rejected. The relevant part of the Registrar's order is as follows:--

"Opposition and counter‑opposition in these proceedings can be allowed under section 8 of the Trade Marks Act, 1940, provided reputation of the opponents' mark in each case is established, which has not been done in either case. This factor is necessary so that once the public become familiar with the mark of the opponents they are likely to be misled due to the deception and confusion arising owing to the close similarity of the applicant's mark with opponents' mark. In an opposition proceeding under section 8 the onus of establishing sufficient reputation of the mark is upon the opponent and in the present cross‑oppositions the opponents in each case have failed to discharge this burden."

Counsel for the appellant took care to further elucidate that the trade mark of the parties related to different classes of goods; but, it could not be a sufficient ground for the conclusion that there was no likelihood of deception or confusion in terms of clause (a) of section 8 of the Trade Marks Act, 1940. In support of this contention, he has relied on:

(1) In re : Dunn's Trade Mark, 7 R P C 311,

(2) Evered & Co. Ltd.'s Applications 15 R P C 105,

(3) In re : An Application by Edward Hack far the Registra tion of a Trade Mark, 58 R P C 91,

(4) H. J. Lees & Son (London) Ltd.'s Application for a Trade Mark 72 R P C 75,

(5) A. & F.' Pears Limited v. Ghulam Haider P L D 1959 Kar. 154,

(6) Corn Products v. Shangrila Food Products A I R 1960 S C 142.

(7) In the case of "Players" Trade Mark, 1965 8 P C 363.

7. As to the objection that the trade mark had no reputation in Pakistan, counsel contended that the provision under which decision is to be made deals with likelihood of deception or confusion; therefore, what is important to examine is such likelihood rather than existence of reputation.

8. Counsel for the respondent, on the other hand, has disputed the proposition that there is a likelihood of deception or confusion if the same trade mark is used on goods of two different classes. Secondly, he has argued that absence of reputation on both sides should lead to the conclusion that there was no likelihood of deception or confusion, particularly, because the goods are of different classes.

9. The first part of the contention of counsel for the res pondent is not correct and this is clearly established by the precedents on which reliance has been placed by counsel for the appellant. They show that there was a possibility of confusion if the word "Black Magic" was used with reference to chocolates as well as with reference .to a laxative preparation which was quoted with chocolate. Similarly, the likelihood of deception and confusion was found to exist when the same trade mark was proposed to be used on textiles as well as on certain machines which were used in producing those textiles. The real point is not whether the goods belonged to the same class or to different classes, but whether there is any trade relation between them of such a nature as to create an impression that the manufacturer of one might be the manufacturer of the other; or the product of one manufacturer might have been used in the production of the goods of the other, manufacturer. From this point of view, there is a likelihood of deception and confusion if the chemical liquid, which is used for giving a finish to textiles and fort protecting them against shrinkage has the same name as the textiles themselves, because the impression can easily be created that the textile piece goods which bear the name of "RESLOOM" may have been treated with the chemical preparation of the other manufacturer.

10. The above‑mentioned likelihood of confusion is however not enough to finally dispose of this appeal, because it is not an answer to the objection accepted by the Assistant Registrar that neither of the two parties is enjoying any reputation in the market of Pakistan. This objection amounts to saying that, granting that there is ‑a likelihood of confusion by the use of the same trade mark on the goods of the opposing parties; how is that likelihood to come true if neither of them is enjoying any reputation The underlying idea in this argument iii that a trade must have a reputation before a likelihood of confusion and deception.

11. Dr. Mahmud has, on behalf of the appellant, replied that granting that there is no reputation and also granting that there is no likelihood of confusion at the moment, the question still remains as to in favour of which party the Registrar should have exercised his discretion. The Assistant Registrar failed to analyse the situation further after reaching the conclusion that neither of the two parties has any reputation. But supposing that there are two parties who have no business at present and apply for the registration of the same trade mark to be used on goods of different classes which have a trade connection which can create ‑confusion and deception, will it be right for the Assistant Registrar to reject the oppositions of both of them If he does so, then he would be right inasmuch as there was no confusion or deception on the dates on which the applications are made and oppositions are entered; but there are bound to be additional considerations when the question of exercising discretion for choosing between the two parties arises, particularly if it is clear that on some future date when the business develops, the possibility of deception and confusion is foreseeable. Future confusion and deception are not relevant when the situation existing on the date of the applications is considered. But it would be relevant for exercising discretion to make a choice between the two parties in respect of their future trade because, the likelihood of confusion and deception in the event of the parties developing their respective trades is undeniable. While making such a choice the likelihood of future confusion or deception is a material consideration; what is therefore necessary is that discretion be exercised realistically.

12. The factors which, according to Dr. Mahmud, weigh in favour of the appellant are that the appellant has coined the word "RESLOOM"; that the goods manufactured by the appel lant were imported by the respondent in 1960; the respondent, therefore, can be presumed to have regarded those goods reliable and useful enough to be used its textile piece‑goods. A year after using the products of the appellants on its own piece- goods the respondent decided to adopt that name itself. This situation makes the trade connection between the two classes of goods obvious. It also shows that the respondent has found adoption of the word which was coined by the appellant to be useful for its trade. In these circumstances,, if the word "RESLOOM" is allowed to be used by both. the parties as their trade marks on two different classes of 'goods which have a trade relationship inter se, should the discretion be exercised in favour of the appellant or the respondent In the above situation it does not appear to me to 134 correct to say that appreciation of the situation should be stopped after reaching the point that neither of the two parties has any reputation at present. I feel that analysis of the situation should be carried on further; and while taking into consideration the definite likelihood of deception and confusion, discretion should be exercised with proper care. Such care leads me to the conclusion that instead of dismissing the oppositions of both parties, discretion should be exercised in favour of accepting the opposition of the appellant.

13. In view of the above discussion, I accept this appeal and the opposition of the appellant against the application of the respondent.

14. The final conclusion, therefore, is that the application of the respondent bearing No. 33856 is rejected. The appellant will get the costs of these proceedings.

S. A. S. Order accordingly.

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