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Miscellaneous Appeal No. 10 of 1971, decided on 1st March 1971.

Ss. 8 & 10‑--Phonetic expression of device‑--Owner of trade mark of device in shape of arrow object ing to registration of word "ERO" in respect of goods of same class on ground of both having phonetic similarity‑--Protection to device, held, extend to description of that device in language only when consumers ask for and think of goods in terms of its linguistic description‑--Connection in practices or mind of consumer between device and its phonetic expression not established‑--Protection granted to a device cannot be extended to its phonetic expression in circumstances of case.

The extension of protection from a device to the description of that device in language depends upon whether the consumers ask for and think of the goods on which the device appears in terms of linguistic description or not. If the word which describes the registered device has become the token of reference amongst the consumers for purposes of asking for and buying the goods, then the protection of the device should ordinarily extend to the linguistic description also. From this point of view there may be cases in which the protection of a registered device may extend to its phonetic expression and also cases in which it may not so extend.

I. Mahmood for Appellant.

This appeal under section 76 of the Trade Marks Act, 1940 is directed against the decision of the Assistant Registrar of Trade Marks dated the 4th of September 1970, by which he held that the opposition to the registration of the word ERO' as a trade mark could not be upheld.

. 2. Dr. I. Mahmood has contended in criticism of the decision that the Assistant Registrar of Trade Marks has not appreciated that protection resulting from the registration of a device extends to its phonetic expression and that in this case there was likelihood of a confusion arising to the disadvantage of the trade of the appellant if the word 'ERO' was registered.

3. The relevant facts are that the appellant is the manu facturer of well‑known Parker fountain pens. These pens have a clip of the shape of an arrow. This device has also been registered as a trade mark. The respondent is also a manu facturer of fountain pens and uses the word ERO as its trade mark on them. An application was made by the respondent for the registration of the word ERO' as the trade mark of its fountain pens to which opposition was entered on behalf of the appellant on the ground that although the word ARROW was not the registered trade mark of the appellant the expression of the device of ARROW in language had phonetic similarity with the word ERO' ; therefore, the registration of the word ERO' as the trade mark of the fountain pens of the respondent was likely to create confusion in the minds of the consumers and thus cause a loss to the appellant.

4. The basic contention of Dr. I. Mahmood in support of this appeal is that the registration of a device extends to the expression of that device in language; therefore, the word which is used in ordinary language for describing the device should also be held as protected in order to avoid confusion in the minds of the consumers. I feel that the proposition as formulated by counsel is too wide because the extention of protection from a device to the description of that device in language depends upon whether the consumers ask for and think of the goods on which the device appears in terms o1 linguistic description or not. If the word which describes the registered device has become the token of reference amongst the consumers for purposes of asking for and buying thel" goods, then the protection of the device should ordinarily extend to the linguistic description also. From this point of view there may be cases in which the protection of a registered device may extend to its phonetic expression and al o cases in which it may not so extend. Dr. I. Mahmood has referred to the case of La Society Anonyme Des Verreries De L'Etoile (11 R P C 142) in which the registration of the words "Red Star Brand" was considered to be sufficient for extending the protection against the registration of the device of a Star. A reference to that case would show that evidence was led in that case to prove that the goods were known as Star Brand and that confusion was therefore likely to be created in the minds of the consumers if the device of Star was not prevented from being used as a trade mark.

5. In this case there is absence of evidence to prove that Parker pens have become associated in the consumers' mind with the word ARROW. Dr. I. Mahmood has drawn my attention to two affidavits which were produced on behalf of the appellant. One of them is the affdavit of Dawood Ibrahim Majoo and the other is the affidavit of Muhammad Ismail Ahmed. Counsel has relied on the following contents of the affidavit of Dawood Ibrahim Majoo:

"(4) All writing instruments of the Parker Pen Co. display the ARROW clip which has been registered as a trade mark in Pakistan under No. 1585 dated 25th September 1948, in Case 16 in respect of "Pens, pencils and desk sets".

(5) The Parker Pen Company also uses the trade mark ARROW (word) in respect of fountain pens, ball pens and pencils as will appear from a specimen literature advertise ment hereto annexed marked Exhs. "A" and "A‑1".

(9) . . . The fountain pens and ball pens bearing the ARROW trade marked clip are purchased and recognised under the ARROW trade mark."

Paragraphs 4 and 5 do not constitute such evidence as may support the contention of counsel. The sentence of paragraph 9 on which counsel has relied and which has been reproduced above can hardly be said to be a satisfactory piece of evidence. There are no facts and figure in support of it. No copies or orders or of vouchers by which the goods were supplied are on the record. No reference to the trade practice of any particular place or of any trader or consumer has been made. The sentence is more in the nature of the expression of the view of the deponent unsupported by facts than anything more than that.

6. In the affdavit of Muhammad Ismail Ahmed counsel has drawn my attention to the last sentence of paragraph 4 which is as follows:

" . . . . . . . . . And when an order is placed on the telephone, the chances of confusion are likely to be more frequent."

It is presumed in the above sentence that orders are placed on telephone by using the words ARROW pens and not by using the words Parker pens. There is no justification for such a presumption.

7. Dr. I. Mahmood has also drawn my attention to two documents which have been produced as evidence before the Assistant Registrar of Trade Marks. They are marked "A" and "A‑1". The document "A" appears to be an advertisement of a ball pen, pencil and two pens. On the right side of the advertisement the words "PARKER ARROW" are printed in bold letters and under the two pens the words "ARROW PEN" are written in small letters. Counsel says that on the caps of the ball pen and pencil the word "ARROW" is engraved under the clips. On the basis of this evidence counsel says that the use of the word "ARROW" in connection with the trade mark of the Parker pens is established. The con clusion is not free from factual weakness inasmuch as the words "PARKER ARROW" which are printed in bold letters indicate that in this advertisement the word "ARROW" is not intended to stand a part of the word "PARKER". The argument of counsel that the word "ARROW" is written on the cap of the pen is not a sound one because as pointed out by the Assistant Registrar, a registered proprietor of trade mark is not entitled to claim the right of monopoly which is conferred on the registration of his mark with respect to the additions which he may make to the registered trade mark. The other document, namely, "A‑1" is an export price list ex‑U. K. Factory. In this price list two items are printed as follows:‑

Counsel says that on the basis of the above two entries Parker pens, pencils and ball pens are sold with reference to the word "ARROW". This inference of counsel from "A‑l" is not founded on any evidence relating to how the consumers refer to or think of the goods. A‑1 is only one page of an export list which was evidently intended for the use of wholesale dealers. It is, therefore, not possible to conclude from the page how the subject‑matter was introduced as a whole by the exporter even to the wholesales. It is obvious that it is not the wholesalers who are likely to be confused by superficial similarities. It is the consumer who is ordinarily not well informed and may be misled.

The necessary evidence has not been brought on record and an advantage appears to have been sought on behalf or the appellant by advancing the legal argument that protection granted to a device should extend to the phonetic expression of that device. This proposition as mentioned above is too widely stated and the appellant cannot take advantage of it because the required evidence to establish a connection in the practices or mind of the consumer between the device and its phonetic expression has not been produced.

In view of the above discussion, I agree with the conclusion at which the Assistant Registrar of Trade Marks has arrived and find no reason for taking a different view. The appeal is dismissed in limine.

Appeal dismissed.

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