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Miscellaneous Appeal No. 54 of 1976, decided on 8th September, 1979.

-- S. 8 (a) read with Trade marks Rules, 1963, rr. 30 to 37 Trade mark-Registration-Rules require parties to raise definite issues for contest and produce evidence accordingly-Opposing-party not taking any objection to registration of mark on basis of alleged geographical significance of mark but such objection raised only dur ing course of arguments and Registrar, Trade Marks, taking suo motu judicial notice of same and holding mark not registrable-Applicant for registration of mark, held, prejudiced and Registrar erred in taking note of objection at such stage.

-- S. 8 (a)-Trade mark - Registration - Words "Solo" and "Polo"-Word "Solo" more known for its dictionary meaning and its geographical significance little known even to educated class of public-Order of Registrar, Trade Marks refusing to register mark "Solo" on ground of its alleged geographical significance while admitting there being no similarity between two marks "Solo" and "Polo" and there being no likelihood of confusion and decep tion order in circumstances, set aside and mark "Solo" ordered to be registered.

Abdul Waheed v. Haji Abdur Rahim and another P L D 1973 S C 104 ref.

E. A. Nomani for Appellant.

Nerno for Respondents.

This appeal under section 76 of the Trade Marks Act, 1940, is directed against the order of the first respondent dated 4th May, 1976, which came to be passed in the background of the following facts.

2. The appellants are a company which carry on a worldwide business as leading manufacturers of Cigarettes and Tobacco products. The appel lant tiled an application, bearing No. 52244, for registration of the word "SOLO" as Trade Mark in Class 34 in respect of their "Cigarettes and Tobacco products", before the first respondent. The mark was advertised in the Trade Marks Journal No. 253 dated 1st February, 1972, whereupon the second respondent filed notice of opposition against the registration of the trade mark applied for. It was contended in the memo of opposition that the word "SOLO" was confusingly similar to their registered , POLO" mark as both the marks consisted of four letters and except for the first letters, "P" and "S" were identical: This it was alleged was likely to create confusion and deception in the mind of the intending pur chasers It was also contended that there existed phonetic and visual similarity between the words "POLO" and "SOL&' and in view of the apprehended confusion and deception amongst the purchasers the mark eras no registerable under section 8 (a) of the Trade Marks Act, 1940 (hereinafter referred to as "the Act"). The allegations of the second respondent were denied by the appellants in their reply to the notice of opposition actual it was contended that the registered mark of the second respondent consisted of distinct feature of the device of a Polo player in action in addition to the word "POLO" and the appellants' mark SOLO was different and distinguishable visually as well as phonetically and otherwise too both the words had distinct dictionary meaning.

3. Mr. F.A Nomani, learned counsel for the appellants, contended that while the first respondent had upheld the contention of the appellants that there was no similarity between the two marks and as such there was no likelihood of confusion and deception among the purchasers, yet he refused registration of the appellants SOLO mark on the ground of its alleged geographical significance. The learned counsel contended that the second respondent had neither taken any objection on the ground of any geographical significance of the word "SOLO" in the notice of opposi tion nor any evidence was led in that behalf. This objection was raised in the affidavit filed as required under rule 35 of the Revised Trade Marks Rules, 1963, and, in the circumstances, the objection, so raised, could not be treated as substantive objection. Thus the first respondent had taken action suo motu on the basis of the alleged geographical significance of the word 'SOLO' which was unjustified and uncalled for. Mr. Nomani relied upon a judgment of the Supreme Court in the case of Abdul Wakeed v. Haji Abdur Rahim and another (P L D 1973S C 104). In that case it was held that where name comprising of two syllables were need as trade marks, both having same words as suffix or second syllable, the distinction in such cases should always be the first syllable or the first portion of the names. On this consideration the words "sagon", "dagon" and "dragon" were held to be dissimilar.

4. The order of the learned first respondent shows, that the second) respondent did not take any objection to the registration of the mark in question on the basis of any alleged geographical significance of the same but it was, during the course of arguments, that their learned counsel had referred to the geographical ,significance of the word SOLO'. The learned first respondent, however, took suo mote judicial notice regarding the geographical significance of the word "SOLO" and held that the mark) was not registerable in view of provisions of section 6(1) (d) of the Act. There is force in the contention of the learned counsel for the appellant that the learned first respondent should not have taken suo motu notice of such belated objection raised by the second respondent regarding alleged geographical significance of the word "SOLO". The manner of filing of notice of opposition, particulars to be given therein and the procedure to be followed for giving evidence in respect of the opposition, are matters specifically provided for under rules 30 to 37 of the Trade Marks Rules, 1963. The significance of these rules is that the parties concerned should raise definite issues for contest and adduce evidence accordingly. In the instant case I am inclined to agree with Mr. Nomani that the appellants were prejudiced on account of suo motu action taken in the matter by the learned first respondent. On merits also it appears that on the face of it no geographical significance is attached to the word "SOLO", which is more known for its dictionary meaning and its geogra phical significance is little known even to educated class of public, not to -say of the ordinary public in Pakistan. In the Supreme Court case, referred to above, the question of registration of the word "Saigon" was left to the discretion of the Registrar even though the word itself had graphical significance and had come to be publicly known on account in the Vietnam. The Word "SOLO" has meaning and connotation of its own and in common parlance is understood as such, shorn of any known geographical significance.

5. For the reasons mentioned above, the appeal is allowed and the impugned order is set aside. In the result the opposition is rejected and the learned first respondent is directed to proceed to register the mark applied for by the appellants. As the respondents have not chosen to contest the matter, there will be no order as to costs.

Opposition rejected.

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