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Before Saleem Akhtar, J
SUNKIST GROWERS INC.-Appellant
versus
Messrs KARACHI AEROSOL CO. LTD. AND AN07HER Respondents
Miscellaneous Appeal No. 49 of 1983, decided on 16th November,
1986.
(a) Trade Marks Act (V of 1940)-
-- S. 76-Trade Marks Rules 1963, R. 84-Trade mark-Comparison-Confusion and deception in identical trade marks in two different goods - Whether confusion and deception which might be caused by two similar or identical trade marks in respect of two different goods could be determined on basis of remote possibilities and exceptional circumstances and abnormal conditions, one has to take into consideration normal surrounding circumstances, possibilities and probabilities and average intelligent persons with reasonable apprehension and proper eye-sight-Probable purchaser should be person of average intelligence taking care to at least observe prima facie facts floating on surface and not those who would not take care even to look at it-Customer should not be of phenomenal ignorance or extraordinary defective intelligence-Error by a person extremely careless and without proper understanding could not be made a yardstick for judging - confusion and deception while comparing two marks.
(1946) 63 R P C 19 ref.
(1905) 22 R P C 601 ; Henry Thorne & Co. Ltd. v. Engen Sandow (1913) 30 R P C 366 ; (1902) 19 R P C 505 ; Clark v. Sharp 15 R P C 141 ; Glaxo Laboratory Ltd. v. Assistant Registrar, Trade Marks P L D 1977 Kar. 858 ; Thomes Bear & Sons (lndia) Ltd. v. Paryag Narain A I R 1940 P C 86 ; Coca Cola Co. of Canada v. Pepsi Cola Co. (1942) 59 R P C 127 and National Sewing Thread Co. v. James Chadwick Bros. A I R 1953 S C 357 rel.
(b) Trade Marks Act (V of 1940)-
-- S. 76-Trade Marks Rules, 1963, R. 84-Trade mark-Identical trade marks or their similarity, held, would not necessarily lead to conclusion that they were likely to cause confusion and deception to purchaser Nature of goods, reputation acquired by registered trade mark, extent that purchaser would consider that goods with trade marks proposed to be registered were products of proprietor of registered trade mark, nature of customers, trade channels and likely confusion among a substantial number of purchasers has to be kept in view.
Soney Kabushiki Kaisha v. Registrar of Trade Marks and another P L D 1978 Kar. 161 rel.
(c) Trade Marks Act (V of 1940)-
-- S. 'i6-Trde Marks Rules, 1963, R. 84-Trade mark-Respondent applying for registration of trade mark comprising of word 'Sunkist' for medical and surgical plaster and disinfectant whereas appellant's trade mark 'Sunkist' registered in respect of all kinds of foods and ingredients of food - Surgical plasters and disinfectants neither similar in nature nor even resembling with appellant's goods and completely different from fresh fruit and fruit products - No possibility of deception or confusion, being caused to public, existing - Appeal against order of authorities registering trade marks of respondents dismissed in circumstances.
Kaiser Jeep Corporation v. Saber Saleem Textile Mills Ltd. P L D 1969 Kar. 376 ; Messrs Bengal Friends & Co. v. Messrs Government Benode Saba & Co. P L D 1969 S C 477 and Pakistan General Stores, Karachi v. Messrs Cooper Incorporated, Karachi P L D 1973 Notes 61 at p. 82 rel.
S. Shaukat Ali for Appellant.
Ibrahim Peshorl for Respondents.
Date of hearing : 4th November, 1986.
The respondent applied for registration of its trade mark comprising of the word 'Sunkist' in class 5 in respect of medical and surgical plasters, disinfectants and insecticides'. The appellant filed objections on the ground that it is carrying on for many years past a world-wide reputed business as a well-known manufacturer and merchant of foods and ingredients of foods of high quality, under the fanciful and invented trade mark 'Sunkist'. The word 'Sunkist' has been used for considerable number of years on a substantial scale all over the world including Pakistan, in respect of all kinds of food and ingredients of food. By virtue of enormous publicity by various means of publication the trade mark 'Sunkist' has become very famous all over the world including Pakistan and has acquired a great popularity among the trade and public. The appellant's trade mark 'Sunkist' has been registered in many countries of the world including Pakistan. In Pakistan it has been registered at No. 19009 on 29-8-1952 in class 29 in respect of all kinds of foods and ingredients of foods, which is still in force. In support of the opposition, the appellant submitted statutory declaration of its President, Vice -President, Marketing Service Manager, and one Ikhlas Ahmed an importer. Counter statement was filed by the respondent No. 1. The Registrar after considering the evidence rejected the opposition and granted the application of the respondent No. 1.
2. Mr. Syed Shaukat Ali, the learned counsel for the appellant has contended that the respondent No. 1 is not entitled to registration as the trade mark is likely to cause confusion or deceive the public and it is thus disentitled to the protection of the Court of justice. In this regard, the learned counsel contended that the food products and food ingredients and the products like surgical plaster and disinfectants of the respondent No. 1 are likely to be sold in the same counter in the same shop which may cause confusion in the mind of unwary purchaser. In this regard, the learned counsel has solely relied on an order of the Assistant Controller in the case of Jardex reported in (1946) 63 R P C 19. In this case, the applicant had applied for registration of trade mark Jardex in respect of disinfectants. The proprietor of mark Jardox registered in respect of extract of meat and forming part of opponent's name filed opposition that close resemblance disentitles registration and that "since the disinfectants sold by the applicant are of a poisonous nature and might be confused with the goods sold by the opponents under their trade mark 'Jardox', the use of the mark 'Jardex' would constitute a serious danger to the general public". The authority holding that the goods in both the trade marks cannot be regarded as goods of the same description and noted that on the basis of evidence considerable quantity of meat extracts under the trade mark "Jardox" have been supplied to hospitals as an invalids food but invalids food is registered in class other than in which meat extracts is registered. It was observed that "meat extract must in my view be registered as one and the same description of goods, whether they are intended for consumption by invalids or by healthy persons". However, registration was refused on the ground that possibilities of a serious accident though remote cannot be ruled out if due to negligence some one might be given to swallow a quantity of the disinfectant Jardex in mistake for a quantity of the meat extract Jardox. The entire reasoning of this order is based on remote possibility of an untoward accident due to extreme negligence and extraordinary human error in using Jordex disinfectant for Jardox meat extract. The question arises whether the confusion and deception which may be caused by two similar or identical trade marks in respect of two different goods can b determined on the basis of remote possibilities, exceptional circumstance and abnormal conditions. In such cases, one has to take into consideration the normal surrounding circumstances, possibilities and probabilities and average intelligent persons "with reasonable apprehension and proper eye-sight" (1905) 22 R P C 601. The probable purchaser should be person of average intelligence who takes care to at least observe prima facie facts floating on the surface and not those who do not take care even to look at it. He should not be of "phenomenal ignorance of extraordinary defective intelligence". (1902) 19 R P C 17. It is correct that to err is e human and nobody can be excluded from the possibility of committing an error but the kind of errors to be considered in cases of the present nature are not those which are absolute impossibilities, but there should b reasonable probabilities. The error by a person who is extremely careless and without proper understanding cannot be made a yardstick for judging confusion and deception, while comparing two marks. Neville, J. in Henry Thorne & Co. Ltd. v. Engen Sandow ((1913)30RPC366) observed that "nobody will ever make a mistake is more than I am prepared to say, but if there is a mistake, I think it will be made by some person so foolish or so unobservant as in that respect to be without the pale of protection of law". In (1902) 19 R P C 505, it was observed that 'Court does not sit here to protect the imbecile but to protect ordinary persons using ordinary common sense". In Clark v. Sharp (15 RPC141) it was observed that "it is a question of likelihood of deceiving average customers of the class which buys, neither those too clever, nor fools, neither those over careful, nor those over careless".. The standard of judging the confusion cannot be made by putting it to test to completely ignorant and extremely careless persons. They should be fairly average persons of average intelligence in all circum stances giving allowance to errors, mistakes, foolishness and probabilities. But extreme case of error, mistake or foolishness cannot be made a yard stick for determining the probability of confusion or deception. In Glaxo Laboratory Ltd. v. Assistant Registrar, Trade Marks (P L D 1977 Kar. 858) where question arose whether Vistamycine for antibiotics was likely to cause confusion and deception for crystamicine antibiotics, it was observed that it is the ordinary purchasers who are likely to be misled by the imperfect recollection of the appellants' marks and not the so-called expert chemists. In Thomes Bear & Sons (India) Ltd. v. Paryag Narain (AIR 1940 P C 86) it was observed that the probable purchaser should neither be one who having no sense of discrimination, nor a person who is very careful observer of the things, around him. In Coca Cola Co. of Canada v. Pepsi Cola Co. ((1942) 59 R P C 127), the Privy Counsel observed that the purchaser should be a person of "average memory with its usual imperfection". In National Sewing Thread Co. v. James Chadwick Bros. (AIR 1953 S C 357) it was observed that the likely purchaser should be an average man of ordinary intelligence.. Therefore, while judging the question of confusion or deception likely to be caused the Court has not' to take into consideration extraordinary or abnormal person but a D purchaser of ordinary and average intelligence, understanding and comprehension giving due allowance to usual imperfection of memory, sight,' hearing and intellect.
.3. In the present case, the respondent has applied for registration oh Trade Mark for medical and surgical plaster and disinfectant in class 5 whereas the applicant's trade mark is registered in class 29 in respect of all' kinds of foods and ingredients of foods. The appellant deals in fresh fruits and other fruit products, but the admitted position is that it has not' done any business in Pakistan. The import of gods produced by the appellant is banned in Pakistan. In the statutory declaration, it is no shown, that any sale has been made in Pakistan through proper channel E and in the ordinary legal manner. In fact in one of the declarations, it is admitted that goods have not been marketed in Pakistan. The appellant is merely relying on its reputation in foreign countries in respect of fruit and its products. Surgical plasters and disinfectants are neither similar in nature nor even resemble with the appellant's goods. They are completely different in nature and use. It is possible that the goods may be sold under one roof, but that is not the only criterion because always care is taken to keep poisonous and toxic material away from edible goods. The' reasoning given in Jordex case is based on far and remote possibility and supposition based on conjectures and surmises. Any principle deduced from such circumstances cannot be treated as a sound principle of common or universal application.
.4. The identical trade marks or their similarity do not necessarily, lead to the conclusion that they are likely to cause confusion and deception to the purchaser. In this regard one has to take into consideration the' nature of goods, the reputation acquired by the registered trade mark to the extent that the purchaser would consider that the goods with trade marks proposed to be registered are the products of the proprietor of the' registered trade mark, the nature of customers, trade, channels and likely confusion among a substantial number of purchasers. In Soney Kabushiki Kaisha v. Registrar of Trade Marks and another (P L D 1978 Kar. 161.) the appellant had filed opposition to the application of the respondent No. 2 for registration of trade mark Sony in class 25 in respect of "all kinds of sport goods" on the ground that Trade Mark Sony was registered in its name in class 9 in respect of Radio, Television, Tape-recorders etc. This opposition was rejected and registration of respondent's application was granted. In appeal it was observed : -
"The goods of the appellant, being sophisticated electronic goods, are very special in nature, as compared with the ordinary cheap articles manufactured by the respondent No. 2, and with exception of a few thoughtless persons, it is difficult to believe that many average purchasers or the public would think that a tennis request or cricket bat sold under the Trade Mark Sony was made by the appellant, I am of the opinion that the appellant has not substantiated a case of tangible danger of confusion among a substantial number of persons."
In Kaiser Jeep Corporation v. Saber Saleem Textile Mills Ltd. (P L D 1969 Kar. 376), the respondent applied for registration of trade mark "Jeep Brand" in words and the device of "Jeep" in respect of threads and yarn of all kinds. The appellant filed opposition on the ground that its trade mark "Jeep" with the device of motor-cycle is registered in respect of motor-cars manufactured by it. The respondent's application was allowed and appellant's opposition . was dismissed. While considering the question whether trade mark offered by the respondent for registration is likely to deceive or cause confusion in the course of trade, after referring to a large number of authorities it was observed :-
"Thus, even though the appellant's and respondent's marks may be identical yet the goods are so totally deferent that it will be inconceivable that thread and yarn should be attributed as to origin to the appellants, or likewise, motor vehicles bearing the trade mark Jeep' to the respondents. In my view, there is not the least possibility of any deception or confusion being caused amongst members of the public by the respondent's use of the word trade mark Jeep' with the device of a motor vehicle for their thread yarn."
.In the present case surgical goods, plasters and disinfectants argil completely different from fresh fruit and fruit products. The goods produced by each one of them are different in nature and use. It is difficult to believe that the surgical goods, plasters and disinfectants be attributed as to origin to the appellant's goods. In the circumstances, there) is no possibility of deception or confusion being caused to the public.
5. From the evidence produced by the parties, it is clear that the appellant has not made any export to Pakistan as stated by Anderson, the Vice-President of the Fresh Fruit marketing for the appellant. He only relied on possibility in future. On the other hand the respondent has produced evidence to show that it started selling goods in the year 1973 and the sale was for Rs. 5,688.88 which progressively rose to Rs. 1,33,250 in the year 1977 and in the year 1979-80 when the application was filed the same had risen to Rs. 3,49,491.
6. Mr. Pishori, the learned counsel for the respondent has relied on Messrs Bengal Friends & Co. v. Messrs Government Benode Saba & Co. (P L D 1969 S C 477) in which the appellant had made application for registration of his trade mark consisting of a device of the ship in respect of coltar in class 19 stating that the said mark is being used by him for a long time. During its pendency the respondent No. 1 filed an application for registration of similar trade mark consisting of the device of ship in respect of coltar in class 19 claiming the user since 1936. The Deputy Registrar of Trade Marks refused registration against which an appeal was filed which was also dismissed. The Supreme Court allowed the appeal and observed as follows :-
."It has been noticed that the supplies made by respondent No. 1 to East Pakistan since 1948 were scanty and stopped altogether in 1952. Consequently when the appellant applied for registration of his mark in 1953 the goods of respondent No. 1 were not available in the market. In the circumstances, there was no likelihood of deception' or confusion' as contemplated in section 8(a). But the Courts below upheld the opposition by respondent No. 1 merely on the basis of his use from an earlier date of the mark with the device of a ship than on the volume of goods sold by him in East Pakistan for a number of years before the appellant approached the Deputy Registrar for registration of his mark. If mere use from an earlier date alone were to satisfy the requirements of section 8, then no one need have his mark registered under the Trade .Marks Act at all."
Reference can also be made to Pakistan General Stores, Karachi v. Messrs Cooper Incorporated, Karachi (P L D 1973 Note 61 at p. 82). In this case the appellant's application for registration of trade mark was opposed by the respondent on the ground that "identical trade mark in respect of same class of goods was registered in his name". It was established that the goods of the respondent were not available in the market for the last 16 years and during the last 10 years the appellant had built up sizeable business in the same class of goods with identical trade mark. This fact was held to be covered by the words "other special circumstances" to allow subsequent registration of mark identical with one already on register.
.Applying the aforestated principles to the present case, I find no forced in this appeal which is dismissed with no order as to cost.
M. Y. H. Appeal dismissed.
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