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Miscellaneous Appeal No.63 of 1979, decided on 30th August, 1986.

---Ss.10(2), 14 & 25--Application, made in 1969, for registration of trade mark "A1-Burq" opposed by holder of registered trade mark "Burq"--Trade mark "Al-Burq" and "Burq" similar and goods covered by both marks same but applicant proving user of trade mark "Al-Burq" since 1959 whereas opponent's trade mark "Burg" registered in 1968- Held: Applicant had established prior and honest user of trade mark and he was therefore entitled to protection of S.10(2) read with S.25--Registrar, however, directed that applicant should add device of camel above the word "Al-Burq" and also add firm's name at the bottom of label--In appeal before High Court contention was raised by the opponent that Registrar had no power to amend trade mark under S.10(2) as it could only be made under S.14--Held, subsection (2) of S.10 clearly empowered Registrar to allow registration of identical trade marks if he found honest concurrent user of same; Registrar .had power to impose condition under S.10(2) while ordering registration and the method adopted by Registrar was certainly good to distinguish the two goods; S.14 was not attracted since no amendment was sought but it was a condition imposed by the Registrar.

Mosam & CO. v. Boehim, 1876 to 1888 ref.

Khalid Habibullah for Appellants.

S.Shaoukat Ali for Respondents.

Dates of hearing: 3rd and 24th August, 1986.

These are the reasons of the short order dismissing this appeal on 24-8-1986.

2. The relevant facts are that the respondent had filed application for registration of mark "Al-BURQ" in respect of soap of all sort claiming user since 1949. After advertisement the appellant opposed the registration on the ground that it was registered proprietor of mark "BURQ" in respect of the soaps and had acquired valuable reputation and good-will in respect of the same and that it was further averred that there was close similarity, visually and phonetically between two marks. The appellant alleged that the respondent had not made the application in good faith but wanted to create confusion and deception and take advantage of the reputation of the appellant. It was also alleged that the respondent had not used their mark.

3. The matter proceeded before the Assistant 'Registrar of the Trade Marks duly authorised under section 4(2-B) of the Trade Marks Act. The appellant had led evidence in the form of affidavits of their Director and their dealers and customers. They also filed "Dawn" & "Jung", dated 15-3-1970 and 16-3-1970. They denied the user by the respondent of "Al-Burq" since 1949. The Director of the appellant claimed to have spent several lacs of rupees on publicity from 1968 to 1973 for "Burq" .

4. The respondent also filed various affidavits of different persons and also produced 7 invoices of various dates from 1963 to 1965 showing sale of soap "Al-Burq". They also filed telegram, dated 11-12-1962 from Muhammad Ayub of Peshawar placing order for "Al-Burq". 31 loose cash-memo bills of various dates between 1961 to 1966 showing sale of "Al-Burq" were produced. Two invoices of 1959 and one invoice of June, 1959 showing sale of "Al-Burq" were also produced.

5. The Assistant Registrar framed the following points for decision:----

(1) Whether the mark is hit by sections 10(1) and 8(a) of the Trade Marks Act, 1940;

(2) Whether benefit of section 25 of the Trade Marks Act 1940 can be granted to the applicants;

(3) Whether applicants' mark is entitled to proceed to registration under section 10(2) of the Trade Marks Act, 1940."

He reached the conclusion that the marks "Al-Burq" and "Burg" are similar and goods covered by both the marks were same and, therefore, they were likely to cause confusion and deception if it was a new mark. But, on the basis of section 25 of the Trade Marks Act, 1940, which was regarded as corresponding to section 27 of the U.K. Act, 1938, he has held that since the respondent had proved that they had continuously used their mark "Al--Burq" from a date prior to use of registration by opponent, therefore, they were entitled to the benefit of section 25 of the Pakistan Trade Marks Act, 1940.

He has held that on the basis of evidence before him "Al-Burq" had been used from 1959, long before the date of the appellant's registered application on 29-7-1967 and also before the user of the mark "Burg" of the appellant under registered Application No.5074811968. He also took note of the fact that the respondent had made an application for registration of "Al-Burq", which was advertised in "T.M. Journal of 1957, but the same was not properly prosecuted and the respondent had been pursuing the matter by filing rectification and opposition proceedings. He also took note of office letter, dated 17-2-1972 where it was stated that application No.50748/68 of Dada Soap Factory Ltd. is released for proceeding it to registration and application 50853 of M/s. Crescent, Pak Ltd. Is released for proceeding to advertisement in the Trade Marks Journal. He took the view that even if there was discontinuance of the use of the respondent's mark for a short period, it does not materially affect because temporary discontinuance is not a bar to the registration of a mark by the first user. Reliance was placed on a German Soap Factory Case reported as Mosam & Co. v. Boehim, where non-user of mark between 1876 and 1888 was not considered as abandonment of the mark.

He took the view that on 18-1-1969 when the respondent had made his application for registration, the appellant had hardly one year's user of their mark and, therefore, it was difficult to believe that the mark of opponent would have required reputation within such a short period to tempt the respondent to copy the mark of the appellant. His conclusion was that the adoption of the mark by the respondent was not dishonest. Finally, he came to the conclusion that the respondents had established prior and honest user of the mark and were entitled to the protection of section 10(2) read with section 25 of the Trade Marks Act, 1940.

6. However, with a view to avoid any confusion amongst the public, particularly amongst the unwary purchaser, he directed that the respondent should add the device of camel above the word "Al-Burq" prominently and also add name of firm at the bottom of label in order to distinguish it from that of the registered proprietors' trade mark "Burg". This would avoid prejudice to the public interest.

7. The learned counsel, Mr. Khalid Habibullah for the appellant has not been able to challenge the finding of facts arrived at by the Assistant Registrar in his order, dated 10-6-1979. He however, submitted that the Registrar had no power to amend a trade mark under section 10(2) of the Trade Marks Act and the same could be done only under section 14 of the Trade Marks Act. He submitted that if the amendment was made under section 14 then a fresh advertisement under section 15(1) containing the amended mark should have been directed and then proceeding could be initiated on that basis. I do not find any substance in the submission of the appellant's counsel. Section 10 of the T. M. Act, 1940 prohibits the registration of identical or similar trade marks belonging to different proprietors. But subsection (2) of the same section provides that in case of honest concurrent use or other special circumstances the Registrar may permit the registration by more than one proprietor of Trade Mark, which are identical or nearly resemble each other in respect of the same goods subject to such conditions and limitations, if any, as the Registrar may think fit to impose. Subsection (2) of section 10, therefore, clearly empowers the Registrar to allow registration of identical marks, if he finds honest concurrent user of the same. In the present case, the honest and prior user by the respondent of their mark "Al-Burq" has been found by the Registrar as a fact and, therefore, it is clear to me that the Registrar was well within his right to allow the registration of the respondent's mark. In fact, the respondent had proved the use of its mark at least from 1959 onwards and by that time the appellant had not even started the use of its mark "Burg", which was started only in 1968.

Therefore, the provisions of section 10(2) were clearly attracted in the case and the Assistant Registrar had come to the correct conclusion.

8. The contention of the counsel that since the Registrar had made amendment in the mark of the respondent, therefore, the same should have been advertised again under section 15 of the Act is not justified. This would amount to start the litigation once again. The. Assistant Registrar had amended the mark of the respondent in order to safeguard the interest of the appellant and also safeguard the unwary purchaser from any confusion. In fact, the said amendment was not a favour to the respondent, but a device which could easily distinguish the product of the respondent from the product of the appellant in spite of the fact that the marks "Al-Burq" and "Burq" were almost identical. The adding of the device of camel prominently was certainly a good method adopted by the Registrar to distinguish the two goods. The Registrar had the power to impose the conditions while ordering the registration of identical marks under section 10(2) I. The appellant's counsel had submitted that it was an amendment which can be made in the mark but I am clear in my mind that the amendment was not sought by the respondent and, therefore, provisions of section 14 of T.M. Act were not attracted. This was in fact a condition imposed by the Assistant Registrar on his own upon the respondent and this condition could certainly be imposed under section 10(2).

9. The insistence of the appellant's counsel that there should have been a fresh advertisement of the mark as amended by the Registrar would mean to start another litigation and I do not think that such advertisement again was called for. There had been already a litigation between the parties and the appellant had filed his opposition for the registration and the parties had led their evidence and, thereafter an adjudication had been made by the Assistant Registrar where he had arrived at a decision and had ordered the registration of the mark under section 10 of the Trade Marks Act with conditions. The matter was, therefore, concluded as far as the Registrar was concerned and no advertisement as stipulated under section 15 was necessary. This appeal was, therefore, dismissed by a short order, dated 24-8-1986.

K.B.A./D-8/K Appeal dismissed.

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