Find a Lawyer

Miscellaneous Appeal No. 33 of 1983, decided on 12th May, 1987.

---S.6(1)(d)--Mere fact that a trade mark word is a dictionary word or common word would not by itself disqualify it from being registered under Trade Marks Act unless it has direct reference to character and quality of goods--Person seeking registration of mark "confidence" in respect of condom sheaths--Held, word "confidence" did not depict attributes which condom sheaths possess but in fact was description of impression that the user forms of that particular things, it was consumer who would get feeling of confidence and not the goods- Refusal of Registrar to register the trade mark "Confidence" was therefore, not justified.

C.M.A. No.47/78; 1984 C L. C 2623; 24 R P C 585; 35 R P C 53; M/s. Bubble Company v. M/s. Seven Up P L D 1975 Kar. 582; 45 R P C 426; 71 R P C 157; 30 R P C 262; 32 R P C 15; 74 R P C 3 and M/s. Seven-Up Company v. Registrar, Trade Marks 1984 C L C 3249 ref.

Akhtar Hussain for Appellant.

Nemo for Respondent.

Date of hearing: 16th April, 1987.

This Miscellaneous Appeal filed under section 76 of the Trade Marks Act, 1940, is directed against the decision of the, learned Deputy Registrar, Trade Marks, dated 20-'6-1985, whereby, he refused the registration of word 'confidence' in respect of condom sheath being goods in Class 10 manufactured by the appellant. The learned Deputy Registrar of the Trade Marks refused registration of mark 'confidence' on the grounds, that the mark 'confidence' had direct reference to the quality of the goods. He further held, that in the ordinary parlance, confidence would convey to average trader or purchaser, that condom sheaths are of great trust and reliance, and therefore, word 'confidence' was a descriptive word being direct description of the goods and was objectionable under section 6(1)(d) of the Trade Marks Act. He was further of the view, that he had to be careful not to interfere with other person's rights as 'confidence' was a disctionary word, which is openly used by the public. He accordingly, in exercise of discretion, refused the registration.

The contention of the learned counsel for the appellant, is that the word 'confidence' did not refer to or indicate the quality of the goods, but in fact it refers to the feeling of the consumers after using the goods. It is contended, that it is not hit by clause (d) of section 6(1) of the Act. Reliance is placed on unreported decision of this Court. in C.M. A . No.47 /78, wherein, the order of the Registrar, refusing the registration of word mark 'Boost' as description of goods in question was challenged. The learned Single Judge of this Court allowed the appeal, and set aside the order of the learned Registrar, holding, that the word 'boost' did appear to convey the result or effect which is achieved by a particular move but did not suggest any idea of any food. It is further held, that 'boost' is not descriptive of the quality of the goods of the appellant but it showed, the result, that would be achieved by the consumers after eating products and, therefore, the word actually is relatable to the consumers and not to the product itself. Reliance was also placed on, 1984 C L C 2623 in this case the application of the appellant for registration of mark ' Bardase' for medicinal and pharmaceutical preparations was refused by the Deputy Registrar of the Trade Marks on the ground, that word ' Bardase' was considered to be close to word ' Bardash' meaning "youth, homosexual". The appeal was allowed by the learned Single Judge of this Court holding, that the word 'Bardase' had neither similarity with word 'Bardash' nor was it descriptive of products of the applicant, but it was an invented word having no meaning. It was further held, that the discretion of Registrar to reject the application must be exercised upon the judicial principles, affected neither by caprice .nor by over caution. It was further held, that mere fact, that 'the trade mark sought to be registered for medicine and pharmaceutical products suggested that it had reference to some medicine, would not make that objectionable or violative of section 6(1)(d) of the Act, unless it is shown, that it had some direct reference to character and. quality of goods or otherwise violated section 6. In the reported case the learned Single Judge had referred to certain case law, which is also relied upon by the learned counsel for the appellant in this case. In the case reported in 24 R P C 585 mark 'Mortorine' was allowed to be registered holding, that the said mark suggested, that some way they are oils which are to be used in connection with a motor, but beyond that it had no reference either to the character or quality of the goods. In the case, reported in 35 R P C 53 the registration of word 'Stanwal' was refused on the ground, that the said word was similar to the English word 'stanwell'. It was held in that case, "that when one finds, that the word is an invented word and that word is neither a surname nor a geographical expression which has reference to the geographical expression or the surname is only permissible in the exercise of the discretion and not under the provisions of the Act, the accident that the word is like a surname or is like a geographical expression s of no greater importance in itself than that it is like anything else in the world unless the consequence of the similarity is that there will be a liability to confusion if he mark is allowed to go on the Register". Reference was also made to the case of M/s. Bubble Company v. M/s. Seven Up reported in P L D 1975 Kar. 582. It was held in that case, the purpose of legislature appears to be in forbid in use of trade mark of a word, which is descriptive of the goods, the word must therefore convey description to those who commonly see it or hear it and not only to scholarly.

The learned Deputy Registrar has relied upon 45 R P C 426 wherein it is observed, that one has to look at the word not in its strict grammatical significance but as it would represent itself to the public at large, who are to look at it and to form an opinion as to what it connotes. He has referred to 71 R P C 157 also, wherein it is observed, that the wealthy traders were habitually eager to enclose part of the great common English language and to exclude it to the general public of the present day and future from access to it. The learned Registrar has also referred to 30 R P C 262, where word 'ribbon' was held to have direct reference to the character of the goods namely dentiflice in Colgate. Reference is also made to 32 RPC 15 where mark 'classic' was similarly refused for greeting cards. The registration of mark 'brisk' was refused to cosmetic in 74 R P C 3.

In the instant case there can be no dispute that the word 'confidence' is a dictionary word and its dictionary meaning is 'trust worthiness, reliance, belief' Section 6(1)(d) reads as under:-

6(1) A trade shall not be registered unless it contains or consists of at least one of the following essential particulars, namely: -

(d) one or more words having no direct reference to the character or quality of the goods, and not being according .to' its ordinary signification, a geographical name or surname or the name of a sect, caste, or tribe in (Pakistan)."

Reference may also be made to the case of M/s. Seven Up Company v. Registrar Trade Marks 1984 C L C 3249. The question for consideration in that case was whether word 'Hopi' had direct reference to the character or the quality of goods and fell within mischief of section 6(1)(d) of Trade Marks Act, 1940. It was held by the learned Single Judge of this Court, that word 'Hopi' even if taken in its phonetical form to mean 'Happy' it would not have any reference to the quality or character of the goods but it would have reference to the' person who consumes the goods because pleasure or happiness by consumption is a condition which relates to the consumer and not to consumption.

Thus, the persistent view of this Court has been that mere fact that Trade Mark word is a dictionary word or common word would not by itself per se disqualify it from being registered under Trade Marks Act, unless it has direct reference to the character and quality of the goods. Thus, words 'Happy' and 'Boost' etc. are held to have reference to the feelings which the consumer acquires after the use of the goods and would not have a direct reference to the character and quality of the goods. In the instant case also I find, that the word 'confidence' depicts the feelings of the consumers after use of the goods. When word 'confidence' is used in respect of things, it does not depict attributes which that particular thing possesses but in fact is descriptive of the impression, that the user ms of a particular thing. It is the consumers who will get feeling of confidence and not the goods.

In view of the above discussion the word 'confidence' therefore, cannot be said to have direct reference to the quality or character of the goods in question and is not violative of section 6(1)(d). The learned Deputy Registrar does not appear to have exercised his discretion on sound judicial principles while refusing the registration of Trade Marks. The order of the learned Deputy Registrar is therefore set aside and the appeal is allowed with no orders as to costs.

The appeal was allowed by a short order on 11-5-1987. The above are the reasons in support of the said order.

K.B.A./N-44/K

Find a Lawyer Near You

Dealing with a matter like this? Connect with a verified advocate in your city — free on SJP Lawyers Directory.