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Miscellaneous Appeal No.68 of 1979, decided on 20th December, 1986.

--Ss. 6, 8 & 10--Registration of trade marks--Objection to--In order to attract application of S.10 prohibiting registration of identical trade mark, it would be necessary to establish (i) that trade mark applied for registration was identical to mark already registered; (ii) that goods in respect of which registration of mark was applied for were of same class and description in respect whereof identical mark was already registered in favour of another person--Respondent applied for trade mark 'Rolex' to be used for tobacco and its products, cigarettes, while appellants being registered proprietors of same trade mark were manufacturers of watches and were dealing with all kinds of horological instruments; parts thereof and jewellery under that trade mark--Goods of appellant and that of respondent being of totally different description, having not the remotest connection with each other and there being no possibility of any confusion and deception between them, appellants acquiring right by virtue of registration of trade mark in respect of particular class of goods, held, could not claim right to prohibit use of same mark by respondent dealing with goods of totally different character.

1986 C L C 1636; P L D 1969 Kar. 376; P L D 1962 Kar. 355; P L D 1978 Kar. 161; S.M. Tofiq v. National Biscuit Company P L D 1962 Kar. 335; Impex Electrical Ltd. v. Weinbaum 44 RPC 405; 1986 CLC 1636; Care Zeiss v. Stiflung of Jena P L D 1968 Kar. 26; Somerville v. Schembri (1887) 12 A C 435 and Sony Kabushki Kaisha v. Registrar of Trade Marks P L D 1978 Kar. 161 ref.h.

---Ss.6, 8 & 10--Registration of trade marks--Opposition of Foreign Company--When trade mark was opposed for registration by a Foreign Company on ground that mark was distinctive of his goods, registration of that mark and sale of such goods with that mark in foreign countries, held, was not relevant--What was relevant in such circumstances, was the, fact that goods were sold by Foreign Company with foreign mark thereon in local market--There being no evidence on record to show that appellant being registered proprietor of trade mark "Rolex" had any market of that trade marks in respect of any goods in Pakistan neither there was any evidence to establish sale of "Rolex" watches by appellant in Pakistan nor any other material to establish that "Rolex" mark was, so well-known among general public in Pakistan that it had become a household word--Mere advertisement of product in 'newspapers and journals without evidence of its actual sale in local market, would not be sufficient to hold that product had acquired goodwill in local market.

Chughtai M.Jamiluddin for Appellant.

Kh. Mansoor for Respondents.

Date of hearing: 24th November, 1986.

The Appellant has challenged the decision of Asstt: Registrar of Trade Marks, dated 18-6-1979 passed in opposition proceedings No.29/77 filed by the Appellant.

The Appellants are the manufacturer of 'Rolex' watches and they are also the registered proprietor of the word "Rolex" with a crown device in class 14. The respondent No.2 who are manufacturer of cigarettes, on 12-11-1976 applied for registration of trade mark "Rolex" proposed to be used in respect of tobacco, raw or manufactured including cigarettes. After due scrutiny of the application by the office of Registrar, the mark was advertised before acceptance in the Trade Marks Journal No.313 of February, 1977.- The appellants who are the registered proprietor of the mark "Rolex" in respect of all Kinds of horological instruments and parts thereof. jewellery, filed opposition to the registration of the trade mark "Rolex" in favour of respondent No.2. It was urged by the appellants before the Registrar that the word "Rolex" is a symbol of high quality and is identical to appellant's mark "Rolex" both visually and phonetically and as such it is likely to cause confusion and deception among the general public. It appears from the order of Registrar that the appellants relied on sections 6,'8 and 10 of the Trade Marks Act to oppose the application of respondent No.2. In the counter-statement filed by respondent No. 2 in reply to opposition application, it was urged that the mark "Rolex' 'was proposed to be used by the respondent on the goods of totally different description which fall in class 34 while the mark "Rolex" registered in favour of the appellant is in respect of the goods in class 14. It was also urged by respondent No.2 in the counter-statement that only part of the mark of the appellant was identical to their mark when examined as a whole. With regard to the allegation of confusion likely to be caused as a result of use of the' mark "Rolex" by the respondent No.2 in relation to their goods it was firstly contended that the allegation is far fetched as the goods of the appellant and those of the respondent are of totally different description having not the remotest connection with each other, and secondly, the goods of appellant have no goodwill or reputation in Pakistan as they are neither sold nor available in open market in Pakistan. It was additionally urged before the Registrar that the mark "Rolex" is already registered under class 12 as a trade mark in respect of vehicle spring by a local company namely Sattar & Company of Gujrat and as such the appellant cannot claim exclusive use of mark "Rolex" by them. In support of their opposition, the appellant submitted before the Registrar one affidavit sworn by Mr. Van Gassel Harman the director of the appellant's firm and another affidavit of one Hassan Ali Moolji, a local trader while respondent No.2 in support of this application filed affidavit of its General Manager, Aslam. The tribunal after considering the evidence produced before him reached the conclusion that in so far section 10 of the Trade Marks Act was concerned it was not applicable as the goods of the respondent No. 2 and that of the appellant belong to different description and classes. With regard to the protection of the mark of the appellant under section 8(a) of the Act the Registrar held that no evidence was led 'by the appellant to prove that the mark "Rolex" is being used in Pakistan by them on their goods so that it had acquired any reputation and goodwill in this country. Number of reported cases were cited before the Registrar by the parties which are referred in the judgment and after analysing ratio decidendi of these cases the tribunal reached the conclusion that the initial onus of proving that the registration of the mark "Rolex" in favour of respondent No.2 is likely to cause confusion and deception was on the appellant which they failed to discharge and accordingly it dismissed the opposition of appellants.

Learned counsel for the appellant in this appeal has mainly contended that the mark "Rolex" registered in favour of their client was not only the mark but also a part of the trading style of the appellant and as such the same could not be registered in favour of the respondent No.2 as it would certainly cause confusion in the minds of an average purchaser that the goods marketed by the respondent No.2 under mark "Rolex" have some connection with the appellant. It was urged by the learned counsel that the mark "Rolex" is so well known in Pakistan with regard to watches manufactured by the appellant that it has become a household word and if it is allowed to be used by the respondent No.2 it may create an impression in the mind of general public that the goods produced by respondent No.2 have some connection with the appellants. With regard to use of trade mark "Rolex" in Pakistan by appellant, the learned counsel contended that the mark of the appellant is registered all over the world including Pakistan and is advertised in journals and newspapers which have considerable circulation in Pakistan. It is accordingly contended that the general public in Pakistan is well conversant with the appellant's mark "Rolex". To support his above contentions the learned counsel specifically relied on Caltex case reported in A I R 1969 Bombay 24, Bata case reported in 1986 C L C 1636 in addition to several other cases. Learned counsel for the respondent on the other hand relied on Jeep case reported in P L D 1969 Karachi 376, 'Nabisco' Biscuit case reported in P L D 1962 Karachi 355, and Sony's case reported in P L D 1978 Karachi 161.

After hearing the learned counsel for the parties at length and carefully considering the case law cited at the bar I am of the view that the discretion exercised by the Registrar in accepting the application of the respondent No.2 for registration of the mark "Rolex" is neither arbitrary nor offends against any of the provisions of the Act and as such no interference is called for in the appeal.

It may be stated here that section 10 of the Trade Marks Act relied by the appellant before the tribunal prohibits registration of a trade mark which is identical with another mark belonging to a different proprietor in respect of the same goods or description of goods or which so nearly resemble such trade mark as is likely to deceive or cause confusion. A careful reading of section 10 ibid will show that in order to attract the application of this section it is necessary to establish firstly, that the mark applied for registration is identical to another registered mark of a different proprietor and secondly, the goods in respect of which the registration of the mark is applied for are of the same class and description in respect whereof an identical mark or a mark so nearly resembling that mark as is likely to cause confusion, is already registered in favour of another person. In the case before me the appellant are the manufacturer of watches and their mark "Rolex" is registered in class 14 in respect of horological instruments of all kinds and parts thereof and jewellery whereas the respondent No.2 had applied for registration of the mark "Rolex" in respect of tobacco raw or manufactured and cigarettes which are goods of totally different class and description. Learned Counsel for the appellant contends that both cigarettes and watches are articles of daily use by a person and as such there is likelihood of deception. The argument of the learned counsel has not impressed me. The fact that several goods can be described as items of daily use does not mean that all such goods will belong to the same class or description of goods. It cannot be disputed that watches and jewellery are comparatively costly items which are used by only a particular class of people whereas cigarettes are consumed by people belonging to all walks of life. It also cannot be disputed that shops and establishments dealing in watches and jewellery, normally do not sell cigarettes as well. Articles like watches and jewellery are sold generally in high class commercial establishments in posh areas while cigarettes are usually available in small cabins as well run on road sides. The tribunal was therefore, justified in holding that section 10 of the Trade Marks Act had no application in the present case. With regard to the contention of appellant that the mark "Rolex" could not be registered in view of provision of section 8(a) of the Trade Marks Act it is urged by the learned counsel for the respondent No.2 that in order to substantiate that the registration of the mark "Rolex" in favour of the respondent No.2 was likely to cause deception and confusion the initial onus lay on the appellant to establish first that the mark registered in their favour had acquired reputation and goodwill in the local market of Pakistan. The contention of the learned counsel for the respondent is not without force. In the case of S.M. Tofiq v. National Biscuit Company P L D 1962 Karachi 335 the appellant in that case in the year 1951 applied for registration of trade mark "Nabisco" proposed to be used in respect of Cakes, Biscuit products under class 30. On 3rd March, 1954 National Biscuit Company (a foreign Company) also applied for registration of the mark 'Nabisco' in class 30 and they also opposed simultaneously the registration of the mark "Nabisco" in favour of appellant. The Registrar after considering the registration of the mark "Nabisco" in the territory of India before partition and further taking into consideration the marketing of the products by National Biscuit Company then under the above mark in the territory now part of Pakistan refused to register the trade mark 'Nabisco' in favour of appellant anti allowed registration of the trade mark in favour of the respondent. In appeal the High Court reversed the decision of Registrar on the ground that there was no evidence to establish that the public or common man in Pakistan could be confused or deceived while purchasing goods under the mark "Nabisco" manufactured by the appellant as Nationay Biscuit Company had no market in respect of their goods in Pakistan. It was observed that as the National Biscuit Company had no reputation in respect of their goods in this country there was no possibility of any deception or confusion in the mind of the person while purchasing the goods manufactured by the appellant. The following observations of Tomlin, J. from the decision in the case of Impex Electrical Ltd. vs. Weinbaum (44 RPC 405) was quoted with approval in the above case:---

"It seems to me that the whole contention rests on a misapprehension. For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard. For that purpose foreign markets are wholly irrelevant unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods. If a manufacturer having a mark abroad has made goods and imported them into this country with the foreign mark on them, the foreign mark may acquire in this country this characteristic, that it is distinctive of the goods of the manufacturer abroad. If that be shown, it is not afterwards open to somebody else to register in this country that mark, either as an importer of the goods of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign country, but that it is something which has been used in the market of this country in such a way as to be identified with a manufacturer who manufactures in a foreign country, That, I venture to think, is the basis of the decision in the Appollinaris' case."

After quoting the above passage the learned Judge observed as follows: ----

"It therefore appears to me that for the purposes of registration under the Act, the Tribunal should ordinarily consider the user in this country to which the Act applies. If the case of the appellant is considered on this view of the law, there is not a shred of evidence on the record to establish that the public or a common man in this country will in any way be deceived or confused while purchasing goods under the trade mark "Nabisco" manufactured by the appellants. The respondents have no market of this trade mark in respect of any goods in this country. They have no reputation and as such there can possibly be no deception or confusion in the mind of the public of this country that the goods manufactured by the appellants belonged to the respondents. In these circumstances the respondents had not established a reputation for their mark upon which an opposition could be founded. The learned Deputy Registrar, therefore was not justified in refusing registration of "Nabisco" trade mark in favour of the appellant."

A reading of above passages will show that when a mark is opposed for registration by a foreign company on the ground that the mark is distinctive of his goods the registration of that mark and sale of such goods with that mark in foreign countries are not relevant. What is relevant in such circumstances, is the fact that the goods have been sold by the foreign company with foreign mark thereon in the local market. In the case before me there is no evidence on record to show that the appellant has any market of this trade mark in respect of any goods in Pakistan. Neither any sale figures were produced before the Registrar to establish the sale of "Rolex" watches by the appellant in Pakistan nor any other material was placed before the tribunal to establish that the "Rolex" mark of the appellant was otherwise so well known among the general public in Pakistan that it had become a household word. Learned counsel for the appellant relied on Caltex case reported in A I R 1969 Bombay 24 but a careful reading of the above case will show that in that case there was voluminous evidence available before the Court to reach the conclusion that the Caltex company is in existence since longtime in India and their products are being marketed even in the remotest corners of India under the mark Caltex. Similarly, in the Bata case reported in 1986 C L C 1636 relied by the learned counsel for the appellant it was held that Bata is in existence and doing business in Pakistan for a long time and that the products manufactured by them are available all over Pakistan including the remotest places of the country. No such evidence is available in their present case to show that Rolex watches produced /manufactured by the appellants are sold and marketed in Pakistan. Learned counsel for the appellants contended that the appellants have advertised Rolex watches in the journals as well as in the local newspapers which shows that their product is well known in the territory of Pakistan. Mere advertisement of a product in newspapers and journals without evidence of actual sale of such product in the local market is not sufficient to hold that the product has acquired goodwill in the local market. Reference in this connection may be made to the case of Care Zeiss v. Stiflung of Jena P L D 1968 Karachi 276 wherein it is observed as follows:-----

"32. The above criticism is in addition to the proposition of law that use of a trade mark in advertisement does not in itself become user in the sense in which the law of trade marks contemplates it. A connection between advertisement and the origin of the goods should be shown to exist before the reputation gained by such advertisement may be said to cause deception or confusion. Such connection cannot ordinarily exist unless the advertised mark accompanies the actual goods (See Notes of Official Rulings (3). No such connection is traceable in Pakistan. The conclusion, therefore, is that the handbills and the brochures are of no evidentiary value in this case."

In view of the above discussion I am of the view that mere advertisement by the appellant in periodicals and newspapers which were available in Pakistan was not sufficient to establish any distinctiveness of the mark of appellant in the absence of evidence of the actual sale of products with the mark in local market.

In the Kaiser Jeep Corporation vs. Sabir Saleem Textile Mills (PLD 1969 Karachi 376) popularly known as Jeeps case, the following observations from Somerville vs. Schembri (1887) 12 A C 435) were quoted by the learned Judge with approval:----

"The acquisition of an exclusive right to a mark or name in connection with a particular article of commerce cannot entitle the owner of that right to prohibit the use by others of such mark or name in connection with goods of a totally different character, and that such use by others can as little interfere with his acquisition of the right".

The several points of view from which the question of the likelihood of deception or confusion being caused in trade mark cases has been considered in various judicial decisions, may, in my opinion, be conveniently reduced to two tests only, that is:----

(i) Whether there is identity of, or close resemblance between, the two competing marks, and

(ii) Whether there is some kind of trade connection between the goods marketed under the two marks, so as to lead the members of the public to attribute the origin of both the goods to the same source."

A reading of above observations will make it clear that a person who has acquired a right by virtue of registration of a mark in respect of a particular class of goods cannot claim the right to prohibit the use of same mark by other persons in connection with the goods of totally different character as such use cannot be construed as causing interference with the acquired right of the registered proprietor. The above principle is re-affirmed in the case of Sony Kabushki Kaisha v. Registrar of Trade Marks P L D 1978 Karachi 161. In addition to these facts the Registrar also reached the conclusion that it had already registered another mark "Rolex" in respect of the vehicle spring and therefore there was no, justification in refusing the mark applied for by respondent No.2.

After considering the overall aspect of this case it cannot be said that the discretion exercised by the Registrar in accepting the application of respondent No.2 for registration of the mark "Rolex" under class 34 in respect of Tobacco, raw or manufactured including cigarettes was either arbitrary or offended any settled principle of law: There is no substance in this appeal which is accordingly dismissed but the parties are left to bear their respective costs.

H.B.T./R-27/K Appeal dismissed.

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