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Miscellaneous Appeals Nos.53 and 54 of 1972, decided on 31st October, 1974.

---Ss.6, 46 & 76--Trade marks--Registration--Similarity in two trade marks--Test--Registrar while examining question of similarity of two trade marks, held, would consider effect of two marks visually and phonetically and other circumstances including point of view of public and would then reach conclusion whether or not there was no similarity between two marks and that use of either of them was not likely to deceive or cause confusion in trade.

A & F Pears Ltd. v. Ghulam Hyder P L D 1959 Kar.154; Messrs Surya Brothers v Dada Soap Factory Ltd. P L D 1971 Kar.189 and Bande Nawaz Ltd. v, Registrar and another P L D 1967 Kar.492 ref.

In the matter of an Application by the Planotiest Company Ltd. (1906) 23 R P C 774 rel.

---Ss 6, 46 & 76--Trade marks--Registration--Dissimilarity in two trade marks--Respondent, whose trade mark was 'LEUKONOL, filed his opposition to appellant's application ,for registration of his trade mark 'LEECON'--Appellant filed rectification under S.46 of Act and Deputy Registrar dismissing appellant's rectification and allowing his application for registration of trade mark 'LEECON' to proceed--Appellant also filed application for registration of his trade mark 'LEECON' which was opposed by respondent--Dissimilarity in two trade marks was patent not only visually but sound of one having no such resemblance with other so as to create any type of confusion in mind of purchaser or shop assistant--Order of Deputy Registrar upheld, in circumstances.

In the matter of an Application by the Planotiest Company Ltd. (1906) 23 R P C 774 rel.

Aristoc Ltd. v . Rysta Ltd. (1940) 62 R P C 65 ref.

B.M. Bangesh for Appellant.

A.A. Zari for Respondent.

Date of hearing: 4th September, 1974.

These two Appeals, M.A.53/72 and 54/72 under section 76 of the Trade Marks Act, 1940 have been filed against the same order of the Deputy Registrar of Trade Marks which is dated 23-12-1971, and this Judgment shall dispose of both these appeals.

2. Brief facts leading to the two appeals are that Dr. Hakimullah, a manufacturing chemist, doing business in the name of M/. Al-Chemists, the appellant in Appeal No.53/72 and respondent in Appeal No.54/72, has been manufacturing a drug sold under the trade name LEECON. This is used for curing Leucorrhea and is claimed to have been in the market for about 37 years. On the other hand, a similar medicinal preparation known as LEUKONOL is claimed to be popular in the market since 1948 in Pakistan and before that in undivided India. This is manufactured by Hakim Wahabuddin Alvi of Alphaco (Pakistan) Karachi, the appellant in M.A.54 of 1972 and respondent in M.A.53 of 1972.

By an application dated 28-11-64 M/s. Alphaco sought Rigistration of their Trade Mark LEUKONOL a medicine i7 class 5 and this application was numbered as 42554. The Registrar advertised this trade mark in the Trade Marks journal of 1-2-1967 at No.193, ind thereafter a notice of opposition to it was filed by M/s. Al-Chemists, proprietors of LEECON. This notice was filed beyond the statutory period of 4 months, and extension of time was therefore prayed for by a separate application T.M.55, but it was not granted. M/s. A1-Chemists filed an appeal against this in the High Court but without any success. A review application and a L.P.A. against that decision also failed, and the final judgment in this regard is said to be dated 17-7-1968. During this time, however, the trade mark of 11/s. Alphaco i.e. LEUKONOL was registered by order of the Registrar of Trade Marks. Having failed in their opposition which was rejected as time-barred, M/s. Al-Chemists resorted to filing of a Rectification u/s. 46 of the Trade Marks Act against LEUKONOL. This petition was entered as No.19/68, dated 5-11-68, and is the subject-matter of these appeals. M/s. Al-Chemists had also filed their own application dated 29-1-63 for registration of the Trade Mark LEECON, which was advertised in the Trade Marks journal of 1-4-1968 at No.207. Against this M/s. Alphaco filed their opposition which was numbered as 74/68, and is also the subject-matter of these appeals.

By the impugned order of 23--12-1976, the Deputy Registrar has dismissed both the Rectification 19/68 and Opposition 74/68, and has allowed the application for registration of LEECON to proceed further, on the basis that the two trade marks LEECON and LEUKONOL have no similarity, either visually or phonetically or by any other standard.

3. The counsel for both the parties have vigorously contended that the trade marks LEECON and LEUKONOL are deceptively similar to each other. Both of them agree that the existence of the one in the market is most certainly going to create confusion or deception with regard to the other. According to them, the resemblance between them is prima facie, clear, when they are considered visually and phonetically. The same contention had been raised before the Deputy Registrar of the Trade Marks, who did not agree with the same. The Deputy Registrar has analysed the two words, LEECON and LEUKONOL, in order to apply the tests for the purpose of finding out whether the trade marks are apt to cause any deception or confusion. In his order he has said that "the mark of M/s. Al-Chemist consists of six letters whereas the Mark of M/s. Alphaco is made of eight letters. Again the mark of M/s. Al-Chemists has two syllables i.e. LEECON,whereas that of M/s. Alphaco consists of three syllables i.e. LEUKONOL. In my view both the marks cannot be similar either visually or phonetically. Mr. Zari, the learned counsel for M/s. Alphaco, in support of his contention referred to the case of A & F Pears Ltd. v. Ghulam Hyder reported in (P L P 1959 Karachi 154) and the case of M/s. Surya Brothers v. Dada Soap Factory Ltd., reported in P L D 1971 Karachi 189. The first is a case where the Registrar had allowed registration of the trade mark Paras Sabun for a soap used for laundry purposes, and which was challenged by Pears Limited, who used the mark Pears in respect of perfumary and toilet articles including soaps. While allowing registration the Registrar in that case had attached conditions that Paras Sabun should not be written in Roman script as that might cause confusion in case of mispronunciation of the word in this country. The second condition was that the trade mark shall be used only for laundry soap and no other article. It was held in this judgment that the reasoning of the Registrar for imposing these conditions was not correct inasmuch as there could be no restriction in advertising Paras Sabun by using the Roman script, rind further, the second condition disregards the claim of using of trade mark Pears not only in respect of soap, but in respect of perfumery and toilet requisites. In this case the Registrar had been of the view that there was a possibility of visual confusion in case of mispronunciation of the word Paras Sabun. The reasoning given was, therefore, not accepted. In the other case i.e. Ms. Surrya Brothers v. Dada Soap Factory, the dispute was about using the trade mark KALAPAN & MOTIAPAN by their proprietors. The conclusion of the Registrar was that the Trade Marks KALAPAN and MOTIAPAN did show a similarity which was deceptive. According to him, to take the two marks and put them side by side for comparison was not tile test this is not what the common man did when he went to buy a thing. The learned Judge agreed with the conclusion of the Registrar that there was a great resemblance between two marks, with minor changes and the word 'PAN' being common to both. The main feature of the case was however that the mark KALAPAN had the device of the Ace of spade while that of MOTIAPAN had the betal leaf, and the goods i.e. Soap was in due course popularly known as 'Pan Marka'. The facts were similar to the case of Bande Nawaz Ltd. v. Registrar and another (P L D 1967 Kar.492) where also the two marks had a device of a 'deer' with the shapes being dissimilar, but the probability existed that the goods would be known in the market as deer mark or deer brand causing confusion.

4. Now in the present case no evidence has been brought on record by either party to show that the two marks LEECON and LEUKONOL are in fact causing any confusion or that the purchaser if one is likely to be deceived by the other. The parties obviously rely on the fact that this position is an admitted position as both of them have pleaded so. But this circumstance would not relieve the Registrar of his duty to examine the question in order to form his own judgment in the matter. This he has to do visually and phonetically. What he has got to do is best described in the case in the matter of an application by the Planotiest Company Ltd. (1906) 23 R.P.C.774', as follows:-

" ..You must take the two words. You must judge of them, both of their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion--that is to say, not necessarily that one man will be injured and the. other will gain illicit benefit, but that will be a confusion in the mind of the public, which will lead to confusion in the goods--then you may refuse the registration, or rather you must refuse the registration in that case."

I find that the Registrar in considering the question of similarity of the two marks appears to have applied the above test to the facts of the case, without stating the same. He has considered the effect of the two words visually as well as phonetically. He has considered the other circumstances of this case including the likely purchaser and the point of view of the public, and he has then reached the conclusion that there is no similarity between two marks and that the use of either of them is not likely to deceive or cause confusion in the trade. Both marks are maimed by the parties to have been in use for a number of years and there has not been any such confusion in the past. In these matters, the opinion of the Registrar would be interfered with if it could be shown to be wrong or perverse, and I find no reason to hold it as such. The cases cited by the learned counsel for M/s. Alphaco are clearly distinguishable on facts. No other argument was raised by either side in this respect except that the test has not been properly applied and reference was made to the well known quotation from the case of Aristoc Ltd. v. Rysta Ltd. (1940 62 RPC 65), which reads as follows:-

"The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938 (Which corresponds to section 10), must nearly always depend on firs impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words. Letter by letter and syllable, pronounced with the clarity to be expected from a teacher, for imperfect recollection and effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistance ministering to that person's wants. The tendency to slur a word beginning with as is generally speaking, very common, and the similarity between 'Rysta' and 'Ristoc' would, I think, be fairly obvious. It would not be surprising to learn that a person asking for 'Aristoc' stockings from a shop assistant who only knew of 'Rysta' stockings had been supplied with the latter and vice versa."

I have examined the two words, LEECUN and LEUKONOL and I feel that their dissimilarity is patent not only visually but applying the test stated above, the sound of one has no such resemblance with the other so as to create any type of confusion in the mind of the purchaser or the shop assistant. If each of the two trade marks is used in the normal way in the market, situations of deceit or confusion are not likely to arise and none in fact are shown to have arisen in the past. I, therefore, entirely agree with the finding of the Deputy Registrar on this point.

5. Mr. Bangesh, the learned counsel for M/s. Al-Chemists raised one more contention that although the opposition to the registration of LEUKONOL filed by Al-Chemists was not considered, being out of time, yet the fact that the Registrar had before him the prior application for registration for LEECON, he should have considered the same as equivalent to an opposition and should have refused registration to LEUKONOL. This contention would require examination only if the two marks were so similar as to be likely to create confusion or deception, which the learned counsel assumes for a fact. As I have agreed with the Registrar that there is no such likelihood, this contention need not, therefore, be considered.

6. In the conclusion, therefore, these two appeals are dismissed, and the order of the Registrar is upheld.

M.Y.H./H-52/K. Appeals dismissed.

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