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Miscellaneous Appeal No.48 of 1983, decided on 16th June, 1987.

---Ss.10 & 76--Registration of Trade Mark s--Similarity Words--may have common suffixes but if they are distinguishable in their earlier parts, they cannot be, held, to be similar.

Abdul Wahid v. Haji Abdul Rahim P L D 1973 S C 104; Facsimile Letter Printing Co. Ltd. v. Facsimile Typewriting Co. (1912) 29 RP 557; British Drug House Ltd. (1913) 20 R P C 73; 37 R P C 37; re: Fox & Co.; Messrs Philip Morris Incorporates v. Registrar Trade Marks and others 1980 C L C 1272 and Dr. Hakimulah Sidiqui. V. M/s. Alphaco (Pakistan) Karachi N L R 1981 U C 362 rel.

---Ss.10 & 76--Registration of Trade Marks--Similarity--appellant Trade Mark 'Hingston was refused registration on ground that had resemblance with respondent's Trade Mark 'Princeton'--Words 'Princeton' and 'Hingston' having common suffixes but their earlier parts different and there could be no possible similarity between 'Pince' and 'Hings'--Former words even having a dictionary meaning which latter had not--No visual or phonetic similarity between to marks existed--Goods covered by two marks were cigarettes and buyer who gave preference to a particular brand were not likely to 1, deceived by another brand merely because same had somewhat simile name--No resemblance in two Trade Marks therefore, existed circumstances--Order of Registrar, who determined issue on basis balance of convenience, finding same in favour of respondent are refused registration of appellant's Trade Mark, held, was wholly uncalled for and set aside--Application of appellant or registrar of their Trade Mark, ordered to be taken up."

Aluminium Products Ltd., Chittagong v. Registrar of Trade Marks Chittagong P L D 1958 Dacca 481 and Glaxo Laboratories Ltd, England v. Assistant- Registrar Trade Marks Karachi P L D 19i Kar. 858 ref.

Zain Shaikh for Appellant.

Sohail Muzaffar for Respondents.

Date of hearing: 6th May, 1987.

The facts of the case, briefly stated, are, that the appellants who according to them are one of the largest manufacturers and dealers of tobacco products in the country, applied to the Registrar, Trade Marks, for registration of their mark "Hingston" in class 34 in respect of "tobacco, raw or manufactured including cigarettes smoker's articles and matches". Respondent Lackson Tobacco Company Limited (respondent No-2) opposed the registration as they are proprietors of Trade Mark "Princeton" which already stands registered with the learned Registrar for similar goods in the same class. The registration of the appellants' mark was opposed on the ground of close resemblance between the two marks. The respondent No.2 had also claimed user of their Trade Mark in Pakistan since 1978. The learned Registrar thereafter, vide its order dated 10-4-1983, accepted the respondents opposition and refused the registrar the appellants' Trade Mark.

It was held by the learned Registrar, that there were traces of similarity, between the two Trade Marks and further finding the balance of convenience in favour of the respondents on account of their continuous user of the Trade Mark and its acquired reputation in the market, he refused to register- the appellant's Trade Mark.

I have heard Mr. Zain Shaikh, learned counsel for the appellants and Mr. Sohail Muzaffar, learned counsel for the respondents.

According to Mr. Zain Shaikh, discretion was not exercised properly by the learned Registrar as evidently, the first part of the two Trade Marks is dissimilar and according to the counsel, for the purpose of determining similarity between the Trade Marks only their first syllables are to be taken into consideration. Mr. Sohail Muzaffar, on the other hand, has fully supported the impugned order.

I find lot of force in Mr. Zain Shaikh's contention. It is an accepted principle that words may have common suffixes, but if they A are distinguishable by their earlier parts, they cannot be held to be similar. Such views were expressed by the Supreme Court in Abdul Wahid v. Haji Abdul Rahim P L D 1973 S C 104 and the words "Saigon", "Daigon" and "Dragon" were found to be dissimilar. Wahiduddjn Ahmed, J. (as he then was) who wrote the judgment in the case has observed:

" In the present case, in the registered Trade Mark 'Daigon' on the one hand and the registered Trade Mark 'Dragon' on the other hand, the first syllables' Dai and 'Dra' are dissimilar from the first syllable 'Sail and the learned Assistant Registrar was perfectly justified in holding that it is the first syllable mostly which decides the question of. conflict and likelihood of deception and confusion."

Reference in this case has been made to the case of Facsimile Letter Printing Co. Ltd. v. Facsimile Typewriting Co. (1912) 29 R P C 557 wherein Sargent L.J. had observed as follows:

"The tendency of persons using the English language to slur the terminations of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction. (London Lubricants Ltd.'s Appl. (1925) 42 R P C 264)."

In the matter of the Trade Mark 'Herogen' of the British Drug House Ltd. (1913) 20 R P C 73, the word "Herogen" was found to be distinct from "Cerogen" so as to cause any deception. It was observed by Eve, J. in that case as follows:-

"That is a question of fact. The question is not whether a dishonest trader could so use a word as to bring about deception, but whether the ordinary use of the word is calculated to bring about that result. On the whole, I think such a use of "Herogen" is not so calculated, when the fact is recognised that its termination is such a common one as to convey no indication to the purchaser of what an article is. I am driven to the conclusion that the letters which precede the termination are the letters upon which an intending purchaser must always rely, and to the accuracy of which he must always direct his attention."

Similar observations were made by the Chancery Division in the matter of Fox & Co. (37 R P C 37), the competing Trade Marks being "motrate" and "filtrate". Mr. Zain Shaikh has also referred to the cases of Messrs Philip Morris Incorporates v. Registrar of Trade Marks and others (1980 C L C 1272) and Dr. Hakimullah Siddiqui v. M/s. Alphaco (Pakistan) Karachi (N L R 1981 U C 362) besides a number of other cases from the English jurisdiction, reference to which in my opinion, would be unnecessary. However, in the two cases decided by our own courts, the marks consisting of words "Solo" and "Polo" and "Lecon" and "Leukonol" respectively were found to be dissimilar and distinct.

Turning to the merits of the present case, there appears to be no visual or phonetic similarity between the two marks. No doubt, the words "Princeton" and "Hingston" have common suffixes but their earlier parts are different as there can be no possible similarity between "Prince" and "Rings". The former even has a dictionary meaning which the latter has not. Apart from that the goods covered by the two marks are cigarettes and the buyers who give preference to a particular brand of the same are not likely to be deceived by another brand merely because the same has somewhat similar name. However, I find no resemblance between the two Trade Marks in the present case. Mr. Sohail Muzafar. although, has relied upon two cases reported as Aluminium Products Ltd. Chittagong v. Registrar of Trade Marks Chittagong P L D 1958 Dacca 481 and Glaxo Laboratories Ltd. England v. Assistant Registrar Trade Marks Karachi P L D 1977 Kar. 858 but the same, it appears, are not attracted to the facts of the present case. In the first case it was held by the High Court of Dacca that the question of resemblance between two Trade Marks and the likelihood of their, causing deception in the mind of public is to be -considered by reference not only to the whole mark, but also to its distinguishing or essential features if any. In the second case a learned Single Judge of this Court found the Trade Marks "Vistamycin" and Crystamycin" to be similar. However, as far as the first case is concerned. I find the same to be clearly distinguishable as there the question was of resemblance between two able marks respectively used by the rival traders. In second case, the entire structure of the two .words "Crystamycin" and "Vistamycin" was considered and consequently, the two words were found to be similar, if not otherwise, at least phonetically. In the present case, as has already been pointed out, no resemblance either visual or phonetic can be found between the two marks. Moreover the learned Registrar himself appears to be not so certain about any similarity between the words "Hingston" and "Princeton" as he has found only trace of similarity between them. He also appears to have determined the issue on the basis of balance of convenience, finding the same to be in favour of the respondents, which, in my opinion, was wholly uncalled for. I have, therefore, no doubt in my mind that the discretion has not been exercised properly by the learned Registrar.

As a result, this appeal is allowed and the decision of the learned Registrar, dated 10-4-1983, is set aside. The application of the appellants for registration of their Trade Mark shall, therefore, proceed for registration. The parties are left to bear their own costs.

M. Y. H./P-32/K Appeal allowed.

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