Find a Lawyer

Miscellaneous Appeals Nos.60 to 66 of 1981, decided on 24th September. 1986.

‑‑‑Ss.2,6,12,14 & 76‑‑Registration of trade mark‑‑Application for‑ Rejection of‑‑Appeal‑‑Provisions of clause (e) of S. 6(1) of Act V of 1940 being comprehensive and wide enough to include every kind of trade mark not mentioned in other clauses of same section, there is no bar to registration of property mark‑‑Order of Registrar dismissing application of appellants for registration of property mark on ground that appellants were not entitled to property mark as they were neither manufacturing nor selling any goods in market, was set aside by High Court being erroneous and illegal with direction to Registrar to register trade mark applied for by appellants.

Airlines Corporation v. The Registrar of Trade '.Nark Karachi PLD 1980 Kar. 472; Messrs Bubble Up Co. Inc. v. Messrs 7‑Up P L D 1975 Kar. 582 and Haji Abdul Ghani, Haji Ibrahim and others v. The Registrar of Trade Marks, Karachi P L D 1961 Kar. 158 ref.

S. Shaukat Ali for Appellant.

Muzaffar Hassan for Respondent.

Date of hearing: 2nd September, 1986.

This judgment would dispose of the seven appeals filed against the common order of the Registrar of Trade Marks dated 30‑8‑1981 whereby the learned Registrar has refused to register appellants seven trade mark applications each for registration of a trade mark comprising the letters PIA in English and Urdu in respect of different sets of goods falling in different classes.

2. The appellants are the registered proprietors of two trade marks each comprising the letters P.I.A. One is registered under No.28103 dated 29‑10‑1957 in Class 16 and the other under No.50725 dated 24‑12‑196fl in Class 1. Both the trade marks were advertised in Trade Narks Journal. The appellants filed an application No.64347 in class 18 for registration of a trade mark. Ultimately the tribunal accepted all the seven trade marks applications including one bearing No.64387 in class 2 and advertised them in the Trade Marks Journal. The Registrar, however refused to register the trade mark bearing. No.64387 on the ground that trade mark is being used in relation to goods for the purpose as to indicate the origin of the goods, in other words for purpose of indicating either manufacturer or some other dealing with the goods in the process of manufacture or in the course of business before they are offered for sale to the public. He has further observed that the function of a trade mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods, to give an indication to his eye of trade source for which the goods come or the trade hands through which they pass on their way to the market.

3. Learned counsel for the appellants has assailed the finding of the learned Registrar on the ground that the registration is being sought to stop the others to use the property mark of the appellant.

On the other hand learned counsel for the respondent had supported the order of the Registrar on the ground that the appellants are neither manufacturing nor selling any goods in the market. It is only a service mark and as they do not sell any goods, they are not entitled to the registration of a mark because service mark is not recognised by law.

The appellants have applied for the registration of their marks as under:‑--

Class Marks for Applied Goods for which mark Period to user of

is being used mark

12 PIA 64585 Vehicle, apparatus for 1976

locomotion by land, air of water.

25 PIA 64388 Clothing including, 1976

Uniform.

21 PIA 64387 Small domestic untecils 1976

and --------

8 PIA 64384 Hand tools and 1976

instruments;

cuttlery, etc.

18 PIA 64347 Traveling bags etc. 1976

34 PIA 64389 Tobacco, raw or 1976

manufactured, etc.

16 PIA 64386 Paper and paper 1976

articles, stationary,

etc. etc.

The learned Registrar has proceeded on the assumption that as the applications relate to the property mark and not any goods, therefore, the same could not be registered under the Act This contention has no force. Previous applications submitted by the appellants Nos.28103 dated 29‑10‑1957 and 50725 dated 24‑12‑1968 were duly registered. Subsequently action had been taken under section 46(4) of the said Act. The appellants successfully challenged that order in the High Court in the case. The Pakistan International Airlines Corporation v. The Registrar of Trade Marks Karachi, P L D 1980 Kar. 472. In this case the Registrar observed that it is not a trade mark as defined in section 2(1)(1) of the said Act and that the registration of that mark had been secured on erroneous grounds and facts. It was also observed that neither the stationery goods under trade mark in class 16 are being sold in the market as vendible articles nor latter goods under the trade mark in class 18 are being manufactured. The appeal was accepted and the order of the Registrar was set aside. In that case also the trade mark related to the letters and stationery goods and Serial No.28103 was allotted by the Trade Marks Office. The present application also relates to the travelling bags, paper and paper articles, clothing including uniform, etc. All these articles are identical and it was the duty of the Registrar to have followed the judgment of this Court cited above. To further elucidate the point it is also necessary, to refer to various provisions of the Act. Section 2(1)(a) defines "associated trade marks" as trade marks deemed to be or required to be registered as associated trade marks under the Act. Section 2(1)(f) defines mark' includes a device, brand, heading, label, ticket, name, signature, word, letter or numerical or any combination thereof. Section 2(1)(1) defines 'trade mark' as a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person. Section 12 contemplates that where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods is identical with another trade mark which is registered, or is the subject of an application for registration in the name of the proprietor in respect of the same goods or description of goods, or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprieter, the Registrar may at any time require that the trade marks shall be entered on the register as associated trade marks. It is thus, clear that the definition of 'mark' and 'trade mark' are exhaustive and they indicate a device, brand heading, label, ticket, name, signature, word, letter and this mark can be used in relation to the goods by the proprietor as registered user. The appellants have a right to use the word PIA as these words are being used by them for a fairly long time. They have acquired exclusive right to use these words. Under section 6(1) a trade mark shall be registered if at least one of the conditions mentioned in the section is attracted. Section 6(1)(e) is wide enough to cover any distinctive mark. Under section 14 of the Act any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it may apply for the registration In the case of Messrs Bubble Up Co. Inc. v. Messrs 7‑Up P L D 1.975 Kar. 582 it has been observed that upon a plain interpretation of section 6(1) each of the clauses laid down a different requirement and the subsection insists upon compliance with any one.

As the essential particulars of the trade mark have been mentioned, the application moved by the appellant should have been registered. The airline with its peculiar mark is known in the country and abroad. The notice was published and there was no opposition to the application moved by the appellant. The request made by the appellant for the registration of the mark does not offend any provision of the Act. Section 6(1)(e) is a comprehensive provision and includes every kind of mark not mentioned in other clauses. There is also no bar of registration of property mark.

I may also refer to the case of Hay Abdul Ghani Hay Ibrahim and others v. The Registrar of Trade Marks, Karachi P L D 1961 Kar. 15F and the operative part reads as under:‑-

"Three distinctions exist between trade "name" and a "trade mark". First the owner of a registered trade mark possesses right which are more readily established and less easily attacked than are rights in a trade name or in names which possess a secondary meaning. Secondly, a trade mark is used on goods and identifies the origin of the goods whereas a trade name identifies the business. A trade mark is applicable only to a vendible article of merchandise to which it is affixed while a trade name relates to business and its goodwill rather that a vendible commodity. In other words a trade name and a trade mark are two aspects of good will. Thirdly, they many be distinguished on the ground that a trade name need not have a bodily existence, unless it is written on something and may exist abstractly but a trade mark must always have a body because it is always a mark on something. The former has primarily phonatical existence and the latter has primarily a visual existence."

Another feature of the case is that the .Registrar has been allowing to register trade marks under various classes applied for by the Companies/ Corporation such as:‑

(a) Alitalja‑Linee Aebee Italiane S.P.A. (a Joint Stock Company organised under the laws of Italy).

(b) Grindlays Bank Limited (a Banking Company incorporated in U.K.)

(c) Karachi Branch of European Asian Bank A.G. (incorporated with limited liability in the Federal Republic of Germany).

(d) Bank of America National Trust and Savings Association (a Corporation organised under the Federal Laws of U.S.A.)

(e) American Express Company (a Corporation Organised and existing under the laws of the State of Yew York, U.S.A.)

(f) First National City Bank of New York (U.S.A.).

The appellant has filed the copies of the Trade Mark Journal where these classes have been advertised under section 15(1) (proviso) of the Act. No affidavit in rebuttal has been filed to challenge the contents of the appeal. Annexure 'C' shows that vehicles, apparatus for locomotion by land, air or water were advertised. So also periodicals, journals of all sorts, Grindlays Bank Limited were advertised under section 15(1). Similarly printed matters, calendars, diaries, Karachi Branch of European Asian Bank A.G. were advertised. Bags for shopping for men and women included in class 2 of Alitalia Lines Acree Italiane were also advertised. Similarly, furniture, mirrors, articles of wood of the same air lines were also advertised. Printed matter, printed forms and publications of Bank of America were also advertised. There are numerous other instances.

That it is incorrect to contend that as the appellant is not manufacturing any goods, therefore, the marks applied for cannot be registered. The Registrar allowed the registration of the appellants' trade mark in question for a long period. All these facts clearly establish that the appellants' applications were rejected on erroneous legal view.

The Registrar has placed reliance on an Indian Supreme Court case reported in A I R 1972 S C 2488 but the decision of this case does not apply to the present case because in India the law has been amended and new Law of Trade and Merchandise Marks Act, 1958 was introduced and section 8 of the said Act specifically provided that a trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods. Thus, there was a change in the language of subsection (1) of section 8 from the corresponding section 5(1) of the Act of 1940 and is intended to clarify that a trade mark may be registered only in respect of goods comprised within a prescribed class of goods. As such reliance could not be placed on the case decided by the Indian Supreme Court.

In the result the decision of the Registrar is set aside and a direction is made to the Registrar for registration of the trade mark application Nos.64347 in Class 18, 64387 in. Class 21, 64388 in Class ''5, 64384 in Class 8, 64385 in Class 21, 64389 in Class 34 and 64386 in Clasp 16.

There will be no order as to costs.

H. B. T. /P‑1/K Trade mark registration ordered

Find a Lawyer Near You

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