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Miscellaneous Appeal No. 50 of 1981, decided on 12^th March, 1987.

---S. 6(1)(e) ---Words letter and Word---Meaning----[Words and Phrases]

Letter" is, defined in a dictionary to mean "mark or character usually printed or written which represents one or more speech sounds; character of an alphabet , Word" is defined as "sound or combination of sounds having meaning and forming an indivisible linguistic unit, written or printed character or set of characters representing such a unit. 'The two expressions viz. word and "letter" are not synonymous, but convey different meanings.

---Ss. 6(1)(e) & 2 (f) ---Word Mark ---Definition---Expressions letter and word are not synonymous---Restriction for registration of trade mark placed only on name , Signature or word unless condition mentioned under S. 6 (1)(e) were satisfied ---No restriction , however, imposed on a letter but it has to be seen as to whether mark was distinctive‑‑"Distinctive .mark"‑‑Test‑‑Court has to see whether mark is inherently distinctive.‑‑[Words and phrases].

The definition of 'mark' is quite wide and consists of various kinds of marks mentioned therein.' However, even this definition is not exhaustive. The use of word "includes" in the definition shows, that mark can consist even of some kinds other than those mentioned in definition. However, the reading of section 6(1)(e) clearly shows, that the restrictions put under it are only on the three kinds of marks viz. a name, a signature or any word and it provides, that they shall not be registrable, except those which fall within the descriptions in clauses (a), (b), (c) and (d) or unless upon the evidence of their distinctiveness. Thus, the evidence of distinctiveness is required only in case of a mark which consists of a name, or signature, or any word other than such as falls within the descriptions in clauses (a), (b), (c) and (d).

The first part of section 6(1)(e) would show, that a distinctive mark is registrable. "Mark" is defined in section 2(f) to include as a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof". In the definition of mark expressions "word" and "letter" are mentioned separately, which also shows that they are not synonymous. In the second part of section 6(1)(e) the restriction is placed only on name, signature or word, unless the conditions mentioned therein are satisfied. There is no such restriction on a "letter". However, it has to be seen as to whether the mark is distinctive.

The word "distinctive" means distinguishing a particular person's goods from some body else's goods, not a quality attributed to a particular article, but distinctive in that respect, that means that it is manufacture of him as distinguished from some‑body else's.

Where a mark is combination of a letter and a device or a word and a device, the get up as a whole must be considered for registration. The true test is what is totality of the impression and whether the impression so produced is such, as would cause confusion or deception. The question is whether device is distinctive and not whether it is artistic. The Judge has to look at the trade mark himself and not leave it to others to see if it is distinctive.

There was no such condition of evidence of distinctiveness in any other kind of mark. What is required in other kind of mark, which is proposed to be registered, is, that it should be distinctive. For the purposes of determining, as to whether that mark is distinctive or not, the Judge of the Tribunal has to apply its own mind to find out whether it is distinctive and should not leave it to others to see if it was distinctive. The distinctive mark must mean some mark, which distinguishes the goods, to which it is attached as those made or sold by the person who uses the mark". The purpose of the distinctiveness is, that the produce of the particular person may be distinguishable from the other similar goods, that may be manufactured by any other manufacturer, so that there be no confusion or deception caused to the general public. As a matter of fact, this condition of distinctiveness is for the purpose of benefit of the general public, so that they may not be deceived or confused and purchase goods manufactured by 'A' thinking them to have been manufactured by 'B'. Under section 6(1)(e), there are no restrictions on the registrability of "letter" as trade mark but that it should be distinctive.

Tribunal may have regard to the extent to which the mark is inherently adopted to distinguish and the extent to which the mark has acquired distinctiveness by virtue of user or other circumstances. No specified degree of inherent distinctiveness is laid down, but there must be something inherent in the mark itself which apart from mere user could make it capable of distinguishing the particular goods.

Court has to see whether the mark is inherently distinctive,

Chughtai Jamiluddin for Appellants.

Nemo for Respondent.

Date of hearing: 5th March, 1987.

The appellants in this case, who are Messrs Kia Industrial Company Limited and Kia Motor‑Cycle Company, both of Seoul Korea, had applied to the Trade Marks Registry at Karachi under their Application No. 72318, for the registration of their device trade mark in clause 12 in respect of vehicles, apparatus for locomotion by land, air and water. The Trade Marks Registry issued a show‑cause notice, dated 5th January, 1981 to the appellants objecting to the appellants trade mark under section 6(1)(e) as letter 'IQ" was per se not distinctive. The reply was submitted to the Registrar, that by no manner or means and the mark represented letter "Q but it was a black non‑descriptive circular geometrical design with a jutting projecting from the centre to the top of the circle at a slant to the right. It was further urged, that the mark was per se distinctive and eye‑catching and could easily be remembered because of its unusual characteristics. After due hearing, the appellants were informed by the Deputy Registrar by a letter, dated 7th June, 1981, that their application for registration was refused and the grounds of decision were given in order, dated 20th July, 1981. Aggrieved by this order, the appellants have filed this appeal under section 76 of the Trade Marks Act, 1940.

2. I have heard Mr. Chughtai, learned counsel for the appellants and also perused the record and proceedings before the respondent. The respondent, Deputy Registrar, Trade Marks, remained absent.

3. From the perusal of the impugned order, it appears, that it was argued before the learned Deputy Registrar, that the device trade mark was not letter Q" but was geometrical design, which was a symbol which looked like a bull's eye. It was also urged, that it was distinctive mark. It was further urged, that even if, it was considered a letter Q", there were precedents where the Registry had registered so many letter marks and list of letter marks, which are 20 in numbers, was produced before the Deputy Registrar for perusal. The learned respondent, however, repelled these arguments and refused registration. It will be pertinent to reproduce the relevant portion of the impugned order:

In my opinion the list given by the learned Advocate about letter marks registered in this registry are registered on the basis of evidence or in association of other marks and each was considered separately as to the registrability. We have a section 6(1)(e) of the Trade Marks Act in which letter marks are shown not distinctive and are debarred from the registration unless sufficient evidence of user is given by the applicants to show the goodwill or reputation of the mark in the market. This mark is not geometrical design, but clear cut one letter Mark "Q" and it is not per se distinctive. This mark is proposed to be used and is not registrable."

4. It will be seen, that the application of the appellants was refused by the learned Deputy Registrar on the following grounds:‑‑

(1) That the proposed device trade mark was letter "Q" the registration of which was barred under section 6(1)(e) of the Trade Marks Act, 1940.

(2) That there was no evidence with regard to any goodwill or reputation established by the appellants in the market by the user of the proposed trade mark.

(3) That the proposed trade mark was not a distinctive mark.

5. It will be helpful to reproduce section 6(1)(e) of the Act which has mainly been relied upon by the respondent while refusing the request of the appellants. This section 6(1)(e) reads as under:‑‑

"Section 6(1).‑‑a trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars namely:‑‑

(a) (b) (c) (d) ...............................

(e) any other distinctive mark, provided that a name, a signature, or any word, other than such as falls within the description of above clauses shall not be registrable except upon evidence of its distinctiveness."

6. It is argued by Mr. Chughtai, that plain reading of this provision of law shows, that there were no restrictions on the registration of a letter mark. However, there is restriction on the registration of a 'word' unless the conditions mentioned therein are satisfied. Neither 'letter' nor 'word' has been defined in this Act. As such we will have to see dictionary meaning of these two expressions. In the Collier's Dictionary 'letter' is defined to mean "mark or character usually printed or written which represents one or more speech sounds; character of an alphabet" In the same dictionary 'word' is defined as "sound or combination of sounds, having meaning and forming an indivisable linguistic unit, written or printed character or set of characters representing such a unit." Thus, it will be seen, that these two expressions viz. 'word' and 'letter' are not synonymous, but convey different meanings.

7. The first part of section 6(1)(e) would show, that a distinctive mark is registrable. 'Mark' is defined in section (2)(f) to include "a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof".

8. It will be seen, that in the definition of mark expressions 'word' and 'letter' are mentioned separately, which also shows, that they are not synonymous. In the second part of section 6(1)(e) the restriction placed only on name, signature or word, unless the conditions mentioned therein are satisfied. There is no such restriction on al 'letter'. However, it has to be seen as to whether the mark is distinctive. In the case of Perry v. Davis 3 Sons v. Herbord reported in (1890) 7) R P C 336 at page 340 where Lord Halsbury in the House of Lords said, "the word distinctive means distinguishing a particular person's goods from some body else 'is goods, not a quality attributed to a particular article, but distinctive in that respect, that means that it is manufacture of him as distinguished from some body else's." In the case of U Foams v. Assistant Registrar reported in A I R 1977 Mad. 414, the appellant applied for registration of his trade mark, consisting a letter "U" with a crown. The application was rejected with the comment, that crown did not look like crown. Allowing the appeal it was held "where a mark is combination of letter and a device or a word and a device, the get up as a whole must be considered for registration. The true test is what is totality of the impression and whether the impression so produced is such, as would cause confusion or deception. The question is whether device is distinctive and not whether it is artistic. The Judge has to look at the trade mark himself and not leave it to others to see if it is distinctive."

We have already seen that the definition of 'mark' is quite wide and consists of various kinds of marks mentioned therein. However, even this definition is not exhaustive. The use of word 'includes' in the definition shows, that mark can consist even of some kinds other than these mentioned in definition. However, the reading of section 6(1)(e) clearly shows, that the restrictions put under it are only on the three kinds of marks viz. a name, a signature or any word and it provides, that they shall not be registrable, except those which fall within the descriptions in clauses (a), (b), (c) and (d) or unless upon the evidence of their distinctiveness. Thus, the evidence of distinctiveness is required only in case of a mark which consists of a name, or signature, or any word other than such as falls within the descriptions in clauses (a), (b), (c), and (d). Mr. Chughtai rightly contended, that there was no such condition of evidence of distinctiveness in any other kind of mark. What is required in other kinds of mark, which is proposed to be registered, is, that it should be distinctive, As held in the above‑mentioned cases for the purposes of determining, as to whether that marks is distinctive or not, the Judge of the Tribunal has to apply its own mind to find out whether it is distinctive and should not leave it to others to see if it was distinctive. Lindley L.J. has said, that "the distinctive mark must mean some mark, which distinguishes the goods, to which it is attached as those made or sold by the person who uses the mark." The purpose of the distinctiveness is, that the produce of the particular person may be distinguishable from the other similar goods, that may be manufactured by any other manufacturer, so that there be no confusion or deception caused to the general public. As a matter of fact, this condition of distinctiveness is for the purpose of benefit of the general public, so that they may not be deceived or confused and purchase goods manufactured by "A" thinking them to have been manufactured by "B".

We have already seen, that under section 6(1)(e), there are no restrictions on the registrability of "letter" as trade mark but that it should be distinctive.

Keeping this conclusion in view, I now proceed to examine whether the mark which is proposed by the appellant to be registered is a "letter" and whether it could be considered as distinctive.

It was argued by the learned counsel for the appellants, that the learned Deputy Registrar had erroneously held, that this device or mark was letter "Q". The device or mark is re‑produced below:‑‑--------------

Q

Letter "Q" consists of circle with the line jutting from inside of bottom to outside towards right side. In the proposed device it would be seen, that it is a broad black incomplete circle with a line jutting inside downwards from the right upper side. It is not even an inverted letter "Q" as such mark would have line jutting out on the left upper side.

It is further argued by the learned counsel for the appellants, that learned Deputy Registrar had wrongly held, the mark to be not distinctive. Admittedly, this mark has not been used as yet by the appellants in the Pakistan market, and, therefore, there can be no evidence to show, that any goodwill or reputation has been established by user of this mark. As already pointed such evidence was not even necessary.

It is clear, that the proposed mark cannot be considered by any stretch of imagination to be a letter of English alphabet. It is a sort of device which is being proposed to be used by the appellants for the purpose of distinguishing the produce from the similar products of other manufacturers. It is not alleged or contended, that any other manufacturer is using this device or mark so that there can be confusion or deception in the mind of general public and they may be not be able to distinguish the goods manufactured by the other manufacturer. In (1931) 48 R P C 392 at page 397 in Hanas Luritzens application it has been held, that the Tribunal may have regard to the extent to which the mark is inherently adopted to distinguish and the extent to which the mark has acquired distinctiveness by virtue of user or other circumstances. No specified degree of inherent distinctiveness is laid down, but there must be some thing inherent in the mark itself which apart from mere user could make it capable of distinguishing the particular goods. In the instant case, admittedly, the mark is still not used by the appellants on their goods in Pakistan, as such there can be no evidence of any user. However, we have to see whether the mark is inherently distinctive.

The proposed trade mark is not a letter of English alphabet. It is a complete circle, but the upper side of one end jutts out in conical shape. The boundary of the diagram is broad and in black colour with white blank space in the middle from which a broad black line jutts from middle to the broad boundary on left top side. This mark is not alleged to be used by any other manufacturer. Therefore, this mark can easily distinguish the manufactured goods of appellants from goods of other manufacturers. The proposed mark in my opinion is distinctive mark if we apply that tests laid down by superior Courts in above mentioned cases.

From the list produced by the appellants of the marks registered with Registry of the Trade marks at Karachi, which was produced by the appellants before the respondent and which was referred to by him in his order, it appears, that the trade marks of Messrs Celanese Corporation and of Merck bearing Applications Nos. 62207 and 57375 respectively, of Avtoprom under Application No. 32299 and of Security Pacific Corporation under the Application No. 63335 are all diagrams with black broad boundaries and have been registered: Of course the respondent is not bound by these precedents, but still the fact remains that the different diagrams with block broad boundaries have been allowed to be registered, considering them to be distinctive marks, I do not find any reason for not considering the proposed trade mark of the appellant as distinctive.

In view of the above discussions, the appeal of the appellant is allowed. The impugned order is set aside with no orders as to costs and the respondent is directed to proceed to register the trade mark device of the appellant as requested by them.

Appeal was allowed by a short order earlier in the day. Above are the reasons in support of the said order.

M.B.A./K‑7/K Appeal allowed.

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