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Civil Miscellaneous Appeal No.32 of 1980, decided on 5th March, 1987.

‑‑‑Ss.37 & 76‑‑Trade Mark "Hafiz" used on label of product of appellant refused registration on objection by respondent in whose favour such trade mark had been registered‑‑Objections raised by appellant before, High Court against such registration were raised and considered by Registrar, Trade Marks in rectification application of appellants‑‑Appellant's failure to challenge that order under appropriate provisions of Trade Marks Act, held, would confer finality on Registrar's order‑ Proceedings which had attained finality could not be allowed to be challenged collaterally in another proceeding unless permitted by law.

Tudor's case (1915) 32 R P C 456; Diamond's case (1921) 38 RPC 373 and York's case 1983 P S C Cases 508 ref.

‑‑‑S. 6‑‑Trade Mark "Hafiz", connotation of‑‑Word "Hafiz" would mean a protector, a preserver, a guardian, a governor and by all these meanings word "Hafiz", held, was not a word which cannot be accepted as a trade mark‑‑Acceptance of word "Hafiz" as trade mark by trade mark registry could by no stretch of imagination be taken as acceptance in violation of any provisions of Trade Marks Act, 1940‑‑Word "Hafiz" used as trade mark would not injure the religious feelings of Muslims or of any sect of the Muslims if used as a trade mark.‑‑[Words and phrases].

‑‑‑S. 6, Words and phrases‑‑Words "publici juris"‑‑Meaning and scope‑ Word become "publici juris" when it is declared common to the trade by Registrar of Trade Marks‑‑For declaring a particular word/mark as common to trade or in other words becoming publici juris, the sole and final Judge is the Registrar of Trade Marks himself‑‑Where a trade mark had been used by registered proprietor in year 1963 and he worked thereon since then continuously and without any interruption let or hindrance having not abandoned it at any stage, such word would not become "publici juris".‑‑[Words and phrases].

‑‑‑Ss. 6, 10 & 76‑‑Adoption of word "Hafiz" used on products of appellant found to be not honest‑‑Effect‑‑Where exercise of discretion by Registrar of Trade Marks refusing registration of trade mark on products of appellant was neither arbitrary nor fanciful, same, held, would not call for interference by High Court in exercise of appellate jurisdiction.

Abbas Ahmad for Appellant.

Ibrahim Pishori for Respondent.

Date of hearing: 27th October, 1987. .

The appellant applied for registration of their label in class 30. The label comprised of word 'Hafiz' written prominently with red circular back ground and other descriptive and decorative features. The label was advertised before registration in June 1978. The registration was opposed by respondent No.2 who is the registered proprietor of Mark No.62517 in the same Class. The opposition was based on the ground that the mark 'Hafiz' on the label was used by respondent No.2 since 1963 on his product "Sohan Halwa" in packed form throughout Pakistan and with the passage of time the mark has attained distinctiveness of the goods of respondent besides, acquiring valuable goodwill. That adoption of mark 'Hafiz' by the appellant is dishonest and with sole object to prey upon the goodwill of respondent No.2. The Registrar upheld the objection of respondent No.2 and rejected the application of appellant for registration of their mark by his order dated 15‑3‑1980 which is impugned in this appeal.

The learned counsel for the appellant has raised the following contentions in this appeal:‑

(i) That the word 'Hafiz' being a title its registration in favour of respondent No.2 as a mark is illegal and void.

(ii) That word 'Hafiz' is descriptive and as such no one can claim monopoly right to use it as his trade marks and

(iii) That the word 'Hafiz' is common to trade and as such refusal of Registration to register it in the name of appellant is arbitrary.

The Registrar in the impugned decision found on the basis of evidence produced before him that the mark of respondent No.2 was registered in the year 1975 and he was using the same since 1963, while petitioner started using the mark which is similar to the mark of respondent No.2 since 1977. This finding of fact by the Registrar is

Civil Miscellaneous Appeal No.32 of 1980, decided on 5th March, 1987.

‑‑‑Ss.37 & 76‑‑Trade Mark "Hafiz" used on label of product of appellant refused registration on objection by respondent in whose favour such trade mark had been registered‑‑Objections raised by appellant before, High Court against such registration were raised and considered by Registrar, Trade Marks in rectification application of appellants‑‑Appellant's failure to challenge that order under appropriate provisions of Trade Marks Act, held, would confer finality on Registrar's order‑ Proceedings which had attained finality could not be allowed to be challenged collaterally in another proceeding unless permitted by law.

Tudor's case (1915) 32 R P C 456; Diamond's case (1921) 38 RPC 373 and York's case 1983 P S C Cases 508 ref.

‑‑‑S. 6‑‑Trade Mark "Hafiz", connotation of‑‑Word "Hafiz" would mean a protector, a preserver, a guardian, a governor and by all these meanings word "Hafiz", held, was not a word which cannot be accepted as a trade mark‑‑Acceptance of word "Hafiz" as trade mark by trade mark registry could by no stretch of imagination be taken as acceptance in violation of any provisions of Trade Marks Act, 1940‑‑Word "Hafiz" used as trade mark would not injure the religious feelings of Muslims or of any sect of the Muslims if used as a trade mark.‑‑[Words and phrases].

‑‑‑S. 6, Words and phrases‑‑Words "publici juris"‑‑Meaning and scope‑ Word become "publici juris" when it is declared common to the trade by Registrar of Trade Marks‑‑For declaring a particular word/mark as common to trade or in other words becoming publici juris, the sole and final Judge is the Registrar of Trade Marks himself‑‑Where a trade mark had been used by registered proprietor in year 1963 and he worked thereon since then continuously and without any interruption let or hindrance having not abandoned it at any stage, such word would not become "publici juris".‑‑[Words and phrases].

‑‑‑Ss. 6, 10 & 76‑‑Adoption of word "Hafiz" used on products of appellant found to be not honest‑‑Effect‑‑Where exercise of discretion by Registrar of Trade Marks refusing registration of trade mark on products of appellant was neither arbitrary nor fanciful, same, held, would not call for interference by High Court in exercise of appellate jurisdiction.

Abbas Ahmad for Appellant.

Ibrahim Pishori for Respondent.

Date of hearing: 27th October, 1987. .

The appellant applied for registration of their label in class 30. The label comprised of word 'Hafiz' written prominently with red circular back ground and other descriptive and decorative features. The label was advertised before registration in June 1978. The registration was opposed by respondent No.2 who is the registered proprietor of Mark No.62517 in the same Class. The opposition was based on the ground that the mark 'Hafiz' on the label was used by respondent No.2 since 1963 on his product "Sohan Halwa" in packed form throughout Pakistan and with the passage of time the mark has attained distinctiveness of the goods of respondent besides, acquiring valuable goodwill. That adoption of mark 'Hafiz' by the appellant is dishonest and with sole object to prey upon the goodwill of respondent No.2. The Registrar upheld the objection of respondent No.2 and rejected the application of appellant for registration of their mark by his order dated 15‑3‑1980 which is impugned in this appeal.

The learned counsel for the appellant has raised the following contentions in this appeal:‑

(i) That the word 'Hafiz' being a title its registration in favour of respondent No.2 as a mark is illegal and void.

(ii) That word 'Hafiz' is descriptive and as such no one can claim monopoly right to use it as his trade marks and

(iii) That the word 'Hafiz' is common to trade and as such refusal of Registration to register it in the name of appellant is arbitrary.

The Registrar in the impugned decision found on the basis of evidence produced before him that the mark of respondent No.2 was registered in the year 1975 and he was using the same since 1963, while petitioner started using the mark which is similar to the mark of respondent No.2 since 1977. This finding of fact by the Registrar is well supported by the documentary evidence on‑ record. The learned counsel for the appellant, however, urged that the decision of Registrar cannot be sustained as by refusing to register the mark of appellant the registrar has virtually conferred monopoly right to use the word 'Hafiz' by respondent No.2 which is contrary to law as word 'Hafiz' is a title in which no one can claim exclusive right of user. It is alternatively urged by the learned counsel that the word 'Hafiz' with other descriptive and decorative matter on the label of respondent is common to trade and as such the Registrar should not have refused to register the same in favour of appellant. The learned counsel in support of his above contentions relied on Tudor's case (1915) 32 R P C 456, Diamond's case (1921) 38 R P C 373 and York's case 1983 P S C Cases 508. The learned counsel for respondent No.2 on the other hand contended that the Registrar being a special tribunal, the exercise of discretion by it will not be interfered with lightly by this Court in appeal unless it is found to be fanciful, arbitrary or capricious. It is urged by respondent that the appellant had applied for registration of their trade mark on the basis of honest and concurrent user while the conclusion of Registrar after considering the evidence produced before him was otherwise and as such the refusal of Registrar to register the mark of appellant in such circumstances was neither arbitrary nor fanciful so as to call for interference in the appeal. It is also urged by the learned counsel for respondent No.2 that on identical ground as are now raised by the appellant in this appeal, the appellant had filed rectification proceedings under section 37 of the Act against the respondent No.2 which was rejected and as such he cannot agitate these contentions again in this appeal as he failed to challenge the order of Registrar dated 28‑3‑1979 rejecting his application under section 37 of the Act, which has attained finality. The contention of the learned counsel for the respondent are not without substance. A perusal of the order of registrar dated 28‑3‑1979 whereby he rejected the application of petitioner to remove the registered mark of respondent No.2 'Hafiz' from the Registrar of Trade Mark, will show that all the above contentions now raised by the learned counsel for the appellant in support of this appeal were raised before the Registrar in support of their rectification application which were duly considered and repelled. The appellant failed to challenge the said order under the Act and thus is attained finality. It may be true, that the scope of two proceedings are different but the findings given on a relevant contention in one proceeding which attained finality cannot be allowed to be challenged collaterally in another proceedings unless it is permitted by law. The Registrar while dealing with the contention of appellant in proceedings under section 37 of Act held as follows: ‑--

"I have gone through the pleadings and the evidence filed by the respective parties and have also heard the learned counsels for the contesting parties at length. I have came to the safe conclusion that no case is made out for expunction of the Mark Hafiz registered under No.62517. The word HAFIZ, adopted as a trade mark by the registered proprietor, in my estimation does not infringe section 8(a) or 8(b) of the Trade Marks Act.

"HAFIZ" is a common dictionary word meaning a person who remembers by heart. It does not ordinarily mean that whosoever has adopted this word is necessarily a 'Hafiz‑e‑Quran'. Hafiz is a word from Persian language, meaning as above, and is also available in Arabic Dictionary where it means as "protector, guardian or supervisor". 'Hafiz' was also the title of a Persian poet and collection of his verses is known as "Deewan‑e‑Hafiz". We may look at this word 'Hafiz' from any angle or we may accept or adopt any of its meaning, and in my estimation it does not injure the religious feelings of a Musalman, nor does it hurt the religious susceptibility of any class of citizens in Pakistan.

At page 269 of Standard Dictionary published by Kitabistan, Urdu Bazar, Lahore, meanings of this word HAFIZ are given as a protector, a preserver, a guardian, a governor. By all these meanings the word HAFIZ is not a word which cannot be accepted as a trade mark. Acceptance of word HAFIZ as trade mark by the Trade Mark Registry can by no stretch of imagination be taken as acceptance in violation of any provision of the Trade Marks Act. This word is in common use in our daily conversation either as Khuda Hafiz or Hafiz-o-Nasi, Here the word HAFIZ always means a protector, a guardian or a preserver, and I do not accept the plea of the applicant that this word injures the religious feelings of the Muslims or of any sect of the Muslims, if used as a Trade Mark.

The other plea regarding publici juris is also not acceptable, because in the Trade Marks Act, a word becomes publici juri; when it is declared common to the trade by the Registrar of Trade Marks, and for declaring a particular word/mark as common to trade or in other words becoming publici juris, the sole and final judge is the Registrar of Trade Marks himself. In Re: National Starch Manufacturing Co. v. Munn's Patent Maizena and Starch, Co. 1894 A. 275/63 LJPC 112, it was stated as follows:‑--

"Where applicant in 1889 registered in the Colony under the Trade Marks Act, 1865 word MAIZENA which they had invented in 1856 registered and enforced in other countries, but for a quarter of century allowed to be used in the colony as a term descriptive of the article and not of their own manufacture thereof; held the word had thereby become publici juris and was no longer registrable as a trade mark. See page 324 of the English and Empire Digest, Volume 43."

In the instant case the word HAFIZ was adopted by the registered proprietor in the year 1963 and he worked thereon since then continuously and without any interruption, let or hindrance and at no stage it has been established that the word in question was abandoned by the registered proprietor. Then how the applicant can come out with the plea that the word HAFIZ has become publici juris."

The above findings of Registrar which attained finality deals with all the contentions of appellant raised before me. The learned counsel was unable to advance any logical reason or argument for ignoring the above findings of Registrar which is well‑founded and based on sound reasoning. The learned counsel for the appellant, however, cited the above‑noted cases in support of his contentions. I will, therefore, now examine whether these cases are of any evidence to the learned counsel.

In the first cited case Messrs Cadbury Brothers Limited applied for registration as a trade mark a label in class 42 in respect of Chocolates containing the word "Tundor Chocolates made by Codury". The Registrar of Trade Marks refused to register it unless there was disclaimer of right to the exclusive use of the word "Tudor". On appeal it was held that the registration of the label as a whole could give no statutory right in respect of the word "Tudor" and, therefore, it was inexpedient to place on the Register unnecessary disclaimer. The Registrar was accordingly directed in that case to proceed with the application without imposing any condition as to disclaimer. From the discussion at page 451 of the report it appears that the learned Judge was of the view that the word "Tudor" could not have been registered separately because it was a surname. On the basis of the above discussion in the Tudor's case the learned counsel urged that like "Tudor" "Hafiz" is also a surname and, therefore, it cannot be mono-polised by any one by obtaining its registration under the Trade Marks Act. In the order of the Registrar dated 28‑3‑1979 relevant partner whereof is reproduced above, the Registrar found that 'Hafiz' is neither descriptive nor it is a surname, and is capable of being registered as a trade mark. The above conclusions of Registrar are based on cogent reasoning and the learned counsel was unable to advance any argument to pursuade me to take a contrary view. I am, therefore, of the view that Tudor's case is of no assistance to appellant.

In the second cited Diamond's case, Diamond T. Motor Car Company of U . S. A applied for registration of their trade mark "Diamond T" with a device of diamond. The Registrar of Trade Marks refused to accept the application on the ground that the mark was not a distinctive mark within the meaning of English Trade Marks Act, 1905 and that the device of diamond was common device in the motor trade. On appeal the application was ordered to be proceeded subject to the condition that the applicant should disclaim any right both to the exclusive use of diamond‑shaped border and also to the exclusive use of the word diamond. It is quite clear that the decision in the above case proceeded on the ground that the word "diamond" and diamond shaped border were common to the trade of motors. Firstly, there is no such evidence in the present case that the word 'Hafiz' with descriptive matter on the label of respondent No.2 is common to the trade. Apart from it, the Registrar in his order found that the mark "Hafiz" has become distinctive of the goods of the respondent No.2 by long user since 1963. I am, therefore, of the view that this case too did not advance the case of the appellant in any manner.

The last case relied by the learned counsel for the appellant is York's case reported in 1983 Pak. S.C. Cases 508. In that case the Registrar had refused to allow registration of a trade mark which consisted of the word "York" on the ground that the proprietor could not be allowed to monopolize the name of an important city. On appeal the judgment of the Registrar was reversed and it was held that as the mark was factually distinctive of the proprietor and he was entitled to its registration. On a further appeal to the House of Lords it was held that as the name "York" possesses an industrial character such that other traders, in related fields, might want to use it, it could not be said that the Registrar has wrongly exercised his discretion in refusing to allow the respondents application for registration of the trade mark. This case is quite distinguishable as in that case a geographical name was sought to be registered as a trade mark which is prohibited under the Trade Marks Act.

In the impugned order the Registrar reached the conclusion that the adoption of mark 'Hafiz' and other descriptive and decorative features on the label by the appellant was not honest but was calculated to prey upon the goodwill and reputation of respondent No.2 and he accordingly refused to register the mark of appellant under section 10(2) of the Act. The exercise of discretion by the Registrar is neither arbitrary nor fanciful so as to call for interference by this Court. The appeal is accordingly dismissed but there will be no order as to costs.

A.A./S‑17/K Appeal dismissed.

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