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Miscellaneous Appeal No.77 of 1984, decided on 3rd May, 1987.

Trade Marks Act (V of 1940)‑‑

‑‑‑Ss. 8(a) & 10(1)‑‑Trade marks "REM and "MEM"‑‑Trade mark opposed on the ground that both marks pertained to same class of goods and ‑there was visual as well as phonetical similarity of the two marks which was likely to cause confusion‑‑Both marks were used in the market for considerable time and there was no evidence of confusion‑‑Marks "REM" and "MEM" comprising of three letter word; and of 'M' being different from 'R' and both marks visually looking different, held, could not be considered to be confusingly similar.

P L D 1977 Kar. 858; A I R 1979 Cal. 133 and 1978 R P C 47; PLD 1973 S C 104; 1980 C L C 1272; P L D 1973 Note 60 at p. 82; 1965 R P C 147 and Pakistan Soap Factory v. Chittagong Soap Factory P L D 1970 S C 460 ref.

Jamilluddin for Appellant.

Syed Shaukat Ali for Respondent.

Date of hearing: 22nd April 1987.

This Miscellaneous Appeal is directed against the order of the Registrar of Trade Marks dated 30‑7‑1984 whereby he rejected the opposition of the appellant against the application of respondent No.2 for registration of their Trade Mark "REM".

I have heard the learned counsel for the parties and also perused the record and proceedings before the Registrar.

The facts of the case giving rise to this miscellaneous appeal are that respondent No.2 Messrs Rehman Electrical Manufacturer made an application at Serial No.72713 to the Registrar Trade Marks for registration of their Trade Mark "REM" with respect to manufacture of electrical apparatus and instruments etc. all being goods in Class 9. The mark was advertised and published in Journal No.378/82. The appellants filed opposition on 5‑5‑1983 claiming to be the proprietors of mark 'REM' for electrical goods in Class 9 at Serial No.62004. It was contended by the appellants in the opposition that advertised mark "REM" closely resembled their registered trade‑mark and would, therefore, cause confusion and deception in the public mind. They opposed to the registration mark of respondent No. 2 under sections 8(a) and 10(1) of the Trade Marks Act, 1940. In the counter‑statement the respondent No.2 contended that they are using the mark since 1960 and they had acquired right as user and furthermore that in spite of such user no confusion has been caused by the use of their mark. It was further contended that their mark was not similar to that of the appellant so as to cause confusion.

In support of their contention the appellant had filed affidavit of their sales representative and dealer S.M. Ilyas who had given the import figures of the goods of the appellant for the years 1978 to 1982. The respondent No.2 in support of their claim had filed affidavit of Abdul Rehman a partner of their registered firm.

The learned Registrar rejected the opposition of the appellant on the grounds that respondent No.2 had filed documentary evidence to show the user of their mark since 1960 and 22 years continuous use was sufficient to give right to one to ask for registration in his favour, the mark under which he had traded all this period. He was further of the opinion that the prefix of both the marks was different and there was no evidence produced by the appellants to prove that there had been any confusion in the market in the selection of goods. He further held that the goods supplied by the appellants were specialized goods and were not in common use and the purchasers of such goods which are big companies and corporations are quite active, conscious and choosy and, therefore, the question of any confusion did not arise.

The learned counsel for the appellants has argued that it is not necessary for the Tribunal to see whether confusion has actually arisen but what he has to see is whether the confusion is likely to arise. It is contended that both the marks pertain to same class of goods and there is visual as well as phonetically similarity of the two marks which is likely to cause confusion.

The learned counsel for the respondent 2 has however, argued that both the marks consist of single word comprising of three syllables but the first syllable in both the marks is different and, therefore, they cannot be considered to be visually and phonetically similar. It is further contended that mark 'REM' is abbreviated form of the trade name of respondent No.2 which is Rehman Electrical Manufacturers.

Both the learned counsel have produced law in support of their contentions.

Admittedly the conflicting marks are for identical goods as such the main consideration for Court would be whether tile two marks are visually and phonetically similar so as to cause confusion in the mind of general public. The learned counsel for the appellants relied upon PLD 1977 Kar. 858. A I R 1979 Cal. 133 and 1978 R.P.C. 47. In the Karachi case the registration of mark 'Vistamycin' was opposed by the owner of the registered mark "Crystamycin". It was held as under:‑------

"Structure of two words almost same‑‑Each word having four syllables major portion whereof identical in sound and appearance, 'V' and 'C' being soft consonants prefix syllables "vis" and "crys" sounding similar, prefix syllables likely to be missed when words imperfectly heard, especially on telephone or when carelessly pronounced, words when pronounced bear close resemblance. "

In the Calcutta case the registration of mark "FORMIS" was opposed by the company having trade mark "CHARMIS". It was held "that such alphabetical use of word was likely to create confusion and, therefore, application was not entitled to registration sought for".

In the case reported in 1978 R.P.C. 47 the application for registration of mark "ZING" was opposed by the owner of the mark "DING". It was held that both visually and orally the marks were confusingly similar. In all the three cases the applicants were not able to prove long user.

The learned counsel for the respondent has relied upon P L D 1973 S C 104. In this case the owner of trade mark "Saigon" applied for removal of the trade mark "Daigon" and "Dragon" from the register of trade mark inter alia on ground that the marks bear very close resemblance to the mark of the owner of "Saigon" which lead to confusion and deception in the market. It was held by their Lordships:

"It is an accepted principle that where words have a common suffix but if earlier portion of these words are different, and if they do not conflict they are held to be distinctive. Where two words have the same suffix, the earlier portion of the words is the natural and necessary mark of distinction.

In the present case, in the registered trade mark 'Daigon' oh the one hand and the registered trade mark "Dragon" on the other hand, the first syllables 'Dal' and 'Drs' are dissimilar from the first syllable 'Sail and the Assistant Registrar was, therefore, perfectly justified in holding that it is the first syllable mostly which decides the question of conflict and likelihood of deception and confusion.

It has been repeatedly held by the superior Courts that the Registrar in coming to the conclusion whether a trade mark should or should not be registered, exercises the discretion vested in him by statute and the Court in appeal should always be extremely loath to interfere with that discretion. Such discretion should not be interfered with unless the Court comes to the conclusion that the Registrar in coming to the conclusion that he did was clearly wrong or patently in error."

In the case reported in 1980 C L C 1272 the registration of mark "solo" was opposed by the owners of mark "Polo" and it was held that there was no likelihood of confusion and deception between the two marks. Reliance was placed on aforementioned decision of the Supreme Court. In case reported in P L D 1973 Note 60 at p. 82 question for consideration was whether there was visual and phonetical/ resemblance between the mark "Aspro" and mark "Dispro". It was held the words having a common suffix should be held to be distinctive if the earlier portion of the words are different. In the case reported in 1965 R P C 147 the registration of trade mark "MEM" was opposed by the company selling the similar goods under trade mark "GEM". It was held the difference of the first letter of three letter word can avoid phonetic confusion, if there is involved a different and different association by meaning.

Reference may also be made to the case of Pakistan Soap Factory v. Chittagong Soap Factory P L D 1970 S C 460. In that case the registration of mark "1947" for the soap manufactured by the appellant was opposed by the respondent who were owners of mark "1937" for their soap. It was held by their Lordships that both the marks were dissimilar with each other though the marks contained some common digits.

In the instant case both the marks comprise of three letter word. The first letter in both the marks is different. The sound of 'M' is different from 'R'. As such in view of the law laid down by their Lordships of Supreme Court both the marks cannot be considered to be confusingly similar. Visually also both the marks look different. Mark 'REM' is advertised in bolder type and is bigger in size than the mark "MEM". Besides there appears to be no material on record to negative the findings of respondent No.l that respondent No.2 has established his user of the mark for 22 years and that in spite of fact that both the marks have been used in the market for considerable time still there was no evidence of any confusion.

Under the circumstances I find no reasons to interfere with the order of the respondent No.l who in exercise of discretion has allowed the registration of the mark of respondent No.2. The appeal is, therefor, dismissed with no order as to costs.

The appeal was dismissed by a short order dated 22‑4‑1987. The above are the reason in support of that order.

M.B.A./M‑107/K Appeal dismissed.

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