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Miscellaneous Appeal No.15 of 1985, decided on 2,nd December, 1986.

‑‑‑Ss. 8, 10 & 76‑‑Registration of trade mark‑‑Resemblance between two marks‑‑Determining factors‑‑Trade marks, held, should be judged as a whole and totality of impression made on purchasers of goods in question should be the determining factor‑‑Registrar of Trade Marks concluded that two marks "NEOBA" and "NUBAIN" in spite of having letter "N" as their common prefix, phonetically were dissimilar and purchases of products bearing mark "NEOBA" were not likely to be deceived by or confused with products bearing mark "NUBAIN" as prefix of only a single letter could not be enough to determine similarity of those two words while suffixes of both words were quite different‑ Conclusion of Registrar that two marks were different, did not appear to be wrong in circumstance.

Glaxo Laboratories Ltd. v. Assistant Registrar, Trade Marks PLD 1977 Kar. 858 and

Abdul Wahid v. Abdul Rahim P L D 1973 SC 104 ref.

Sultan Ahmed Sheikh for Appellant.

Respondent (absent).

Date of hearing: 1st December, 1986.

This appeal has been filed under section 76 of the Trade Marks Act 1940. I had heard the arguments of Mr. Sultan Ahmed Sheikh, learned counsel for the appellant yesterday. No one had appeared on behalf of the respondents. By a short order passed yesterday i.e. on 1‑12‑1986, this appeal was dismissed. This judgment contains the reasons for dismissal of this appeal.

2. The appellants are the proprietors of trade mark N E 0 B A Label and N E 0 B A (word) registered with the Registrar of Trade Marks in clause 5 in respect of all goods included in clause 5. According to the appellants, the products bearing the aforesaid trade marks are being continuously sold by the appellants in the local market since 1960 and that the products bearing the aforesaid mark have become associated with the appellants and are very popular in the local market. Respondent No.l, an American Company, applied for registration of trade mark NUBAIN (word) by the application No.68955 in clause 5 in respect of pharmaceutical preparations. The appellant filed opposition which was numbered as 115/82. After hearing the parties, the Registrar of Trade Marks, by his decision dated 23‑1‑1985, disallowed the opposition of the appellant and ordered that application No.68955 of respondent No.l to proceed to registration after expiry of appeal period. Being aggrieved this appeal was filed by the appellant society.

3. In support of the present appeal Mr. Sultan Ahmed Sheikh, learned counsel for the appellant had argued that phonetically both the words NEOBA and NUBAIN are similar and registration of the mark of respondent No.l is going to cause confusion and deception. It was further submitted that pronunciation of 'NEO' (part of the mark of the appellant) and 'NU' (part of the mark of the respondent No.l) is identical and the only difference sought to be made by the respondent No.l to show artificial distinction between the two marks is the addition of the letter 'N' at the end of the mark. According to the learned counsel, prefixes of both the marks are the same. It was argued that the plaintiff had been using their mark for over 25 years and their mark was registered whereas respondent No.l had not even used the mark in Pakistan. According to the learned counsel for the appellant, the application of respondent No.l for registration of the mark "NUBAIN" should have rejected by the Registrar Trade Marks.

In support of his submission, learned counsel also relied upon the following judgments:‑

(i) Glaxo Laboratories Ltd. v. Assistant Registrar, Trade Marks P L D 1977 Kar. 858

In this case the mark "Crystamycin" of the appellant was registered and the other party applied for registration of the mark "Vitamycin". The appellant filed opposition but the opposition was rejected. A learned Single Judge of this Court allowed the appeal inter alia holding that the mark of the respondent if permitted to be registered was likely to cause deception and confusion in trade and among purchasers.

(ii) Abdul Wahid v. Abdur Rahim P L D 1973 S C 104.

The question in this case was whether the words "Daigon" and "Dragon" could be refused to be registered as trade marks when the word "Saigon" was already on the register of Trade Marks. The Supreme Court observed that the 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. The Supreme Court set aside the order of the High Court restoring the order of the Assistant Registrar allowing registration of the mark "Daigon". It was also observed by the Supreme Court as follows:‑

"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."

(iii) In Re: Bali Trade Mark (1969) P R C 472.

It was held by House of Lords in this case that the use of both the words BERLEI and BALI in a competing trade was likely to cause deception and confusion.

(1958) RPC 406.

It was held in this case that the two marks "Naturlizet" and "Naturalizer" were so similar that their use in respect of the same goods would be a cause of confusion.

LTD 63 R.P.C. 97

In this case the Registrar had allowed the registration of the mark "OVAX" in spite of opposition by proprietor of marks, "HOVIS" and "OVI". High Court dismissed the appeal.

63 R.P.C. 19

This application for registration of the mark "Jardex" in respect of disinfectants was opposed by the proprietors of mark "Jardox" registered in respect of extract of meat. The application was refused on the ground that possibility of serious consequences arising through mistakes or negligence could not be ignored.

Learned counsel for the appellant has also referred to the commentary on the Law of Trade and Merchandise Marks by Dr. S.V. Venkateswarn 1944 Edition at p.228.

4. In his decision dated 23‑1‑1985, the Registrar of Trade Marks has observed that the mark applied for registration by the respondent and the mark already on register are two different words and there is no similarity between these two words. He also observed that the prefix of both words is the letter "NO" but this prefix of only a single letter cannot be enough to determine the similarity of these two words and suffixes of both the words are different. The conclusion of the Registrar that the two marks are different does not appear to be wrong. No doubt the prefix of the two marks are the same but phonetically the two marks "NEOBA" and "NUBAIN" do not appear to be similar. The marks are to be judged as a whole and the totality of the impression made on the purchasers of the goods in question is the determining factor. The two marks i.e. "NEOBA" and "NUBAIN" appear to be phonetically dissimilar and in my view, the purchasers of the products of the appellant are not likely to be deceived or confused by the products of the respondent bearing the mark 4 "NUBAIN" so as to consider that the products of the respondent are in fact the products of the appellant.

Learned counsel had very emphatically argued that the two marks are similar and if the mark of the respondent is registered, it is likely to cause deception and confusion among the minds of the purchasers of the appellant's goods. As observed earlier, he had referred to several cases in an attempt to show that the marks in question are similar and likely to cause deception and confusion. However, as observed earlier, the view taken by the Registrar that the two marks are different and there is no similarity between the two does not appear to be wrong specially for the reason that phonetically the two marks appear to be dis‑similar excluding the possibility of deception and confusion.

5. Learned counsel for the appellant had also submitted that the Registrar had wrongly observed that the appellant is manufacturing goods of Unani medicines while the respondent is carrying on business in Allopathic medicines and these different medicines are prescribed by different qualified practitioners i.e. Doctors and Hakeems and hence there is no chances of confusion or deception if both the marks are allowed to sail in the market side by side. According to the learned counsel this reasoning of the Registrar is not correct as the mark of the appellant is registered in respect of all the goods in clause 5. It was also submitted that "NEOBA" is an ellopathic medicine of the appellant society. Be that as it may, as I have already held that the conclusion of the Registrar that the two marks are not similar, is not wrong, this appeal is liable to be dismissed.

M.A. No. 15/1985 is dismissed with no order as to costs.

H.B.T./H‑14/K Appeal dismissed.

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