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Miscellaneous Appeal No.48 of 1981, decided on 21st September, 1986.

‑‑‑Ss. 10 & 76‑‑Registration of trade mark s‑ ‑Similarity of two trade marks, determination of‑‑Where question arose that trade mark applied for registration was similar to one already registered, two marks should be compared by their respective essential features, not only as they appeared on marks, but also as they were actually used‑‑There being substantial differences between trade mark with name and style "Blue Bird" already registered and trade mark with name and style "Jasmine Brand" applied for registration, Registrar, held, rightly granted trade mark applied for and rightly rejected i;p‑position on behalf of appellant without taking into consideration certain similarity in colour scheme appearing on two trade marks.

M/s. Wagner Electric Corporation v. M/s. Paramount Oil and Chemical Co. P L D 1973 Note 68 at p.91 ref.

S. Shaukat Ali for Appellant.

Jgakuk Kizilbash for Respondents.

Date of hearing: lst September, 1986.

The appellants being aggrieved by the decision made by the Assistant Registrar of the Trade Marks, have filed the present appeal.

2. The facts in brief are that the Respondent No. 1 filed on 1‑4‑1974 trade mark application for seeking to register a trade mark comprising the words "Jasmin Brand" device of a flower within a circle, in the middle of the label forming a square and divisible running lines in three colours. This trade mark was advertised under section 15(l) of the Trade Marks Act (hereinafter referred to as the Act). The appellants filed a notice of opposition against registration of the trade mark of application No. 60445 mainly on the basis of conflict with appellants registered trade marks under numbers:

38359 dated 29‑12‑1962 Word Blue Bird, device get up, Colour Scheme etc.

56929 dated 11‑3‑1972 device of Bird, get up, Colour Scheme etc.

57089 dated 11‑4‑1972 Device of bird, get up, Colour Scheme etc.

The appellants submitted affidavits in support of such notice. The respondent No. 1 also filed their statements and affidavits. The respondent No. 2 after considering the affidavits and statements by his decision dated 18‑7‑1981, impugned in the present appeal, disallowed appellants opposition and has ordered the trade mark of application No. 60445 made by the respondent No. 1 in respect of dry colours after expiry of the period of two months.

3. Learned counsel for the appellants has submitted that the colour scheme with lay‑out and get‑up in their registered trade marks have become distinctive or their product and illiterate persons purchase the goods of the appellants and they would be deceived by looking at the colour scheme as the colour scheme of the two respective goods are similar in nature. The Respondent No. 1 has not offered any reasonable explanation as to how he conceived and developed the idea of adopting and trading under the impugned trade mark which had a great degree of confusion. This contention has no force. The two marks are quite different and distinctive.

In order to appreciate the contention it is necessary to refer to the relevant provisions of the Act. Under section 2(l)(f) 'mark' includes a device, brand, heading, label ticket, name, signature, word, letter or numeral or any combination thereof. Trade mark has been defined in section. 2(l) and it means 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 same 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. The learned Registrar after considering the facts of the case and the authorities came to the conclusion that the marks are to be compared by their respective essential features, not only as they appear on the mark but also as they are actually used. The mark of the Respondent No. 1 is known in the market as Jasmin Brand whereas the mark of the opponent is known as Blue Bird or Bird Marks. Undoubtedly the two marks are quite different. The dominant ideas are not the same in the two marks and it can hardly be said that the respondent No. l's goods are likely to be confused with the goods bearing blue bird.

I entirely agree with the conclusion arrived at by the learned Registrar. The two marks are not similar and they do not resemble with each other. There are substantial differences between the two The goods in the market are sold in the name of Blue Bird and device of Jasmine flower and not by colour scheme, design or get up. The appellants had not shown that their goods are sold on any feature other than the device. The appellants have failed to show that their goods are known in the market by the colour scheme and design and not by the word Blue Bird. Even an illiterate customer would purchase the goods not by looking at colour scheme but he would demand the goods of his choice sold in the name of Blue Bird. There is no question of any confusion or deception. The learned Registrar has correctly appreciated the evidence.

Under section 7(1) of the Act a trade mark may be limited wholly or in part to one or more specified colours and any such limitation shall be taken into consideration by any tribunal having to decide on the distinctive character of the trade mark.

Under section 8 No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or qnv matter the use of which would‑‑

(a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; or

(b) be likely to hurt the religious susceptibilities of any class of the citizens of Pakistan; or

(c) be contrary to any law for the time being in force or to morality.

Under section 10(l) no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and either already on the register or already registered in any Acceding State or a non‑Acceding State to which section 82A for the time being applies in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or, cause confusion. The question for determination in such matters is whether there is similarity between the names which would cause't%onfusion. The appellants have failed to show that the colour scheme of the appellants has obtained the reputation throughout the country.

Learned counsel for the appellants has referred to the case of M/s. Wagner Electric Corporation v. M/s. Paramount Oil & Chemical Co. P L D 1973 Note 68 at p.91 in support of his contention that the owner of existing mark is not required to prove the presence of resemblance.

On the other hand learned counsel for the respondent has relied upon Tavener Rutledge Ltd. v. Spector Ltd. (1959 R.P.C. 355) wherein it has been observed that the plaintiff must prove a reputation in their tins, and having not done so, the different names on the two tins are sufficient to distinguish them, for the public buying by name.

The Karachi authority is not applicable to the facts of the present case as in the instant case the trade mark of the appellant is not identical with that of the respondent No. 1.

The learned counsel has referred to 1978 R.P.C. 635 (Colgate Palmolive Ltd. and another v. K.F. Pattron, Trading as the Caribbean Daily Need Chemical Works) but the facts are again distinguishable and it' was held (1) that it was clear from the evidence that the defendant had borrowed features from the plaintiff's packaging tubes and labels gathering them together to form his own trade mark, (2) that the ordinary purchaser of normal memory purchasing with ordinary caution could not be expected to make a close and careful side by side examination of the two products.

In this case the plaintiff was the proprietor of trade mark Colgate. The defendant a manufacturer of various products in Trinidad began to sell toothpaste under the name Tringate Colgate is universally recognised and therefore there was possibility of confusion and deception and in this case also colour scheme was not taken into consideration.

In the present case the appellants have not been able to prove that the public recognise their goods by the get up. Reference has also been made to 1959 R.P. C. 355. On R.P. C. Volume 68 page 197 (Arthur Pairest LD.1s Application to register a Trade Mark) it has been observed that onus Hes on the opponent to establish reputation for his business sufficient to justify objection.

In R.P.C. Volume 70 page 173 (M. Saper Ltd. v. Specter's Ltd. and Boxes Ltd.) it has been held that the plaintiff had no right to a monopoly of stripes, that the plaintiffs have not yet acquired any reputation capable of supporting an action for passing off at the date when the defendants boxes were put into use.

4. The overall conclusion from the above facts is that there is no similarity between the two marks, as such the application of the respondent No. 1 was rightly accepted by the respondent No. 2.

This appeal has no merit and the case stands dismissed with no order as to costs.

H. B. T. /S‑64/ K Appeal dismissed.

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