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(a) Trade Marks Act (V of 1940)--

---Ss.46 & 72--Trade mark, registration of--Trade mark "MACLEAN" registered in favour of respondent for manufacturing of tooth brushes- Plea of applicants that "macleans" being their trade mark for toothpaste and allied products of international fame there was likelihood of confusion if such trademark was used by respondent--Import of foreign tooth brushes having not been prohibited in Pakistan there was likelihood of confusion if and when the applicant Company sells its tooth brushes in Pakistan--Applicant Company having got registered its trademark in respect of tooth brushes in a foreign country, if tooth brushes under the same name manufactured by respondent were exported to such foreign country or to any other part of the world, likelihood of confusion resulting in loss to applicant firm could not be ruled out--Conduct of respondent in appropriating trademark of applicants who are foreign owners was not proper--Such respondent had applied for registration of his products with unclean hands--Trade in tooth pasts, tooth brushes and allied goods of dental hygiene was of International character- Trademark "macleans" in respect of tooth brushes could not be registered in favour of respondent unless it was clear from evidence on record that foreign owners of such trademark have no intention of making or introducing its product of tooth brushes in Pakistan--Application for de-registering of trade mark "MACLEANS" was allowed by High Court.

Kurely Trade Marks; 1889 (Vol. No.6) at 311; Mansanto Company v. Gul Ahmed Textile Mills Ltd. P L D 1968 Kar. 369; Lever Brothers, Port Sunlight, LD. v. Sunniwite Products L D 1949 at page 84; R.P.C. Vol. 63 at 59 and S.H.Taufiq v. National Biscuit Co. New York P L D 1962 Kar. 335 ref.

P L D 1979 Kar. 83 Societe De Fabrication Et De Distribution De Parfumerie Et Cosmetique (Diparco) Societe Annonyme and P L D 1986 Jour. 353 rel.

Zain Shaikh for .applicants. Syed Shoukat Ali for Respondents. Date of hearing: 9th February, 1987.

This is an application under section 46/72 of the Trade Marks Act 1940 and Chapter 7-E Volume V of the High Court Rules.

2. The applicants have averred therein that they were proprietors and users of the trademark "MAC-LEANS" also registered on their application in Pakistan. It is their internationally registered trademark and is used by them since long in various countries of the world in respect of tooth pastes and allied products of dental hygiene. The applicants have built up an extensive market for their products under the above trademark which is known to the public and trade throughout the world as the best products of its kind and have been popular in Pakistan also since a long time. Due to its large sale, advertisement and high quality the said product of the applicants has acquired great reputation, popularity and goodwill in Pakistan and has become known by its distinctive trademark "MAC-LEANS" and is identified by the trade and public as such. Consequently the applicants have acquired exclusive right to use the said trademark on their products and all associated products.

3. It is further averred that in January 1984 it came to the applicant's knowledge for the first time that respondent No.l has fraudulently obtained registration of the trade mark "MAC-LEANS" from the respondent No.2 in respect of inter alia, tooth brushes etc. and was planning to start manufacturing and selling tooth brushes under the said trademark while is deceptively identical to the applicants' trademark "MACLEANS". Respondent No.l with mala fide intention to defraud and deceive the public and trade in order to make wrongful profits out of the enormous reputation and popularity and goodwill of the applicants and their products has fraudulently misappropriated and registered in Pakistan the applicants' trademark "MACLEANS" in respect of the goods of cognate and same description as of the applicants'. The remaining of entry of the respondent's trademark registered at No. 75308 is prejudicial to the applicants right and interest and they have, therefore, prayed for removal thereof from the register of trademarks.

4. The respondent No.l had admitted in his counter-statement to have got registered the trademark "MAC-LEANS" on 22-10-1981 with respect to "tooth brushes and other brushes and combs". It is stated that the said entry was effected after due notice to all concerned and the applicants never came to oppose the registration of the trademark of the respondent No.l. It was further stated that the applicants' trademark was registered only with respect to "tooth paste etc. which are goods of different description via-a-via "tooth brushes and other brushes and combs". The respondent No.l has denied the allegations of fraud and mala fide intention of misrepresentation. It is contended that the registration of their trademark is bona fide and is evidence of its being prima facie valid.

5. I have heard Mr. Zain Shaikh, learned counsel for the applicants and Mr Shoukat Ali, learned counsel for the respondent at length.

6. It would appear that the applicants' trade mark was registered in Pakistan as follows:-

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Regn. Class. Dated Goods covered.

No.

8276 3 24-8-1943 'Perfumery, lipsticks, lip salve (not

medicated), rough toilet oatmeal, toilet

creams, toilet lotions, toilet oils, toilet

essences, toilet preparations for the

hair, toilet preparations for the teeth

and for artificial dentures, toilet

powders, toilet waters toilet

preparations for the eyebrows and

eye-lashes, soaps, manicure toilet

preparations mouth washes (toilet

articles not medicated) perfumed

sachets, depilatory preparations and

bath salts (not medicated) for toilet

purposes.'

8280 3 24-8-1943 'Toothpaste, tooth powder, solid

dentifrices, shaving cream and mouth washes (toilet articles not medicated).'

The applicant No. 1 is also the proprietor of the following registered trade-make comprising of the word 'MACLEANS'.

55096 3 12-3-1971 "Medicinal and pharmaceutical

preparations, mouth washes and dental preparations included in Class 5."

As against this trademark of the respondent No.l was registered against No.75308 in Class 21 on 22-10-1981 with respect of tooth brushes and other brushes and combs in Pakistan.

7. Mr. Syed Shaukat Ali, Advocate for the respondents conceded that the applicants firm was a well known firm and their trademark "MACLEANS" had reputation and popularity throughout the world as well as in Pakistan. He also admitted that the same was registered in Pakistan as stated by the applicants. He, however, submitted that the registration as well as reputation etc. of the trademark of the applicants' was only with respect to "toothpaste etc" and not with respect to "tooth brushes and other brushes and combs," which were goods of different nature and description. Mr. Zain Shaikh Advocate who appeared for the applicants insisted that "tooth brushes" were also goods of similar nature as that of "tooth paste etc." and were protected by the registration referred to above. He conceded though reluctantly, that "other brushes and combs" were not covered by the registration referred to above and the protection thereof. The crucial point for determination in this case would, therefore, be as to whether "tooth brushes" are goods of the same description as "toothpaste etc" which are being manufactured and supplied by the applicants.

8. The relevant provisions of Trade Marks Act, 1940 which deal with this case are sections 10(1), 46 and 72 thereof. It will be useful to reproduce these provisions hereunder:----

"10(1) Save as provided in subsection (2), no trademark shall be registered in respect of any goods of description of goods which is identical with a trademark 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 82-A for the time being applies in respect of the same goods or description of goods or which so nearly resembles such trademark as to be likely to deceive or cause confusion.

46(1) On application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trademark on the ground of any contravention of, or failure to observe a condition entered on the register in relation thereto.

(2) Any person aggrieved by the absence of omission from the register of any entry, or by any entry made in the register without sufficient course, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

(Explanation--For the purposes of subsection(1) and this subsection, a person who has registered a trademark in any (Acceding State or a non-Acceding State) to which section 82-A for the time being applies, may be a "person aggrieved").

(3) The tribunal may in any proceeding under this section decide any question that it may be necessary of expedient to decide in connection with the rectification of the register.

(4) A High Court or the Registrar of its or his own motion, may after giving notice in the prescribed manner to the parties concerned and after giving them any opportunity of being heard, make any order referred in subsection (1) or subsection (2).

(5) Any order of the Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly."

9. Kurely in his famous book on Trade Marks has dealt with this subject in the following manner:-

"10-12 The test to be applied.

The test whether or not goods are "of the same description" would seem to be supplied by the question-Are the two sets of goods so commonly dealt in by the same trader that his customers, knowing his mark in connection with one set and seeing it upon the other, would be likely to suppose that it was used upon them also to indicate that they were his goods The matter should be looked at from a business and commercial point of view. As Vicount Dunedin said in the 'Nuvol' case, "The material consideration arising in connection with the registrations of trademarks are practical. "To the cases on this subject, the oft-quoted proposition that each was decided on its own facts is 'peculiarly applicable' and the observations below should be read with this in mind.

It would seem clear that, before goods can be of the same description, there must be a description that covers both although this is not a sufficient test for a description may be too wide to be usable.

In the 'Panda' case Romer J. classified the various matters to be taken into account in deciding whether goods are goods of the same description into three classes-

(a) the nature and composition of the goods;

(b) the respective uses of the articles;

(c) the trade channels through which the commodities respectively are bought and sold.

Mustard and semolina were not goods of the same description; although they were sold side by side in the same shops and both could be properly treated as articles of food, both being used in cooking their real nature was different, "one falling under the description of a condiment and the other under the description of a cereal. J & J. Colman Ltd's Appn; Eve.J."

10. The applicants' advocate has relied upon the following cases in his support:----

(i) Report of Patent Designs Trade Marks and other cases 1889 (Volume No.6) at page 311 (In the matter of Australian Wine Importers" Trade Mark)

The facts of this case are that the applicant company had applied to register for their wines a trademark containing the device of a suspended sheep and the words 'Golden Fleece'. This was opposed by a wine and spirit merchant who was the registered owner of two trademarks for spirits which comprised the same device and the same words. The matter came before the Court on a summons by the applicant company for an order to proceed with the registration.

It was held by Chancery Division of the High Court of Justice that the applicant's mark was calculated to deceive both under sections 72 and 73 of the Patents etc. Act 1883 and that the registration was refused and the order of the lower Court was confirmed.

Cotton, J. as well as Lindley, J. both agreed that wines and spirits were the goods of the same description.

(ii) Report of Patents Designs Trade Marks and other cases 1958-466.

In the case of Lyons & Coy. Ld.'s application for rectification of the Register in respect of Trade Mark 418.577.

The facts of this case are that the applicant Company had applied to rectify the Register by expunging the respondent Company's registration of trademark 'Hostess' in respect of certain classes of foodstuffs or alternatively by limiting the registration by excluding 'ice-cream and goods of the same description' on the ground of non-user for 5 years. Non-user in respect to ice-cream was admitted but the respondent Company claimed to have used the mark on goods of the same description namely pine-apple slices and table jellies. Evidence was also led to show an intention to use the trademark on ice-cream and goods of same description in the near future.

The Chancery Division of the High Court of Justice (Lloyd-Jacob, J) upheld the view of the Registrar that table jellies and ice-cream were goods of the same description.

(iii) P L D 1968 Kar. 369

Mansanto Company v. Gul Ahmed Textile Mills Ltd.

The facts of this case are that a chemical preparation named 'Resloom' was manufactured by a foreign Company and used as its trademark. Gul Ahmed Textile Mills imported the said chemical preparation and used it for cloth manufactured by it and applied the trademark 'Resloom' on the cloth so manufactured. Application for registration of trademark 'Resloom' was made by both the parties.

It was held by Qadeeruddin Ahmed, J. that in the circumstances an impression can be created that textile piece goods bearing name 'Resloom' may have been treated with chemical preparation 'Resloom' and that the manufacturer of one might be the manufacturer of the other or the products of one manufacturer might have been used in the products of the other.

The appeal of the Mansanto Company was accepted and the application of Gul Ahmed Textile Mills was rejected.

11. As against this the respondent's Advocate relied upon the following cases: ----

(i) Report of Patents Designs Trade Marks and other cases 1959-120. In this decision the case of L. Lyon's and Co. had gone in appeal and the judgment of the lower Court was upheld. This ruling would not, therefore, help the respondents.

(ii) Report of Patents Designs Trade Marks and other cases 1949 at page 84. Lever Brothers, Port Sunlight, LD. v. Sunniwite Products LD.

The facts of this case are that Lever Brothers were the proprietors of the trademark 'Sunlight' which was registered in respect of soap, substances for laundry use, detergents, and cosmetic goods. In 1946 the defendants commenced to use the trademark 'Sunniwite' on a soapless detergent powder. The Lever Brothers filed a suit against them for infringement of their trademark while the defendants filed a counter-claim to strike out from the Register goods other than soap on the ground of non-user by the Lever Brothers.

It was held by Chancery Division High Court of Justice (Mr. Justice Romer) that the trademark had been infringed and the suit was, therefore, allowed while the counter-claim was refused on the ground that the defendant was not an aggrieved person in respect of the goods.

(iii) R.P.C. Volume 63 at page 59:

(In the matter of an application by Ladislas Jellinek for the registration of a Trade Mark).

The applicant had applied for the registration of trademark of a panda for shoe polish. The application was opposed by the respondent who was proprietor of a similar trademark 'Panda' registered in respect of shoes. The application was allowed by the High Court of Justice and it was held that shoe polish and shoe were not goods of same description. This ruling apparently goes in favour of the respondents but on a minute reading it is clear that it is distinguishable with their case on the ground that it was held therein that at the date of the application the opponents had not established any reputation amongst the public for the shoes under the mark 'Panda' and that there was, therefore, no likelihood of confusion. Whereas in the present case the applicants' trademark 'MACLEANS' has established a reputation amongst the public for toothpaste and allied products of dental hygiene and, therefore, there is every likelihood of confusion and deception.

(iv)P L D 1962 Kar. 335 S.M. Taufiq v. National Biscuit Co., New York.

The facts of this case are that the appellant had applied for registration of the trademark 'Nabisco' proposed to be used in respect of biscuit etc. manufactured in their factory. The respondent also filed such application in Pakistan for registration of trade mark in respect of the biscuits etc. manufactured by their firm National Biscuit Factory, New York.

It was held by Wahiduddin, J. that the Tribunal should ordinarily consider 'user' of trademark in Pakistan and allowed the registration of the appellant's trademark. this ruling is also distinguishable from the facts of the present case because it was observed by Wahiduddin, J. as follows:--

"This case really has got its own peculiarities. It is quite true that the respondents' trademark was used in other parts of the world. They got it registered in 1944 in India but they never bothered about Pakistan market. The import of foreign biscuits is now prohibited for a long time and there is no likelihood of its introduction in the near future. In these circumstances it is not possible for me to hold that the registration of the trademark 'Nabisco' will in any way cause prejudice to the public interest."

In the present case import of foreign tooth brushes is not prohibited in Pakistan and, therefore, there is every likelihood of confusion if and when the applicant company sells its tooth brushes in Pakistan. Moreover, it is on record that the applicant Company had A got its trademark registered in respect of tooth brushes in India as early as 11-3-1970 and, therefore, if tooth brushes made by the respondent firm are exported to India or for that matter to any other part of the world likelihood of confusion resulting in loss to the applicants' firm cannot be ruled out.