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Miscellaneous Civil Appeals Nos. 33 and 34 of 1960, decided on 19th February 1962.
‑Tribunal ordinarily to consider "over" of trade mark "in Pakistan"‑A having user of trade mark in Pakistan since 1951‑B having no market in Pakistan, though enjoying an international user‑---A entitled to registration in preference to B.
Boord & Son (Incorporated) v. Bagots, Hutton & Co., Ltd. 1916 A C 382; Impex Electrical Ld. v. Weinbaum 44 R P C 405 and Gaines Animal Foods Ld.'s Application (1951) 68 R P C 178 rel.
S. 3‑Registration of trade mark in India---- No legal value in Pakistan.
---‑Does not apply to trade mark not already registered for description of goods in Pakistan.
F. W. Vellani for Appellants.
Ibadatyar Khan for Respondents.
Dates of hearing : 29th January and 5th February 1962.
This judgment will dispose of Miscellaneous Civil Appeals Nos. 33 of 1960 and 34 of 1960, as they arise from a common order dated the 18th of December 1959, of the Deputy Registrar of Trade Marks and raise common questions of law and facts. The two appeals under consideration have arisen under the following circumstances.
The dispute between the parties is in respect of the registration of "Nabisco" under clause 30 in respect of biscuits, bread, cake and confectionary. The appellants S. M. Taufiq & Co. are trading under the name of H. M. Siddiq & Sons and Naseem Biscuit Factory of Dacca. They have established a big factory for manufacturing biscuits etc., and in that connection they filed Application No. 16836 on 13th August 1951, for the registration of the trade mark "Nabisco" proposed to be used in respect of the above‑mentioned articles to be manufactured in their factory. This application remained pending till the year 1954.
On 3rd March 1954, the National Biscuit Company, the respondents, also filed Application No. 21570 for the registration of trade mark "Nabisco" in clause 30 in respect of the above mentioned goods. Simultaneously they also opposed the registra tion of the trade mark "Nabisco" at the instance of the appellants on the ground that "Nabisco" was first adapted by them in the U. S. A. in 1901, and was coined by combining the first syllable of the words forming its name that is "Na" of National, "Bas" of Biscuit and "Co" of Company. They alleged that they used this mark in undivided India in 1933, and it was registered by them in all principal countries of the world including Australia, Canada, India and South Africa. They further alleged that their sales from 1946, throughout the world were in excess of three million dollars in expenditure, and the expenditure of advertising was 80 million dollars approximately. They also pleaded that the appellants' user of the mark was not honest as they knew or should have known that Nabisco was National's mark and that their user would cause confusion and deception. The respon dent, therefore, urged the Deputy Registrar of Trade Marks Karachi that the appellants' application for registration should be refused under sections 6, 8 and 10 of the Trade Marks Act, and Nabisco should be allowed to be registered on the basis of the application filed by them for their benefit. The appellants opposed the respondents' application on the ground that they have been using the word "Nabisco" in the Pakistan market since 1951, which had acquired reputation, and the respondents' application should be rejected as the word sought to be registered by them as trade mark is likely to result in confusion and deception.
The Deputy Registrar, after hearing the case of both the parties, came to the conclusion that the respondents' application for the registration of the trade mark "Nabisco" should be granted, and the application of the appellants for the registration of the same trade mark should be refused. He held that the mark "Nabisco" was used by National in the territories now in Pakistan since 1945, and that this invented word "Nabisco" was distinctive of National's products. He further held that having regard to National's prior user and the fact that appellants had acquired an inadequate reputation due to length and volume of use being insufficient, their objection to register the trade mark of respondents under section 8 must fail. He further held that the traders in Pakistan cannot filch a foreigner's trade mark and exploit the foreign mark for their benefit. After taking into account the international character of trade and the fact that in neighbouring India and several countries of the world the coined word "Nabisco" is registered by National and the small use of "Nabisco" by the appellants in some parts of Pakistan, he refused to register the trade mark "Nabisco" in favour of the appellants in exercise of his discretion to see that the public interest is not imperilled.
Before proceeding with the contention of the learned counsel for the parties in support of their case, it may be mentioned that the trade mark "Nabisco" was not registered in Pakistan by any party. This trademark was registered on the 1st of August 1944, in India on behalf of the respondents. But the registration of this trade mark in India has no legal value in Pakistan in view of the provisions of section 3 of the Trade Marks Invalidation and Summary Registration Act, 1950. It was provided in this section that the trade marks registered in India shall be deemed not to have been registered in Pakistan unless they have been applied for and registered under this Act. It will thus be obvious that so far as these appeals are concerned, section 10 (1) of the Trade Marks Act is out of the way because it could only apply in such cases where any party has established that its trade mark has been registered for description of the goods for which the other party had made its application for registration. In these appeals, therefore, the questions that arise for consideration under section 10 of the Trade Marks Act are out of the picture. Both the counsel for the parties admitted that these appeals are to be decided after taking into consideration the provisions of section 8(a) of the Trade Marks Act, 1940. It would therefore be useful to reproduce here section 8 of the Trade Marks Act, which is in the following terms:
"8. No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any 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 citizens of Pakistan ; or
(c) be contrary to any law for the time being in force or to morality."
The most important question for consideration in these appeals is whether the trade mark "Nabisco" sought to have been registered by both the parties by its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a Court of justice. In order to appreciate this point it would be proper to discuss the evidence led by both the parties before the Deputy Registrar, Trade Marks. The procedure in respect of the registration of trade marks is that on the presentation of the applications they are advertised in the Trade Marks Journal for the purposes of inviting opposition by any party interested in it. The application of the respondents was advertised in the Trade Marks Journal on the 1st of June 1956, and the appellants' application was advertised in the same Journal on the 1st of September 1958. On the publication of the advertisement both i the parties gave notice of opposition on the prescribed form before the Trade Marks Authorities. Thereafter they filed their counter‑statements on the prescribed forms. Then the parties filed evidence by way of affidavits, which in turn were challenged by counter‑affidavits and re‑joinder affidavits. The evidence in this case under section 70 (b) of the Trade Marks Act was taken in the shape of affidavits. None of the parties led any oral evidence before the Deputy Registrar.
The evidence produced by the parties shows that the appel lants for the first time introduced their trade mark in East Pakistan in the year 1951. Para 9 of the affidavit of Mr. Noor on behalf of the appellants, shows that from 1951 to 1957, they have sold goods under the trade mark "Nabisco" of the value of about 28 lakhs and Rs. 84,000 were paid as sales‑tax on these sales. In para. 14 of the affidavit this witness stated that various dignitaries in Pakistan have visited this factory and recorded their remarks. In these remarks it is stated that the appellants are producing "Nabisco" products from their factory which are of a very high quality. His evidence further shows that the products under the trade mark "Nabisco" are also registered with various embassies and Government agencies for the purposes of the supply of goods to them. This evidence is not contradicted on behalf of the respondents. Mr. Ibadat Yar Khan, the learned counsel for the respondents, had to admit that the evidence about user of the trade mark "Nabisco" in Fast Pakistan by the appellants in respect of the biscuits etc., manufactured by them stands unrebut ted. The learned Deputy Registrar has not disbelieved this witness.
As against this, the respondents' evidence shows that between 1935 and 1940, only 1600 dollars worth of goods were sold at Karachi. Annexore "J" filed with the counter‑statement referred to in para. 35 further shows that the sales of the respondents' goods of this trade mark in August 1940, In Karachi failed and had gone out of business. The evidence produced by the respon dents undoubtedly proves that after 1940, in the territories now comprising Pakistan, the trade mark "Nabisco" was neither used nor had any reputation till; 1947, or after Partition upto the time they filed the application for the registration of the said trade mark. In these circumstance the observation of the Deputy Registrar that between December 1946 and June 1947, the respondents imported goods of the value of 53,913.0 dollars is wholly unwarranted. I also do not agree with the view of the Deputy Registrar that respondents' claim to prior user commenc ing from 1933, or the registration of Nabisco trade mark in 1944, has any relevancy or can be taken into consideration for establish ing their prior user in the territories now comprising Pakistan. In view of the above enactment in Pakistan it has no legal value and has not to be taken into consideration for the purposes of user and reputation in Pakistan.
Thus the evidence of the parties disclose that whereas the respondents have not established any user or reputation of trade mark of Nabisco in Pakistan from 1947 onwards, the appellants have established the reputation and user of their trade mark in the territories of Pakistan, particularly in East Pakistan from 1951 onwards. In my opinion, if the appeals were to be decided on question of user or prior user the appellants should have succeeded.
But the question for consideration in these appeals is whether the trade mark "Nabisco" sought to be registered on behalf of the appellants is likely to deceive or cause confusion or other wise be disentitled to protection In a Court of justice in Pakistan. The utmost, and of that I have no doubt, the respondents have established is that the trade mark "Nabisco" has acquired international character of trade and that this trade mark is registered in neighbouring India and several countries of the world on behalf of we respondents. But can this fact be taken into consideration for refusing registration of this trade mark in favour of the appellants I have heard the learned counsel for the parties on this question at length and in my opinion unless it is proved that "Nabisco" trade mark sought to be registered on their behalf is likely to cause deception or confusion In the local market it cannot be refused registration in Pakistan. This question was considered by the House of Lords in Boord & Son (Incorporated) v. Bagots, Hutton & Co., Ltd. (1916 A C 382). Earl Loreburn at page 393 in this connection expressed himself in the following Terms :‑
"In any case there can be no ground for saying that a trade mark otherwise appropriate for registration here should be denied registration because it may be unfairly used somewhere else."
In English Courts it is now well settled rule of law that for the purpose of finding out whether the mark is distinctive, one should look to the local market and not to foreign markets, as it is wholly irrelevant consideration. The following observation of Tomlin, J., at p. 410 in Impex Electrical Ld. v. Weinbaum (44 R P C 405) will show the English view on the subject:‑
"It seems to me that the whole contention rests on a misap prehension. For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard. For that purpose foreign markets are wholly irrelevant, unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods. If a manufacturer having a mark abroad has made goods and imported them into this country with the foreign mark on them, the foreign mark may acquire in this country this characteristic, that it is distinctive of the goods of the manufacturer abroad. If that be shown, it is not afterwards open to somebody else to register in this country that mark, either as an importer of the goods of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign country, but that it is something which has been used in the market of this country in such a way as to be identified with a manufacturer who manufactures in a foreign country. That, I venture to think, is the basis of the decision in the Appollinaris' case."
This view was also expressed in a later English case in Gainses Animal Foods Ld.'s Application (1951 68 R P C 178). Lloyd‑Jacob, J., stated at page 179 that for the purpose of seeing whether a mark is distinctive or likely to deceive or not it is to the market of this country alone that one has to have regard.
In the light of the above discussion, the question arises whether a different view of the law should be adopted in construing the provisions of section 8 of the Trade Marks Act. Mr. Ibadat Yar Khan, the learned counsel for the respondents, has not been able to satisfy me why the above‑mentioned principles should not be followed in this country. It therefore appears to me that for the purposes of registration under the Act, the Tribunal should ordinarily consider the user in this country to which the Act applies. If the case of the appellant is considered on this view of the law, there is not a shred of evidence on the record to establish that the public or a common man in this country will in any way be deceived or confused while purchasing goods under the trade mark "Nabisco" manufactured by the appellants. The respondents have no market of this trade mark in respect of any goods In this country. They have no reputation and as such there can possibly be no decep tion or confusion in the mind of the public of this country that the goods manufactured by the appellants belonged to the respondents. In these circumstances the respondents had not established a reputation for their mark upon which an opposition could be founded. The learned Deputy Registrar therefore was not justified in refusing registration of "Nabisco" trade mark in favour of the appellants.
So far as the application of the respondents for the registra tion of trade mark "Nabisco" is concerned, it Is bound to cause confusion and deception in the markets of Pakistan. There is ample evidence on the record to establish that from 1951 upto 1957, the appellants have sold goods of sizeable value under the trade mark "Nabisco" In this country. Thus, the trade mark "Nabisco" has acquired reputation by sufficiently long user in Pakistan for the goods of the appellants. If the respon dents' application is granted, it is bound to cause confusion and deception in respect of a trade mark which is in long use on behalf of the appellants. In my opinion, therefore, the learned Deputy Registrar was not justified in granting the application of the respondents for the registration of "Nabisco" trade mark merely on the ground that this trade mark had acquired an international character or has been registered by the respondents in the neighbouring country of India or in other parts of the world. The real question in such cases is always the position in the local market and the question before me is always to be decided after taking into consideration this fact.
Mr. Ibadatyar Khan, the learned counsel for the respondents, urged before me that it was open to the Deputy Registrar to refuse registration of "Nabisco" trade mark for the benefit of the appellants in public interest. He urged that because the respondents have acquired international reputation in respect of "Nabisco" trade mark, it would not be in public interest to allow registration of this trade mark for the benefit of the appellants. The learned counsel in this connection referred me to the Commentary of Venkateswaran on the Trade Marks Act, 1940. In this book at page 178 the learned author observed that it is to be remembered that the provisions for the registration of trade marks exists not merely for the benefit of the traders but for the benefit of the public at large. Thus, where the Tribunal comes to the conclusion that the mark is likely to deceive, the fact that the use of the mark had not caused any deception is not of material consequence. The learned author has then discussed certain cases and the decisions taken on them, but these cases are wholly irrelevant for the decision of this case, because in those cases the word which was sought to be regis tered as a trademark had a reference to certain places in foreign countries or certain goods which had acquired reputation on account of their production in a particular country. In the Cubanola case the registration was refused because it was thought that the public would be deceived and make purchases of cigars on the ground that they were of Havana origin. I am not faced with this situation in the present case.
This case really has got its own peculiarities. It is quite true that the respondents trade mark 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 t6 hold that the registration of the trade mark Nabisco will in any way cause prejudice to the public interest.
After considering the arguments of the learned counsel for the parties, I am of the opinion that the appellants' trade mark "Nabisco" ought to have been allowed to be registered. The learned Deputy Registrar's conclusions in this respect are not correct. Accordingly I will set aside the order of the Deputy Registrar dated the 18th of December 1959 and direct him to register the appellants' trade mark "Nabisco" as prayed by them.
In the result, the appeals are allowed with costs.
R. M. A./A. H.
Appeals accepted.
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