1. I, propose to dispose of miscellaneous appeal under section 114 of the Trade Marks Ordinance, 2001, filed by the appellant against the decision dated 10-1-2004 passed in Opposition No.167 of 2004 by the Registrar of Trade Marks, Government of Pakistan, Trade Marks Registry, Karachi through which Registrar Trade Marks/respondent No.2 disallowed the appellant's Notice of Opposition and permitted the respondent No. l's application No.137298 in Class 34 to proceed to registration.
2. The appellant has filed this appeal against the ,;aid "impugned order" with the following prayer:--
(i) Set aside the impugned order dated 10-1-2004.
(ii) Direct the respondent No.2 not to entertain the Trade Mark Application No.137298 in Class 34 of the respondent No. 1.
(iii) Grant costs of this appeal.
(iv) Any other further, better or other order as may be deemed fit and appropriate in the facts and circumstances of the case.
3. The necessary facts giving rise for the disposal of the present appeal are as follows:-- The appellant is a company organized and existing under the laws of Germany, through its attorney in Pakistan, filed in the capacity of Opponent a Notice of Opposition before the Registrar of Trade Marks at Karachi in the matter of Trade Mark Opposition No.167 of 2001 to Application No.137298 in Class 34 for the Registration of Trade Mark "Zest" in the name of Messrs Korea Tobacco Ginseng Corporation, Republic of Korea, the applicant/respondent No.1 in this appeal. The main objections of appellant are that the Registrar Trade Mark allowed Registration proceeding for Trade Mark "Zest" in violation of section 8(a) of Trade Marks Act, 1940 and the other objection is that the Affidavit in Support of Application is filed by a person who is not competent under the law. The case of the appellant is that they are one of the leading companies of Germany engaged in manufacture of all types of tobacco products under its several Trade Marks including the Trade Mark "West" which was firstly obtained in Germany on July 11th, 1980 and their application for registration of said Trade Mark was also filed in Pakistan on 18th April, 1985. The appellant urged that the respondent No.1 Trade Mark "Zest" applied for registration is confusingly and phonetically similar to the appellant's Trade Mark "West" and covers all the goods in respect of which the respondent No. l's Trade Mark has been applied for registration and thus, if the appellant's mark "Zest" is allowed to be registered, side by side with the appellant's Trade Mark "West" it is likely to cause confusion and deception amongst the trading community and the purchasing public. The appellant further urged that the Registrar, Trade Marks Registry, did not appreciate the contents of the Notice of Opposition and passed an impugned order and disallowed the appellant's Notice of Opposition and permitting the respondent No. l's Application No.137298 in Class 34 to proceed to registration.
4. In reply of the Notice of Opposition, respondent No.1 filed the Counter Statement stating therein that they carry on worldwide and renowned business as manufacturer and merchants of all types of tobacco products in many countries of the world including Pakistan and in order to distinguish its products from those of its competitors the respondent No.1 has adopted the Trade Mark "Zest" and has been using the same continuously ever since its adoption which has become distinctive of the applicants products over the year. The respondent No. l's Trade Mark "Zest" is famous and well known in respect of aforesaid goods and the respondent No.1 actively markets its goods marked with the aforesaid Trade Mark supported by extensive sales promotion and advertising through multi media in numerous countries, which is heard and seen in Pakistan also. They also replied that the Trade Mark "Zest" has thus acquired an excellent reputation and good will in Pakistan and internationally and in order to protect its interest and rights the respondent No.1 and or its predecessorin-interest has registered and or applied for Registration of the "Zest" Trade Mark in several countries of the world. In Pakistan the respondent No. l's Trade Mark is duly filed for Registration under No.137298 in Class 34 on 26th August 1996.
5. After hearing both the parties by the Registrar, Trade Mark Registry, disallowed the Notice of Opposition and allowed to proceed the Registration Application No.137298/34 of respondent No. 1.
6. The operative para. of the decision of Registrar, Trade Mark Registry \ is reproduced as under:-- "I have gone through the pleadings and considering the written arguments filed by both the counsel. I have come to the conclusion that the opponent's opposition has no force on the following points:--
(i) That both the Trade Marks West and Zest are not similar to each other, therefore, there is no likelihood of any confusion and or deception as alleged by the opponent.
(ii) That the Trade Marks Zest and West co-exists in other countries of the world without causing any confmion and or deception.
(iii) That the applicant and the opponent are selling their products under the Trade Marks Zest and West in many countries of the world including in Pakistan side by side and have a huge sale publicity.
7. Beside the above facts I have also taken in to consideration that the principle laid down by the superior Courts for determining the similarity of the marks. Thus following the principle laid down in cases Aspro v. Dispro reported in PLD 1973 Note . 60 at p.82 and Rem v. Mem reported in 1987 CLC 1539, I hereby disallow the opposition as the mark is not similar and under sections 10(1) and 8(a) of the Trade Marks Act, 1940 do not attract the same. Accordingly Application No.137298/34 is allowed to proceed to registration.
8. I hereby pass the following orders:--
(i) That Opposition No.167 of 2001 is disallowed.
(ii) Application No.137298/34 is released from the opposition and is allowed to proceed to registration.
(iii) 'That there will be no order as to cost.
(iv) That this order shall take effect after the expiry of statutory appeal period.
9. (Sd/-)
10. Karachi(Muhammad Mohsin)
11. Dated 10-01-2004Registrar"
12. After having heard the learned counsel for the parties and in the light of the record available in case file and cases relied by the learned counsel, the order of Registrar Trade Marks is based on sound reasons and on the principles settled by this Court and the Honourable apex Court of Pakistan. The principle laid down in case Abdul Wahid v. flap Abdul Rahim and others PLD 1973 SC 104, the Honourable large Bench of Supreme Court held as under:-- We have, however, heard the learned counsel for the parties on merits at length and have compared the mark "Daigon" with the word, "Saigon" and I am of the opinion that there is no phonetic or visual similarity between the registered trade marks of the appellants and the registered trade mark of the respondents. So far as the first syllables are concerned they are dissimilar and have no similarity with each other. There appears to be close similarity as regards the second syllable. It seems to me that in such circumstances, it is an accepted principle that words having a common suffix but if earlier portion of these words arc different, and if they do 'not conflict they arc held to be distinctive. This view was expressed in Facsimile Letter Printing Co. Ltd. v.
13. Facsimile Typewriting -Co. (1912) 29 RPC 557. It was held in this case that where two words have the same suffix, the earlier portion of the words is the natural and necessary mark of distinction."
14. In the present case, in the registered Trade Mark "Daigon" on the one hand and the registered Trade mark "Dragon" on the other hand the first syllables "Dai" and "Dra" are dissimilar from the syllable "Sai" and the learned 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.
15. I have compared the words "Daigon" and "Saigon". The pronunciation of the word whether it is made by a per son who knows English language or otherwise is absolutely different and there is no similarity between the two. I would, therefore, hold that the view taken by the learned Assistant Registrar. is correct and it should have been upheld by the High Court."
16. Other case of this Court reported in PLD 1973 Note 60 at p.82 Aspro-Nicholos Ltd. v. Registrar of Trade Marks. the Honourable Judge observed as under:-- "In the case before their Lordships, the conflicting trade marks were two words "Saigon" and Diagon", both used for sewing machines. Their Lordships reversed the decision of the High Court of West Pakistan (Karachi Bench) and held that the words having a common suffix should be held to be distinctive, if the earlier portions of the words are different. Thus, in the words "Saigon and Diagon", the endings are common, but the prefixes arc different, and therefore, their lordships held that the two words were distinct from each other. Their lordships also referred to their earlier decision in Pakistan Soap Factory v. Chittagong Soap Factory in which, dealing with numeral trade marks 1937 and 1947, both used for soaps, it was held that the two marks were quite dissimilar with each other even though the marks may contain a common digit. In my view, this judgment Of the Supreme Court concludes the controversy before me. Although the endings of the words "Dispro" and "Aspro" may be similar, but the beginning in each word is quite different. In view of the rule laid down by their Lordships of the Supreme Court, the two words should be held to be distinct from each other", Another case of this ,Court reported in 1987 CLC 1539-Midland Electric Manufacturing Company Ltd. v. The Registrar of Trade Marks and another, the learned Judge held as under:-- "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.
17. 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.1 that respondent No.2 has established his use 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."
18. The aforesaid principles laid down by this Court and Honourable apex Court of Pakistan, it is, clear that the word "Zest" and West" are neither phonetically similar nor cause confusion and deception amongst the trading community and the purchasing public. Furthermore both the trade marks are in use from last several years to number of countries and no evidence is brought before the Court which caused physical damage to any of the party.
19. Therefore, I am, of the view that the trade mark "Zest" is not to deceive or cause confusion among the users. The Registrar Trade Marks rightly allowed registration proceedings for Trade Mark "Zest" under section 8(a) of Trade Marks Act, 1940.
20. The above "impugned order" of the Registrar Trade Mark, is not passed in violation of section 8(a) of Trade Marks Act, 1940. The said section is reproduced hereasunder:- "8. Prohibition of registration of certain matters. 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; In the circumstances, as discussed above and principles laid down by this Court and Honourable Supreme Court the above order of the Registrar Trade Marks is not to violation of section 8 of the Trade Marks Act, 1940.
21. So far another objection of appellant is that the Affidavit in support of application is filed by a person who is not competent. The appellant relied upon a reported case Giorgio Beverly Hills Inc. v.
22. Colgate Palmolive Pakistan Ltd. (formerly known National Detergents Limited) 1999 M LD 3173 (Karachi). The learned Judge observed as under:-- "From the records it appears that Messrs Siza (Pvt.) Ltd. are the proprietors of the Trade Mark sought to be set aside/expunged from the Registrar of Trade Marks. At the moment the applicant does not and in fact cannot press for any direction against respondent No.1 in view of the position taken and the material placed on record. In the absence of new proprietor as party to proceedings before this Court and without any cause of action against the said proceedings before this Court and without any cause of action against the said proprietor, no direction of the nature asked for can be issued to the Registrar Trade Marks. The application pending over 3-1/2 years is, therefore, completely misconceived and not maintainable. It is accordingly dismissed with costs."
23. The referred case is about the companies having their registered offices in the country and the Court has directed to file the affidavit regarding substitute the new proprietor in place of proprietor mentioned as respondent No. 1. Therefore. the learned Judge observed that "In all fairness, in each case the parties or its agent or attorney should file an affidavit in support of the case and not the counsel". In the case in hand none of the parties have their offices in Pakistan and an Attorney has filed affidavit on behalf of respondent No. 1. More over this is not the case of change of ownership but it's a case of registration of trade mark in which an attorney has filed the affidavit who is not a counsel of the respondent No. 1. Therefore. Registrar Trade Mark rightly has not considered this issue in this decision.
24. I revert back to case cited in Abdul Wahid v. Haji Abdul Rahim and another PLD 1973 Supreme Court 104, in which Honourable Judge observed:-- "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, exercise the discretion vested in him by statute and the Court in appeal should always be extremely loath to interfere with that discretion.
25. 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."
26. In the circumstances, as discussed above I have not found any error in using the discretion by the Registrar in passing the said "impugned order", hence the said impugned order cannot be altered/amended or set aside as neither the order is perverse nor order suffers from any infirmity or illegality. However, it is shocking that the Trade Mark Registry has taken years to years for registration of trade mark. This type of practice of Trade Mark Registry will not be appreciated, hence the Registrar Trade Mark is directed to issue direction to dispose of the application for registration within three years positively. In case of delay, the disciplinary action against relevant officer should be initiated or reasons for delay be given in their proceedings.
27. The upshot of the above discussion, I find no reasons to interfere with the order/decision of the Registrar Trade Mark who in exercise of discretion has allowed the registration of the trade mark of respondent No. 1.The appeal is, therefore, dismissed with no order as to costs.