' FAISAL ARAB, J.---In the year, 1991, the appellant applied to the Registrar of Trade Marks for registration of mark "Koyo" in class 7 as according to the appellant, the said mark was conceived by it in the year, 1988 for marketing its products such as air, oil and fuel filters and is in use since then. When the appellant applied for registration of the mark, it was already registered way back in 1963 in the name of respondent No,2, a Japanese company. On the appellant's application, the mark was advertised in the January, 2004 issue of Trade Mark Journal. 4 laving come to know about the advertisement, respondent No,2 filed notice of opposition with the Registrar of Trade Marks in March, 2004.
2. The basis of respondent No,2's opposition to registration of the mark "Koyo" was that it owns the mark since 1960 when it was first registered in its name in Japan and then it was also got registered in 83 other countries including Pakistan. In Pakistan the mark "Koyo" was registered in 1963 in the name of respondent No,2 for products falling in class 7, 9 and 12. In the proceedings before the Registrar, respondent No,2 claimed that for more than forty-two years, its mark is being widely and extensively used the world over; it has acquired tremendous popularity and goodwill amongst the trading community and is known for its best quality products. Respondent No,2 also averred that the appellant adopted its mark in the same style and script with the intention to deceive the customers and reap benefits of respondent No,2's goodwill and pass off its inferior quality products to be those of respondent No,2.
3. The appellant on the other hand submitted before the Registrar of Trade Marks that it has itself conceived the mark "Koyo" in the year, 1988 and since then it is being used by it exclusively for its products i,e, oil, air and fuel filters; respondent No,2 never used the mark for similar products in Pakistan and therefore, respondent No,2's objection to appellant's application be rejected. In support of its claim, the appellant filed copies of invoices and receipts of the printers who have printed the boxes imprinted with the mark "Koyo". The claim of respondent No,2 that it first started the use of the mark "Koyo" in Japan in 1960; got it registered in Pakistan in 1963 and it is also registered in 83 other countries around the world remained un-rebutted.
4. The Registrar of Trade Marks, after considering the respective contentions of the parties, came to the conclusion that the entire evidence filed by the appellant relates to the period which is after the filing of the application for registration and since the mark being a Japanese work "Koyo" is likely to cause deception amongst the purchasers that the product is of Japanese origin. The Registrar therefore, exercising powers under sections 8(a), 10(1) and 14(1) of the Trade Mark 1940, refused registration of the mark in favour of the appellant. The appellant has impugned the order of the Registrar Trade Marks in the present appeal.
5. Learned counsel for the appellant argued that the goods for which the appellant is using the mark "Koyo" fall in different class from the class of the goods that are being sold by respondent No,2 in Pakistan; the respondent No,2 does not sell oil, air and fuel filters in Pakistan hence its name is not well-known for such products in Pakistan; there is no question that consumers would associate products of the appellant with the products of respondent No,2; the goods produced by the appellant, not being identical to the goods sold by respondent No,2, would not pass off as the goods of respondent No,2 and therefore the question of deception does not arise. Learned counsel for the appellant next argued that the appellant itself conceived the mark "Koyo" in 1988 and is using the mark for its products since then, which is sufficient to establish honest user for a long time on their part. He concluded his arguments by submitting that the Registrar summarily rejected appellant's application without taking into consideration all these aspects and, therefore, the conclusion of the Registrar Trade Marks is devoid of proper reasoning and is liable to be set aside with a direction to him to register the mark "Koyo" in its name.
6. Learned counsel for respondent No,2, on the other hand, argued that sale figures shown by the appellant pertain to periods, all of which are after the date of moving the application for registration and therefore, the Registrar of Trade Marks was right in assuming that mark was never in use of the appellant prior to making of the application and is being used only after applying for its registration. Learned counsel for respondent No,2 further submitted that originals of the documents such as past invoices were not produced before the Registrar Trade Marks, as all were photocopies and even from these photocopies it clearly appears that the word "Koyo" has been subsequently inserted in the invoices in different handwriting. All this, according to the learned counsel, establishes the fact that the mark "Koyo" was not there in the invoices even for the periods for which invoices were produced but has been subsequently inserted through interpolations hence the appellant has failed to make out a case of innocent, honest and contemporaneous adoption of the mark "Koyo" for a longtime without any objection.
7. In support of its arguments, learned counsel for the appellant had relied upon the cases reported in PLD 1970 SC 460 and 2004 CLD 315; PLD 1959 Dacca 41 and 1991 CLC 37. In the cases reported in PLD 1970 SC 460 and 2004 CLD 315 it was held that concurrent and honest use of the mark for a long time not challenged by the registered user would entitle registration of the mark. In the case reported in 1991 CLC 37 the facts were that there was a long and honest user of the mark without any objection from the registered owner. This long and honest user resulted in creation of sizable market. In this context, in the said case it was held that on account special circumstances, mark should be allowed to be registered. In the case reported in PLD 1959 Dacca 41 also the plea of concurrent user was not denied and therefore the mark already registered in someone else name was allowed to be used.
8. It is an admitted position that when the appellant applied for registration of the mark "Koyo" in its name in 1991, it was already registered way back in 1963 in the name of respondent No,2. The mark "Koyo" that was applied by the appellant is also in same style of writing and script which is registered in respondent No,2's name. In fact, the mark applied by the appellant is identical copy of respondent No,2's mark. A The Registrar of the Trade Marks in his decision. Has held that the appellant adopted the Japanese name, which is likely to cause deception. In order to establish that the findings of the Registrar Trade Marks were erroneous, it was incumbent upon the appellant to establish honest and contemporaneous user round about the time when respondent No,2 got its mark registered.
9 When the use of a registered mark is not objected to for a considerable period of time and on account of such user a party creates for itself a sizable market only then the registered owner of the mark cannot subsequently seek an order against such user. 'A person who might have been using a mark prior to its registration in someone else's name would be entitled to protection of the use of the mark. However, in the present case, the mark "Koyo" was already being used the respondent No,1 albeit for different classes of goods in Pakistan. The appellant on the other hand neither established concurrent, long and honest user of the mark prior to its registration in the name of respondent. No,2 nor respondent No,2 remained silent, when, on the application of the appellant, the advertisement of the mark "Koyo" appeared in Trade Mark Journal for the first time in the year, 2004. Upon noticing such advertisement, respondent No,2 promptly came forward and filed its notice of objection before the Registrar of Trade Marks. Even otherwise, the adoption of respondent No,2's mark by the appellant in the same style and font is by itself misleading and deceptive. The adoption of the mark was not only dishonest but the appellant also failed to establish concurrent and long user of the mark without any objection from its registered user. The case-law relied upon by the appellant is therefore of no help to its case.
10. In the case of Cooper's Incorporated v. Pakistan General Store reported in 1981 SCM R 1039 the Honourable Supreme Court held that though the registered owner of the trade mark was not selling its product in Pakistan, it did not entitle anyone to copy the registered trade mark as by doing so it deceives the public into thinking that its products are the products of the registered owner. When a mark is already registered, it is D incumbent upon the applicant to establish that the use of similar mark is not dishonest. No law encourages dishonesty. E The appellant has failed to establish that before applying for Registration of the mark "Koyo", it was selling its product containing such mark and that too for a considerable period of time. Even in the invoices that were produced before the registrar, apart from the fact that all pertained to the periods which are after the moving the application for registration, the word "Koyo" seems to have been subsequently inserted in the invoices and is also in different handwriting. This clearly establishes that documents were fabricated in support of F appellant's case. In case the mark is also allowed to be registered in the name of the appellant, it would allow the appellant to pass off its product to be of Japanese origin.
The respondent No,2, being a foreign producer, may not be presently selling identical goods in Pakistan but the products of the appellant could be associated with that of respondent No,2 who may have built up a reputation and goodwill of its mark for its products in Pakistan apart from other countries of the world. The appellant cannot be allowed to trade by taking advantage of the name, publicity and goodwill of respondent No,2's mark.
11. In the case of Cooper's Incorporated v. Pakistan General Store reported in 1981 SCM R 1039 and referred to in the foregoing paragraph, a passage from an English decision reported in (1906) 23 RPC 774 has been quoted, which is worth repeating. It is as follows:- "You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion- that is to say not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods- then you may refuse the registration, or rather you must refuse the registration in that case."
12. In the Cooper's case, the Honourable Supreme Court has held that once dishonesty in seeking registration of a mark is established then the Registrar Trade Marks must reject the application. In the present case, the appellant failed to discharge its burden in estahlirhing that round about the time when respondent No,2 got its mark registered in 1963, the appellant had also adopted identical mark and it was being used by the appellant since then in order to establish innocent and honest user of the mark. The burden to establish honest and innocent user is on the party which seeks to apply for the mark which is already registered. In case such a burden is not discharged then dishonesty of the applicant has to be assumed. In such circumstances, the plea that the applicant is using the mark for its goods, which are different from the goods of the registered owner, loses its significance. The respondent No,2 who uses its mark in 83 countries of the world including Pakistan may have built up a sizeable goodwill and reputation for its products and may have invested on the advertisement of its mark. Therefore, the appellant cannot be allowed to steal a march over the name, publicity and goodwill of respondent No,2 which it has established over a period of time.
13. The case-law cited by the appellant's counsel in support of his other argument that the impugned order is not a speaking order is also without any force. The Registrar of Trade Marks in his decision has clearly given finding that the period for which the mark is said to be in use of the appellant pertains to the period which is after applying for the registration of the marks in its name and that the mark being of Japanese origin and already registered in respondent No,2's name, which is also a Japanese company, its adoption by the appellant would definitely create an impression that the goods belong to respondent No,2. In view of such findings, it cannot be said that the order of the Registrar of Trade Marks was non-speaking order.
14. In view of the above discussion, this Court finds no justification to interfere with the discretion exercised by the Registrar Trade Marks while rejecting appellant's application. I therefore hold that the Registrar rightly refused registration of mark "Koyo" in the name of the appellant. This appeal is dismissed in limine.