' SHAHID ANWAR BAJWA, J.---By this order I propose to decide M.As.Nos.45 of 2008, 34 of 2008 and 46 of 2008. The appellant in all these appeals is Master Enterprises Private Ltd., Proprietor of Trade- Mark "Master".
' The facts as pleaded by the appellant are that appellant is engaged in business as manufacturer and merchant of a wide range of products, which include foams, mattresses, furniture, insulation material, automobile, automobile parts, automobile accessories, textile goods and Chemicals. All these are sold throughout Pakistan and abroad under the house mark of "Master". It is further stated in the appeal that foundation of Master Group of Industries was laid in the year, 1963 and the Master Group of Companies comprised the following companies: -- Company Name Year of Year of Incorporation Master Enterprises (Pvt.) Limited 1963 Durafoam (Pvt.) Limited 1981 Master Chemical (Pvt.) Limited 1984 Procon Engineering (Pvt.) Limited 1988 Master Polymer Industries Limited 19898 Master Textiles Limited 1982 Master Celeste (Pvt.) Limite 1996 Master Foam (Pvt.) Limited 1998 Master Motor Corp. Limite 2002
2. It is further claimed in the memo of appeal that appellant is original creator, developer, adopter, first user and proprietor of the Trade Mark "Master". Sale figures for different years have been quoted to prove extensive use of the Trade Mark. It is further stated that Trade Mark of the appellant "Master" is registered in Class 12 (M.A. No,45 of 2008), Class 17 (M.A. No,34 of 2008) and Class 20 (M.A.No,46 of 2008).
3. Respondent No,2 filed Trade Mark Application No,184305 in clause 12, 184301 in Class 17 and 184298 in class 20 for registration of Trade Mark "Minister". Applications were printed in the Trade Mark Journal and in all the cases oppositions were filed by the appellant.
4. In case of Appeals Nos.45 and 46 of 2008 oppositions were disallowed vide order dated 28-7- 2007 and in case of appeal No,34 of 2008 opposition was disallowed vide order dated 13-8-2007.
5. In Appeals Nos.45 and 46 of 2008, in the impugned order after reproducing contentions of the parties, order is in the following words:-- "7. I have heard the arguments of both the counsel and I have given due consideration to the pleadings filed by each of the parties. I feel that the applicant's mark Minister is totally different from the opponents' trademark Master and there is no any confusion or deception if the applicants trade-mark Minister is allowed.
8. I also relied on the following case laws in which these trade-marks are held dissimilar:
(i) Mendit---Mendine---30 'RPC 709
(ii) Swan---Swankie---31 RPC 79
(iii) Colonial---Colonel 27 RPC 79
(iv) Anchola---Anchovette 33 RPC 320
(v) Regiment-Regimental 35 RPC 185
(vi) Toma---Tprmadp 1979 RPC 155.
9. In view of the above position, I hereby pass the following orders:
(I) That the opposition Nos.540 of 2005 and 657 of 2005 are disallowed having no merits.
(ii) That the applicant's applications Nos.184305 in Class-12 and 184298 in Class-20 may be released from these oppositions and allowed to proceed to registration.
(iii) that there shall be no order as to cost.
10. This order shall take effect after the expiry of appeal period."
6. In Appeal No,34 of 2008 similarly after reproducing contentions of the parties, order is in following words:-- "7. I have heard the arguments of both counsel and I have given due consideration to the pleadings filed by each of the parties. I feel that the Applicant's mark Minister is totally different from the opponents' trademark Master. I also relied on the following case-laws in which these trade-marks are held dissimilar:--
(i) Mendit---Mendine---30 RPC 709
(ii) Swan---Swankie---31 RPC 79
(iii) Colonial---Colonel 27 RPC 79
(iv) Anchola---Anchovette 33 RPC 320
(v) Regiment---Regimental 35 RPC 185
(vi) Torna---Tprmadp 1979 RPC 155.
8. In view of the above position, I hereby pass the following orders: --
(i) That the Opposition Nos.539 of 2005 is disallowed having no merits.
(ii) that the subject Application Nos.184301 in Class-17 is released from this opposition and may proceed to registration.
(iii) That there shall be no order as to cost.
9. This order shall take effect after the expiry of appeal period."
7. Being aggrieved by the orders, these appeals have been filed.
8. Ms. Shazia, Advocate appeared for the appellants in all the three matters and attached impugned orders on the following grounds:--
(1) That the order passed is not a speaking order and no reason for holding two Trade Marks Master and Minister as not liable to cause any confusion has been stated' in the order. No case-law was discussed although case-law was extensively cited before the respondent No, 1.
(2) As stated in para No,13 of the appeal, there were applications for registration of Trade Mark in the same category still pending and without deciding those applications the oppositions have been rejected. Since the matters in the pending applications attracted most of grounds for opposition to applications for registration propriety demanded that all the applications be decided together.
(3) Most of the grounds specified under section 17 of the Trade Marks Ordinance, 2001 for refusal of registration are attracted but Registrar, respondent No,1, has not considered any of these grounds.
(4) There is most probable likelihood of confusion on the part of general public and of association by the general public of the two Trade Marks "Master" and "Minister". Under section 14(3) of the Trade Mark Ordinance what is required is not actual confusion or deception but likelihood of causing confusion or deception.
(5) Trade Mark "Master" had been registered much earlier as it was registered in 1960.
9. Learned counsel referred to "Exh. r which is a copy of registration certificate of Trade Mark "Minister" and it is stated there that the certificate is not for use in any legal proceeding or for obtaining registration abroad. Learned counsel contrasted this registration certificate issued to her client where no such observations appear. Learned counsel referred to page 415, which is Sales Promotion Material of the respondent No,2, which learned counsel for appellate stated that it was downloaded from Internet from web-site of the respondent No,2 and in this respondent No,2 is described as a Sales Promotion Company.
10. As required by section 4 of the Trade Marks Ordinance, respondent No,1 failed to establish before the Registrar, use of the trade mark in relation to goods or on goods. Learned counsel referred to section 22(3) of the Trade Marks Ordinance, where it is required that applicant shall state that the Trade Mark is being used by the applicant or with his consent in relation to goods or services or that he has a bona fide intention that it would be used. Learned counsel submitted that respondent No,1 has not produced any material on record to establish his bona fides in this regard, what is placed on record are only dictionary meaning and is the certificate of registration.
11. On the other hand Mr. Manzoor Ahmed Arain, Advocate who appeared for private respondent in all three matters made the following submissions:-
(1) That application for registration of Trade Mark "Minister" was made in all 34 classes and out of 34, 29 have already been registered. In one class this Trade Mark had been registered in the name of another person and therefore application was refused. Opposition was filed only in classes 12, 17 and 20 in 2005 by the appellant.
(2) Both "Master" and "Minister" are dictionary words and their meanings are, even in an as illiterate society as Pakistan, clear to ordinary man in the street.
(3) Actual use is not required. There must be bona fide intention to use and that intention has been demonstrated through record placed before the Registrar.
12. Mr. Saleem Ghulam Hussain, Advocate for the Registrar of Trade Mark made the following submissions:-
(i) That the grounds of pendency of application for registration had not been taken in appeal.
(ii) impugned Order is a well reasoned and speaking order and reasons have been stated at page 11 of the order.
13. Learned counsel for appellant while exercising her right of reply submitted as under:--
(1) Pendency of application was stated in the grounds of opposition.
(2) First 10 pages of the impugned order are mere reproductions of the grounds of opposition and reply thereto.
(3) Intention of the Legislature is that there be no likelihood of confusion.
(4) No evidence of use of Trade Mark "Minister" has been produced before the Registrar by the respondent No,2.
(5) It is stated in affidavit of Muhammad Ibraheem son of Fateh Muhammad that he is sole proprietor of Ibraheem Associates but address given by him is that of the appellant establishment.
(6) At one place respondent No,2 stated that he is importer/exporter and at another place it is stated by him that he is Manufacturer and Merchant.
(7) There is no product with the name of Minister in the market.
14. Learned counsel for the appellant referred to the following case-law:--
(1) Nahan Foundry v. Messrs Seth Muhammad Rafique Zarati Foundry and others 1994 M LD 2401,
(2) Mollah Ejahar All v. Government of East Pakistan PLD 1970 SC 173,
(3) The Wellcome Foundation Limited v. Messrs Karachi Chemical Industries (Pvt.) Limited 2000 YLR 1376,
(4) Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant 1987 SCM R 1090,
(5) Messrs Airport Support Services v. The Airport Manager, Quaid-e-Azam International Airport, Karachi and others 1998 SCM R 2268.
15. Learned counsel for respondent No,2 relied upon the following case-Law:--
(1) Dr. Hakimullah Siddiqui v. Messrs Alphaco (Pakistan), Karachi 1987 M LD 2569,
(2) English Laboratories (Pvt.) Limited v. Messrs Chas A Mendoza Pharmaceutical Laboratories 1998 M LD 1234.
16. Learned counsel for Registrar of Trade Marks relied upon Muhammad Yaqoob, Lasani Engineering Company v. Punjab Engineering Company and others 1992 CLC 2036 and Lipha Lyonnaise Industrielle Pharmaceutique through Authorized Signatory v. Registrar of Trade Marks and another 2009 CLD 1289.
17. I have considered the submissions made by learned counsel. I have gone through the record and the case-law cited by learned counsel.
18. In Nahan Foundry's case (supra), the trade mark "Seth Muhammad Tufail and "Seth" were registered in the name of one person. After shifting of the business "Khud Kafir was used in Urdu script by another person and it was contended the way it was written in Urdu it resembled trade mark "Muhammad Tufair. Since the order passed by the Registrar Trade Marks was not a speaking order appeal was allowed and matter was remanded to the Registrar Trade Marks.
19. In Mollah Ejahar Ali's case (supra), a single sentence order was passed by the High Court stating that, application was filed for change of trade mark from clause 20 to clause 29. This application was opposed by "Tabak" Rawalpindi.
22. Airport Support Services case (supra) was relied upon by the learned counsel on the ground that the application before the Registrar was filed by the present defendant through an unauthorized person. In Hakimullah Siddiqui's case (supra), the trade marks were 'Leukonoi and Leecon'. The High Court observed that dissimilarity in the name was patent not, only visually but also applying the test of phonetic resemblance, as sound of one has no resemblance with the other so as to create any type of confusion in mind of purchaser or shop assistant. It was observed that if each of the trade marks is used in the normal way in the market, situations of deceit or confusion are not likely to arise and none in fact are shown to have arisen in the past.
23. In English Laboratories (supra) case, the competing trade marks were "Medicam" and "Medipac". It was held that two expressions and trade names used by parties were neither similar in get up nor in colour scheme nor in shape of label so as to deceive an innocent buyer. Phonetically both the names were held to be different.
24. In Muhammad Yaqoob Lasani's case (supra), the trade names were "King" and "King Kong". The High Court held them later to cause confusion.
25. In Lipha Lyonnaise's case (supra) the trade names competing against each other were "Gluconorm" and "Glucophage". It was held that although the prefixes were the same, suffixes were different. It was held that the suffixes were different in spelling and pronunciation and therefore no interference was called for.
26. In the present case the trade mark in question is "Master" on one side. The word Master is written and around letter M is drawn a circle which is split into four arches. Trade Mark "Minister" has been registered. Whereas word 'Master is written in sans-serif type face word "Minister: is written with serifs. Secondly, both words ' Master' and Minister' are dictionary words. Though they are English language words but given the socio-cultural milieu and accepted lingual parlance of Pakistan, they are known to almost every one. I mean almost everyone is familiar with the words ' Master' and ' Minister'. Neither suffix nor prefix is liable to lead to any confusion. Even syllable wise the word 'Master' has two syllables and word 'Minister' has three syllables. If written in Urdu language, they are different and distinguishable with each other. In any case there has been no allegation that in Urdu script word Minister has been written to deceive or is likely to deceive a common purchaser or shop assistant. Phonetically they are also different from each other therefore, to my mind there appears to be no reasonable possibility of they being confused with each other or being liable to cause any confusion.
27. No doubt, the Registrar has not passed a very speaking order. There can be much that can be said about reticent way in which the Registrar has decided the appeals. Nevertheless, since two words "Master" and "Minister" are so clear, so clearly intelligible, so phonetically different and even written in different type faces, in my opinion there appears no reason to hold they have caused any confusion nor there appears any likelihood of confusion or deception. Therefore it would not be in the interest of justice that the matter be remanded to the Registrar for decision afresh.
28. In view of the above conclusion, I do not think it would be necessary to deal with the other submissions made by the learned counsel.
29. Result of the above discussion is that these appeals are dismissed.