1. The appellant is an American Company which manufactures and sells men's and boys' underwears, shirts, etc., under the trade mark `Jockey'. The appellant used to export its products under this trade mark to Pakistan in 1950 and 1951. Imports of underwear, shirts, etc., were, however, banned to 1951 and except for some petty sale in 1957, the appellant has not after 1951 sold its products in Pakistan. However, despite the ban on the import of the type of products manufactured by it, the appellant had high hopes of selling its products in Pakistan some day, therefore, it applied for the registration of its trade mark `Jockey' in Pakistan in class 25 and this application was allowed by the Registrar of Trade Marks, Karachi, on the 16th of September, 1959. The appellant is thus the registered owner in Pakistan of the trade mark 'Jockey' for men's and boys' underwear, shirts, etc. But, despite the registration of its trade mark in 1959, four years later, 'the respondent commenced selling men's and boys' underwears, shirts etc., under the same trade mark 'Jockey' and applied to the Registrar of Trade Marks, Karachi for the registration of the trademark `Jockey' for its products in class 25. And as corollary to this application, the respondent also applied on the 4th of November, 1964 for striking off the appellant's trade mark `Jockey' from the register of trade marks on the ground that the appellant had stopped selling its products in Pakistan and was not in a position to sell them, because of import restrictions.
2. This application was contested by the appellant and was dismissed by the Registrar on 9th January, 1967, on the ground that the appellant had been prevented by Government Import Policy from selling its products in Pakistan, therefore, there was no case for stricking off its trade mark from the register of trade marks. The respondent not only did not challenge the dismissal of this application, but it also withdrew its own application for the registration of the trade mark `Jockey' as its trade mark for its own products.
3. However, a few weeks after the withdrawal of its application, on the 20th of April, 1967, the respondent filed a second application for the registration of the mark `Jockey' for its products in class 25. This second application too was opposed by the appellant and was dismissed by the Deputy Registrar, Trade Marks, Karachi, by his order dated 15-6-1976. And, we may point out that the Deputy Registrar not only refused to allow the respondent's application for the registration of the mark `Jockey', but he also gave a categorical finding in his order that the respondent had dishonestly tried to copy the appellant's registered trade mark and was, therefore, "liable to both civil and criminal action at the option and discretion of the opponents".
4. The respondent challenged this order in an appeal in the High Court of Sind & Bluchistan and this appeal was allowed on 5th March, 1973 by a learned Judge of the High Court on the basis of a judgment reported in Lallubhal-Amichand v. The Punjab Aluminium Factory (PLD 1960 Kar, 545 ) therefore, the appellant filed a petition for leave in this Court and leave was granted in t, order to examine the validity of the view taken by the High Court.
5. This appeal turns on the proper construction of section 10 of the Trade Marks Act, 1940 (hereinafter called the said Act) and it would be sufficient to observe here that subsection (1) of section 10 prohibits the registration of a new trade mark "in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor . . . . ", except as provided in subsection (2). This sub--section reads: "In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such condi--tions and limitations, if any, as the Registrar may think fit to impose."
6. As the respondent has delibesrately copied the appellant's registered trade mark, it could have succeeded before the Deputy Registrar only if it had roved honest concurrent use, of the mark 'Jockey' or "other special circumstances" within the meaning of this subsection. But, the Deputy Registrar has given a categorical finding that the respondent had dishonestly copied the appellant's trade mark. Therefore, the first question is whether there is any error in this finding. 'The burden of proving an error in this finding was or: the respondent, but Mr. Thaker only relied on the fact that the appellant had not been able to sell its products in Pakistan, because of import restrictions. Now, although the appellant has not been selling it products in Pakistan because of import restrictions, this does not entitle the respondent to copy the appellant's trademark, because by doing so, it is deceiving the public into thinking that its products are the products of the appellant. And, on the ocher hand, it would appear that the respondent did not produce any evidence before the Deputy Registrar to show that its use of the mark `Jockey' was honest, therefore, as pointed out long by tie Privy Council in Subbiah v. Kumeraval (1) the fact that the respondent has copied the appellant's mark cast on it a heavy burden' to show that its use of the appellant's mark was honest. But, as it has not produced any such evidence, it follows that it had dishonestly copied the appellant trade mark and, the High Court would not have been justified in interfering with Deputy Registrar's finding that Y the respondent had dishonestly copied the appellant's trade mark.
7. As the respondent is thus debarred from challenging the finding that it has dishonestly used the appellant's registered trade mark, it is difficult to see how it can claim the right of registration under subsection (2) of section 10. But as registration is permitted "in cases of honest concurrent use or other special circumstances" Mr. Thakor submitted that the respondent's use of this mark for a period now of nearly seventeen years brought its case within the meaning of the words "other special circumstances" in the subsection. But, apart from the fact that the appellant has been continuously litigating with the respondent about its use of mark `Jockey' for this period of seventeen years, it is difficult to see how the respondent can claim the right to register its mark in view of the finding that it has dishonestly copied8 this mark. It is true that the word "or" as submitted by Mr. Thakor, is] disjunctive and we also agree with Mr. Thakor's submission that the words "other special circumstances" are words of wide import. But, however wide be, the meaning of these words, the object of the said. Act is to prevent the dishonest imitation of registered trade marks, therefore, Mr. Nomani referred' us to a judgment of the Calcutta High Court in Bengal Immunity Co. v. D. C. Manufacturing Co. (2) in which the learned Judges observed' "it is well to remember that the whole idea behind the law of registration of trade marks is to prevent fraudulent use of the marks of one proprietor by another proprietor." We respectfully agree with these observations, and if the Legislature had intended to allow a proprietor to copy fraudulently thz C registered trade mark of another proprietor, it would have made clear provi--sion in this respect. But, it has not, therefore, we cannot construe the word "other special circumstances" in a manner which would defeat and nullify the objects of the said Act.
8. Looking at the matter from matter are, if we accept Mr. Thakor's 531? " that the dishonest consiquence use of the trade mark of another proprietor can fall under the words "other special circumstances" it would render redundant the word "honest" which precedes the words "concurrent D use". But, as redundancy is not to be attributed lightly to the Legislature, on this ground also, we are not able to accept Mr. Thakor's submission.
9. Mr. Thakor then submitted that the Registrar was entitled to take into account socio-economic considerations and by disallowing the respondent's application, he had acted in disregard of socio-economic considerations, therefore, his order was illegal. The submission is misconceive. It is true that section 10 confers discretion on the Registrar who is therefore, free take into account social considerations as well as economic considerations But, these are not the only considerations relevant to the exercise of discretion) under section 10. And, as observed by Kerly in the Law of Trade Marks,) 10th Edn., para. 10 to 17, page 185 "In deciding cases under this section E the tribunal will consider public interests as well as the rights of the applicants inter se." _ Now, in our humble opinion, the public interest can never be furthered by doing anything which would encourage dishonesty. And, as the respondent has dishonestly copied the appellant's trade mark we are satisfied that the Deputy Registrarexercised his discretion correctly in dismissing the respondent's application for, registration.
10. Mr. Thakor then submitted that the respondent's case was supported by rulings, therefore, we may observe here that this Court's judgment in Pakistan Soap Factory v. Chittagang Soap Factory (1) has no relevance because this Court had allowed the appellant's appeal on the ground that the appellant trade mark had no resemblance to the respondents. However fairness to learned counsel, we have to observe that he resisted the appeal on the basis of the judgment inNallubhai Amichand's case, because, according to Mr. Thakor, the facts in this case were similar to those in the instant case and the observations of the Court fully supported the respondent's claim.Now the facts in were that as trade mark was registered before Partition, but, he had not beento use it because there were no imports from India, therefore, the respondent copied the appellant's registered trade mark and also filed an application for striking off the appellant's registered trade mark from the register. So far the facts of the case cited and the instant case are identical, but unlike the instant case, although the Registrar refused the respondent's application to strike off the appellant's registered trade mark froth the Registrar of Trade Marks, he also held that the respondent had been using the appellant's trade mark honestly. This finding that the respondent had beer using the tradehonestly was challenged by the appellant in appeal in the High Court, but his appeal was dismissed, and the finding that the respondent had been using his trade mark honestly was allowed to become final.
11. After this finding in its favour had become final, the respondent pressed its application for the registration of the trade mark. And, Mr. Thakor relied on the fact that this application was allowed by the Registrar and also on the fact the High Court dismissed the appellant's appeal against the Registrar's order. But, as finding of honest use of the appellant's trade mark by the respondent had become final, this was clearly a circumstance within the mean--ing of the words "other special circumstances" in subsection (2) of section 10 of the said Act, therefore, the judgment is distinguishable on the facts.
12. Mr. Thakor, however, appeared to rely on this judgment, because of the observations in it on the relevance of socio-economic considerations to the exercise of the Registrar's discretion under subsection (2) of section 10 of the said Act. But, these observations, although wide, had reference to the fact that the respondent's case turned on the finding in its favour that it had used the appellant's trade mark honestly, and it was because of this finding that it was able to contend that its application should be allowed, otherwise the business built up by it would be disrupted. But, apart from the fact that there had been continuous litigation between the parties, this plea is not avail-- able to the respondent in the instant case, because of the finding against it that it has copied the appellant's trade mark dishonestly. Therefore, if it had been allowed to register the appellant's trade mark as its own, the only result would have been that it would have been able to pass off its products asforeign products and steal a march over the sales of underwears by otherslocal manufactures. There is, therefore, neither any equity nor any socio---economic considerations in its favour.
13. Mr. Thakor then referred us to another judgment of the High Court at Karachi in Aktiebolaget Jonkoping Valcar v. Registrar of Trade Marks, Karachi (1) but in this case also there was no finding against the respondent that it had copied the appellant's registered trade mark dishonestly.
14. Therefore, not only is the judgment distinguishable, but the learned Judge also observed at page 481 : "Clearly, if the adoption of a trade mark by an appellant is proved to be dishonest, no amount of user of the trade mark by him can justify registration on the ground of "other special circumstances" under section (2) of the Act of the kind which exist in the present case and which existed in the two cases cited above." This observation states tile correct law, and far from supporting the respondent's case, it is fatal to it.
15. Mr. Thakor also relied upon a judgment In re : Applications by John Toylor Peddie (2). This judgment is of a Tribunal. In any event, it does not help the respondent's case, because the facts of this case were very different from those in the instant case The only other judgment cited by Mr. Thakor which needs examination is the judgment of the Indian Supreme Court in London Rubber Co. v. Durex Products Incorporated (3). Both the appellant and the respondent in this case were selling contraceptives in India under the trade mark "Durex", but the appellant's trade mark was registered, whilst the respondent's was not. There-- fore, when the respondent applied for the registration of its trade mark, theappellant opposed this application, but it was unsuccessful. This is not surprising because the word "Durex" was part of the name of the respondent ; and this was clearly a special circumstance within the meaning of subsection (2) of section 10 of the said Act. That was also the view of the Deputy Registrar, Calcutta, who further held that it was a case of the honest on-- current use of an identical trade mark, therefore, he allowed the respondent's application. This order was challenged unsuccessfully first in an appeal in the Calcutta High Court and then in a second appeal in the Supreme Court. But in both the Courts, the appellant conceded that the respondent's use of the trade mark was honest; Therefore, like Lallubhai-Amichand's case, this judgment too is distinguishable on the facts and does not support the respon--dent's case.
16. Finally, Ms. Thakor attempted to deiced the judgment tinder appeal on the ground that the appellant was debarred by acquiescence from challenging the respondent's claim because it had been selling its products under the trade mark `Jockey' for a long time, and in support of this submission be relied on the Privy Council's judgment in Subbiah's case and other judgments. As these judgments would be relevant only if the respondent can establish its plea of acquiescence, we would first examine this question.
17. As was-pointed out earlier, the respondent began selling its products under the trade name `Jockey' in 1963 and applied immediately for the registration of this mark. A few months later, in 1964, :t also filed an application for striking off the registered trade mark of the appellant from the Registrar of Trade Marks. These applications were contested by the appellant, and by his order dated 9th January, 1967 the Registrar dismissed the respondent's application for striking off the appellant's registered trade mark from the Register of Trade Marks, therefore, the respondent withdrew its application for the registration of the mark. In these circumstances even if we ignore the fact that the respondent's sales in 1963 were trivial, it would be absurd to contend that the appellant had acquiesced in the use of its trade mark by the respondent before the Registrar's order of 9th January, 1967, because it had contested and contested successfully the respondent's claim. Then, within a matter of weeks, the respondent again filed an application for the registration of the same mark `Jockey', which was again successfully opposed by the appellant before the Registrar. In these circumstances, the plea of acquiescence fails because it is against the facts of the case.
18. We, therefore, allow the appeal, set aside the judgment of the High Court and restore the Deputy Registrar's order of 15th January, 1967. However, as the appeal turned `on a question of law, on which there was no clear pronouncement by this Court, we do not allow costs.