' SARMAD JALAL OSMANY, J.---This Appeal impugns the' Judgment of the learned High Court of Sindh (Karachi) in Miscellaneous Application No,55 of 2004 whereby the appeal filed by the respondent was allowed. Consequently the Order of the Registrar of Trade Marks dated 26-6-2004 dismissing the application of the respondent for registration of its trade mark i,e, "EASTERN SHAN TEA" was set aside.
2. Briefly stated the facts of the matter are that the appellant has in its favour a registered trade mark known as "SHAN" in respect of spices since the year 1985. In 1991 an advertisement appeared in the Trade mark Journal for "EASTERN SHAN TEA" for tea in respect of the respondent which was opposed by the appellant. The Registrar of Trade Marks concluded that the previously registered trade mark of the appellant is identical with the proposed trade mark of the respondent as the word "SHAN" is common and a prominent feature in both the trade marks. Consequently the respondent's trade mark was not only identical but deceptively similar to the appellant's and hence registration would be in violation of sections 10(1) as well as 8(a) of the Trade Marks Act, 1940 with the result that registration of the respondent's trade mark was refused. As noted above vide impugned Judgment the findings of the Registrar were set aside.
3. In support of the appeal Mr. Sultan Ahmed Sheikh, learned Advocate Supreme Court has submitted that the word "SHAN" is prominently displayed on the labels of both the products in yellow alphabets with a red background and consequently oven to the naked eye the proposed trade mark of the respondent is deceptively similar to the registered trade mark of the appellant.
Hence the common man/house wife who goes shopping for his/her daily needs which includes spices, tea etc., could easily be led to believe that the respondent's products i,e, tea is manufactured by the appellant and would purchase the same thereby eroding the goodwill and reputation which the appellant have built for their own products i,e, spices since the year 1985 when their trade mark was registered. Hence per learned Advocate Supreme Court the registration of the respondent's trade mark for tea would be in violation of section 8(a) of the Trade Marks Act 1940 (which was the then applicable law) as it was likely to deceive and cause confusion amongst the minds of the general public as to the ownership of the same. Similarly per learned Advocate Supreme Court the said proposed registration would also be in violation of section 10(1) of the Act
(Ibid) which prohibits registration of an identical or a similar trade mark of a previously registered article or similar trade mark. In support of his submissions learned Advocate Supreme Court has relied upon Unilever PLC., A British Company of Port Sunlight Wirral Merseyside, England v. R.B. Oil Industries (Pvt.) Ltd. Karachi (1999 M LD 1447), Mars Incorporated v. Pakistan Mineral Water Bottling Plant (Pvt.) Ltd. Through Chief Executive/Director/ Secretary (2001 M LD 39), Seven-up Company v.
Kohinoor Thread Ball Factory and 3 others (PLD 1990 SC 314), Messrs Alpha Sewing Machine Company v. Registrar of Trade Marks and another (PLD 1990 SC 1074) and Kabushiki Kaisha Toshiba (also trading as Toshiba Corporation) v. Ch. Muhammad Altaf (trading as Murad Industries (Regd.) and another (PLD 1991 SC 27).
4. In the case of Seven-up Company (Supra) learned Advocate Supreme Court has submitted that this Court came to the conclusion that the trade mark "Seven-up" for soft drinks when proposed to be used for wool, thread and soap etc. Would not cause any deception or confusion in terms of section 8(a) of the Trade Marks Act, 1940 on the ground that the manufacturing and marketing methods of both these products are different as also the category of the consumers and outlets for sale etc. Hence with so many prominent variables all pertaining to the goods and consumers thereof the mere identity of the trade marks could not justify interference in the conclusion drawn by the Registrar and the High Court i,e, in favour of registration of the subsequent trade mark viz. Seven up for wool, thread and soap. However per learned Advocate Supreme Court, registration of Seven-up for Pan Masala was refused on the ground that both products have the same sale points, and outlet points are quite often the saine and so also the consumers served are largely of the same category and their features are common. Per learned Advocate Supreme Court this reasoning which convinced this Court to refuse registration of Seven-up for Pan Masala squarely applies in the present case as both spices and tea are available at the same sale points i,e, in general stores, the category of consumers are the same viz. The common public etc.
5. Next learned Advocate Supreme Court has referred to the case of Messrs Alpha Sewing Machine Company (Supra) wherein this Court again came to the conclusion that the trade mark Philips in respect of machines and motors which was registered in Pakistan in. 1951 and such goods were being continuously sold in the market and hence the same trade mark used for.Sewing machines were nearly identical with the previous trade mark. It was therefore held that there was every eventuality of deception and confusion being caused .Since both items i,e, 'sold by the proprietor of Philips for machines and motors and sewing machines were available at the same premises and in this event the different nature of the goods would loose relevance. Hence the proposed subsequent trade mark Philips for sewing machines was refused.
6. Learned Advocate Supreme Court has, also referred to the case of Kabushiki, Kaisha Toshiba (also trading as Toshiba Corporation) (Supra) where again this Court did not allow the registration of Toshiba for ceiling fans as the previous trade mark i,e, Toshiba was owned by the Appellant Company in respect of lighting and heating appliances. It;was found that the trade mark Toshiba was coined by the owners thereof i,e, a Japanese company and phonetically identical with the proposed trade mark of the respondents in respect of fans and consequently in violation of sections 8(a) and 10(1) -of the Trade Marks Act, 1940 as it could have caused deception and confusion which was against the public interest.
7 Finally learned Advocate Supreme Court has submitted that as to the respondent's contention regarding right of audience of the appellants officers before the Registrar, the power of attorney was filed during the proceedings and hence this objection has been rectified. In this connection he has relied upon Gap Inc. A Daware Corporation USA through Authorized Signatory v. Gap Departmental Store, Karachi and another (2006 CLD 1477). Regarding the issue of limitation, learned Advocate Supreme Court has submitted that the respondent's trade mark was issued for publication in the Trade Marks Journal on 1-10-1998 but was actually published in such journal on 15-3-2001. Under Rule 30 of the Revised Trade Marks Rules 1963, two months time has been given for the purpose of filing Opposition which expired on 15-5-2001. The appellant filed an application for extension in time under Rule 76 on 10-5-2001 which was granted by the Registrar and thereafter successive applications, were filed for extension of time on 13-6-2001, 14-7-2001 and 16-8-2001 which were all granted, and hence the appellant had time up till 15-9-2001 to file the opposition which was actually done on 8-9-2001. Hence per learned Advocate Supreme Court the opposition was within time in terms of Rule 30 as well as 76 of the wised Trade Marks Rules, 1963.
8. To the contrary Mr. Abdul Kadir Khan, learned Advocate Supreme Court appearing for the respondent has firstly submitted that the word "SHAN" is a pronoun being a word of "Urdu" and means fame, high status etc. And consequently it has never been coined by anybody and therefore no one can monopolize the same on this score alone. Per learned Advocate Supreme Court the respondent had applied for registration of "Eastern Shan Tea" which pertains to tea, spices and coffee in class 30 and hence the entire class cannot be monopolized by anyone as previously the same trademarks have been registered or spices and tea viz. Camel, Noor, Minar and Crown. In this regard, learned Advocate Supreme Court has also referred to the various advertisements appearing in the Trade Marks Journal from time to time wherein certain devices and words have been declared common to the trade by the Registrar of Trade Marks in respect of different classes which include Class-2 to class 34. Continuing further he has submitted that the logo of both the parties' products are quite dissimilar as the respondent's logo is "Eastern Shan Tea" whereas that of the appellant is Only "SHAN" so also the word "SHAN" in the respondents pack is in bold capital letters which is not the case of appellant's packet. Hence there could not be any question of deception etc. In this regard he has relied upon Messrs Western Brand Tea, Karachi v.
Messrs Tapal Tea (Pvt.) Limited, Lahore and another (PLD 2001 SC 14), Messrs Mehran Ghee Mills (Pvt.) Limited and others v. Messrs Chiltan Ghee Mills (Pvt.) Limited and others (2001 SCM R 967), Messrs Hero Motors Ltd. Through Authorized Signatory v. Babar Auto Trading and Manufacturing Company through Proprietor (2010 CLD 22), Messrs Hero Motors Ltd. And another v. Babar Auto Trading and Manufacturing Company through Partners, Proprietors, Manager and another (2008 CLD 983), Formica Corporation v. Pakistan Formica Ltd. (1989 SCM R 361), Skyline Education Institute (Pvt.) Ltd. v. S.L. Vaswa ni and another (AIR 2010 SC 3221) and Life-guard Milk Products Proprietary Ld.'s Application for a Trade Mark (1957 RPC 79).
9. Per learned Advocate Supreme Court the mischief which is proscribed/prohibited in section 8(a) of the Trade Marks Act, 1940 is deception and confusion i,e, that the trade mark in question must be likely to deceive or cause confusion which must be real/tangible and not possible/illusory.
Therefore, per learned Advocate Supreme Court the two trade marks have to be compared in order to come to a correct conclusion whether the subsequent trade mark could cause deception or .Confusion. In this regard he has referred to the case of Lifeguard Milk Product Proprietary Ld.'S Application for a Trade Mark (Supra) wherein the trade mark "lifeguard" for tea and milk was allowed and similarly in the case of In the Matter of an application by Ladislas Jellinek for the registration of a Trade Mark (1963 RPC 59) mark "Panda" was allowed for shoes and shoe polish and in the case of Soneri Travel and Tours Ltd. Through Chief Executive/Director/Secretary v. Soneri Bank Limited (2011 CLD 193) where the mark "Soneri" for a bank and travel agency was allowed. Similarly in the case of Lipha Lyonnaise Industries Pharmaceutique through Authorized Signatory v. Registrar of Trade Marks and another (2009 CLD 1989) it was held that the trade marks "Gluconorm" and "Clucophage" for diabetes medicine was not deceptive and so also in the case of Thomas Bear Sons (India) Ltd. v. Prayag Narain and another (AIR 1940 Privy Council 86) the trade mark "elephant" for chewing and smoking tobacco was not found to be deceptive. In the case of Malayan Tobacco Distributors Ltd. v. United Kingdom Tobacco Co. Ltd. (AIR 1934 Privy Council 167) use of figures of twenty one on a cigarette packet with crossed swords was found not to be deceptive. It was held in all the above foregoing cases that the subsequent trade marks sought to be registered. Would not cause confusion or -deception in the mind of the common public although both were in the same category.
10. Learned Advocate Supreme Court has distinguished the case of Seven-up Company (Supra) on the ground that Seven-up being a soft drink and Pan Masala being a refreshment are co-related i,e, one is a drinkable and the other is an eatable refreshment and hence the registration for Pan Masala was refused in respect of Seven-up. However in the present case spices are definitely not refreshment but are used for cooking whereas tea is a refreshment and consumed for this purpose.
11. Similarly per learned Advocate Supreme Court in the case of Kabushiki Kaisha Toshiba (also trading as Toshiba Corporation) (Supra) the subsequent trade' mark "Philips which had been registered for electrical goods was not allowed for sewing machines as there was no prefix and suffix in bath the trade marks which is not the case in respect of the Parties' trade marks as in the respondent's trade mark there is a prefix and suffix which is missing from the appellant's trade mark.
12. Finally learned Advocate Supreme Court has submitted that the Opposition filed by the appellant before the Registrar was time barred as the date of the respondent's advertisement was 1-10-1998 whereas the Opposition was filed on 8-9-2001 which was not within two months under Rule 30 of the Trade Marks Rules, 1963. As regards Mr. Sultan Ahmed Sheikh's submission vis-a-vis the extension granted by the Registrar, he has submitted that firstly no supporting affidavit was filed along 'with the Opposition on 8-9-2001 but this was done later on 2-1-2002 which means that the Opposition in fact does not exist in the eyes of law. His second submission, was that in terms of Rule 76 of the Trade Marks Rules no notice was given by the Registrar for extension of time in absence of which this is again a nullity in the eyes of law. Finally learned Advocate Supreme Court has submitted that three extensions were granted in a consolidated manner which. Could not be done in terms of section 76 which provides very clearly that each extension must be for one month only. Per learned Advocate Supreme Court if the law provides that a particular thing is to be done in a certain fashion then it must be done in that manner- or not done at all. He has further submitted that section 15(2) of the Act provides that the opposition is to be filed within the.
Prescribed time which per Rule. 30 is two months and consequently as section 2(11) of the Act defines the word "prescribed" as per the rules therefore the opposition is patently time barred. In this regard he has, relied upon the case of Rehmat Elahi v. Messrs Hoyo Kabushiki Kaisha (PLD 1992 SC 417).
13. Mr. Saleem Ghulam. Hussain, learned Advocate Supreme Court appearing for the Registrar of the Trade Marks has fully supported the arguments of Mr. Sultan Ahmed Sheikh. According to the learned Advocate Supreme Court the essential features between the two trade marks have to be compared and in the present case it would be quite apparent even to the naked eye that there is every likelihood of deception. In this regard he has relied upon Jamia Industries Ltd. v. Caltex Oil
(Pak) Ltd. And another (PLD 1984 SC 8), CECIL De Cordova and others v. Vick Chemical Company (PLD 1951 PC 108), National Detergents Limited v. MOD International (Pvt.) Ltd. (1993 M LD 590), Seven Up Company v. Deputy Registrar of Trade Marks (1987 M LD 91) and MCDONALD'S Corporation v.
Maxfood (Private). Limited and another (2006 CLD 466). Learned Advocate Supreme Court has further submitted that the word/logo "SHP N" is not common to 'the trade and has not been declared as such by the, Registrar of Trade Marks for which purpose he has relied upon Multani Sohan Halva, Hussain Aghahi Multan v. Registrar of Trade Marks, Karachi and another (1987 CLC 1448).
14. Learned Advocate Supreme Court has further submitted that in all the proceedings before the Registrar the respondent No,1 always referred to their trade mark\ as "SHAN" which shows complete mala fides as it had applied for "Eastern Shan Tea". Finally learned Advocate Supreme Court has submitted that no evidence was produced before the Registrar which would inspire confidence in the shape of sale receipts, advertisements etc.
15. We have heard all the learned ASCs and perused the record very carefully.
16. As regards the issue of maintainability of the opposition filed before the Registrar is concerned, a complete answer is available in the case of Gap Inc. A Daware Corporation USA through Authorized Signatory (Supra) wherein it has been held by this Court that the failure of a party to file a power of attorney along with the opposition is merely a procedural irregularity and can be cured by filing such document subsequently during the proceedings. In the words of Hamid Ali Mirza, J.
(As his lordship then was) this is a "hyper technical objection and hence not to be considered. As to limitation it would be seen that indeed in the Trade Marks Journal (the original of which we have perused) the respondent's advertisement was issued for publication on 1-10-1998 but was actually published in such Journal on 15-3-2001 and hence in our opinion the limitation of two months provided in Rule 30 of the Rules would be counted from such later date because obviously no one can oppose any application for registration of a trade mark unless it comes within the public domain for which the only methodology is advertisement in the Trade Marks Journal. We have also perused the original record of the Registrar of trade marks from which it is quite clear that the respondent's application was in fact dated 15-3-2001 and as such the time for filing of Opposition would expire on 15-5-2001. So also on 1-0-5-2001 the first request on form TM-55 was filed by the appellant for extension of time up to 15-6-2001 which was allowed by the Registrar on 7-6-2001.
Thereafter as per diary of the Registrar three other applications were filed on 13-6-2001, 14-7-2001 and 16-8-2001 for extension of time by one month each up to 15-9-2001 which was again allowed and in the meanwhile the opposition in fact was filed on 8-9-2001. In these circumstances we are of the opinion that in terms of section 76 of the Trade Marks Rules which provides for a maximum extension in time up to six months for filing the Opposition, the Appellant's Opposition has in fact been filed within such time limitation after the Registrar had allowed such extensions. As regards Mr. Abdul Kadir Khan's submission that the Registrar did not pass individual orders on the appellant's application for extension in time but a consolidated one, it would be seen that per Rehmat Elahi (Supra) the order of the Registrar for extension of time up to an aggregate of six months cannot be the subject matter of an appeal however extension granted beyond to the period of six months is not only illegal but attracts section 15(3) whereby the application for registration would stand abandoned if it is filed beyond such period of time. Consequently in our view not only is the objection that a consolidated order had been passed again a mere procedural irregularity but as per the case cited above where the issue is of mere extension of time up to six months the c same is not appealable. Finally with regard to Mr. Abdul Kadir Khan's contention that in terms of Rule 76 of the Trade Marks Journal the words used are that the Registrar may extend time upon such notice to other party, if necessary, and upon such terms as he may direct." Hence where the Registrar does not deem it necessary to issue notice as in the D present case then the same would not be justiciable. In any event again as per Rehmat Elahi (Ibid) the orders passed by the Registrar vis-a-vis extension of time do not decide the rights and liability of the parties and hence cannot be E challenged in Appeal as they are merely procedural in nature. For all the foregoing reasons we are of the opinion that the opposition filed by the appellant was within time.
17. As to the merits of the case, it would be seen that the essential feature of section 8(a) of the Trade Marks Act, 1940 is that it prohibits registration of a trade mark which is likely to deceive or to cause confusion. In this regard, per the cases decided by this Court from time to time in, order to come to a conclusion whether there is any deception or confusion, the two competing trade marks have to be kept side by side and thereafter the conclusion reached whether, a mark so nearly resembles another as to cause deception or confusion and F this is not in exercise of discretion by a Tribunal but a finding of fact. In this regard reference may be made to Jamia Industries Ltd.
(Supra) wherein this Court came to the conclusion that the mark "Caltex" having the features of a Crescent and star was similar to the mark "JAMIA" which also had a crescent and star and this would cause confusion and deception. Accordingly Zafar Hussain Mirza, J (as his Lordship then was) writing, for the Court held that both sections 8(a) and 10(1) squarely apply to the facts of the case and consequently registration of the appellant's trade mark "JAMIA" in 'the same category (Oils and Lubricants) was refused in view of the previously registered, trade mark of Caltex Oil of respondent in the said category. It was observed by his Lordship, inter alia, that "we have ourselves compared the two marks and do not consider the decision of the Deputy Registrar, which as already mentioned, proceeds on valid consideration that the resemblance between the two marks is of the nature prescribed in the provisions mentioned. An examination of the overall circumstances concerning the rival marks would also yield the same result, that the similarities are so striking that an unwary purchaser would be exposed to reasonable probabilities of confusion and deception that the goods of the appellant carrying the proposed trade mark had their origin from the same respondents."
18. In the case of Formica Corporation (Supra) which related to infringement of a trade mark under section 21 of the Trade Marks Act, 1940 this Court held that the principles thereof are as follows:-- "The person seeking to enforce his right to a trade mark has to prove:-
(i) trading in his own goods with the trade mark;
(ii) a certain amount of popularity which, would persuade some one to take advantage of its .Good reputation or popularity;
(iii) that another person uses a mark;
(iv) identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade; in relation to goods iii respect of which it is registered;
(v) in such manner as to render the use of that mark likely to be taken to import a reference to the proprietor of the marlc or import a reference to goods with which a proprietor is connected in the course of a trade."
' The question before the Court was whether the trade mark "Formica" of the Appellant's Company, which was registered in most countries of the world, when compared with that of the respondent Company viz. Pakistan Formica Ltd. Was likely to deceive the common public in Pakistan into believing that its goods were manufactured by the respondent Company which was trading as Formica Ltd. i,e, whether there was any likelihPakistanood of deception. This Court came to the conclusion that no evidence had been placed on the record by the appellant company of its goods being marketed in Pakistan and hence there is no possibility of any such deception being caused in the minds of the. Pakistani public as to the origin of the goods viz.- that of the appellant Company.
19. In the case of Seven-up Company (Supra) as observed above this Court came, to the conclusion that the trade mark "Seven-up" of the Appellant's Company does not cause any confusion or deception (when used for wool, thread, soap and sports goods etc. As the goods are entirely different, their manufacturing and marketing methods are different and so also the categories of customers served is not the same as well as the outlets. Hence with so many variables the mere identity of the trade mark would not just justify interference in the conclusion drawn by the Registrar or the High Court with regard to the deception and confusion i,e, their being none. However insofar as Seven-up for soft drink and Pan Masala, this court came, to the conclusion that often their sale points and outlets are the same and the consumers served are largely of the same category hence although both products are differently classified from the consumers point of view they are in the same category of light refreshment. Consequently there was a likelihood of confusion or deception with regard to their origin with the result that the subsequent trade mark for Seven-up Pan Masala was not allowed. It was further observed by this Court that the applicants for registration of Seven-up for Pan Masala had a wide and open field to choose from. They derided upon the trade name of another which also happens to be name of the Company which has heavily invested in that trade name and good will appurtenant to it. With that real likelihood of deception and confusion it was clearly a case where registration should have been refused.
20. In the case of Messrs Alpha Sewing Machine Company (Supra) again this Court came to the conclusion that the trade mark "Philip" registered in respect of machines, machine tools and motors would definitely be confused with the same trade mark proposed to be used for sewing machines on the ground that the sale outlets are the same and so also the customers.
21. In the case of Messrs Western Brand Tea, Karachi (Su pra), this Court again came to the conclusion that the wrappers of the containers of both the parties had a similar design scheme and colour and consequently the earlier registered.Trade mark of the respondent which carried with it goodwill, publicity etc. Would prevail in the circumstances of the case. Hence.
The petitioner was restrained from using such trade mark. The court observed that "A bare visual look at the wrappers wherein the petitioners pack their products had reflected complete resemblance providing similarities of design, scheme and colour which could certainly affect the products of the respondents i,e, illiterate customers could be easily misled on looking at the wrappers and consequently there was every possibility of deception and confusion."
22. In view of the foregoing discussion of the decided cases on sections 8(a) and 10(1) of the Trade Marks Act, 1940 as well as section 21 thereof, the following considerations can be readily ascertained in order to come to the conclusion whether a proposed trade mark/logo sought to be registered/used by an entity would cause confusion and deception in the minds of the common public as compared to a previously registered/used trade mark of another entity:--
(a) the process of manufacturing of the two commodities;
(b) their outlets or sale points;
(c) the nature of goods;
(d) the trade channels; and
(e) potential customers/consumers.
' Finally and conclusively a visual comparison has to be made between the wrappers/packing of the products and if it is found that they are substantially the same ,then the decision has to be made in favour of the previous trade mark/user. It may be noted that the afore-going principles and considerations are not absolutely essential in order to reach the correct conclusion regarding deception etc. In fact there may be some variables as has been illustrated, above. However this much is certain that where the sale outlets and potential consumers' are the same and the two trade marks are more or less alike, confusion is bound to take place.
23. Applying the foregoing principles to the case at hand we would note that spices and tea are usually available at the same general store and the potential customers are the general public as these are item's of daily use. Simi larly the method of advertisements is generally the same i,e, electronic and print media as well as bill boards. For example the person going to a general store for his or her monthly, weekly or daily shopping in this country would normally buy spices and tea. Hence it is well established that the consumers of both the items are the same as well as the sale outlets. Insofar the nature of goods is concerned it may be noted that where tea is a refreshment and hence not essentially a food item, spices are used for seasoning food and again are not essentially a food item. Consequently it can be safely said that spices/condiments and tea are ingredients used for the purpose of refreshment/seasoning etc. The object of both being to make drinkables and eatables more palatable.
24. Coming now to the most essential feature in the case it would be seen that the logo/design and words used in the wrappers/containers of both the products of the parties is essentially the same. The word "SH AN" in yellow letters with red background are common to both the wrappers although the packets vary in size and presentation i,e, the appellant's spices are contained in a card board packet whereas the respondent tea is in a plastic bag. Consequently, taking in view the overall facts and circumstances of the case we are of the firm opinion that indeed the proposed registration of the respondents' trade mark would be in violation of sections 8(a) of the Trade Marks Act, 1940 as there is every likelihood of deception and confusion being caused in the minds of the common public regarding the trade mark of the respondent for that of the appellant. Similarly there would be a violation of section 10(1) of the Act as both trademarks are more or less identical.
25. Insofar as the cases cited at the bar by Mr. Abdul Kadir Khan, learned Advocate Su preme Court for the respondent No,1, in our opinion these are distinguishable from the facts and circumstances of the present case.
26. In the case of Messrs Hero Motors Ltd. Through Authorized Signatory (Su pra) a Division Bench of the High Court of Sindh came to the conclusion that the word "Hero" and "Asia Hero" did not give rise to any possibility of any deception etc. Being entertained in the minds of the public as the two were not the same and hence an injunction issued in favour of the respondent Company trading in the name of Asia Hero by a learned Judge in the Chambers of the said Court was upheld. In the present case however it would be seen that the two competing logos/marks are more or less the same. Similarly in the case of Formica Corporation (Su pra) it was held that the term "Formica" was a generic one and even otherwise Formica Corporation USA did not place any evidence on the record that in fact it was trading in Pakistan and hence there could not be any possibility of deception or confusion.
27. In the case of Sk yline Education Institute (Pvt.) Ltd. (Su pra) the conclusion was reached that the terms "Sk yline" used by the parties for educational institutions would not prevent the respondent from using the same for his educational institute on the ground that such word/term is generic in nature as it is being used by thousands of persons and institutions as part of their trading or business activities. It was also found that in the circumstances of the case the appellant was not entitled to an interim injunction in the suit which had filed against the respondent based on possessing off.
28. In the case ,b>Lifeguard Milk Products Proprietary Ld.'S Application for a Trade Mark (Su pra) it was held that though the word "lifeguard" along with the logo of a member of a Household Cavalry with upraised sword is common to both the products i,e, for milk and tea yet the origin of the goods and wholesale outlets are not the same. Hence there was no tangible danger of any confusion etc. Again in the matter of an application by Ladislas Jellinek for a Registration of a Trade Mark (Su pra) it was again held that the mark "Panda" for shoes and shoe polish would not cause deception and confusion in the circumstances of the case as they are not the same goods and there was no evidence that the opponents had established a reputation of their mark as of the date of the application.
29. Again in the case of Soneri Travel and Tours Ltd. Through Chief Executive/Director/Secretary (Su pra) a Division Bench of the High Court of Sindh came to the conclusion that under section 40(4) of the Trade Marks Ordinance 2001 the offending trade mark must be identical with or deceptively similar to the registered trade mark and must be used in relation to goods and services similar to those for which the trade mark is registered, the trade mark must have a reputation in Pakistan and such use must not take unfair advantage or be detrimental to the distinctive character or repute of the registered trade mark. In the circumstances the conclusion was reached that since the goods and services being offered by the two parties were totally distinctive i,e, the respondent's business consisted of , banking services whereas that of the appellant of providing travel services hence there was no danger of any confusion etc.
30. As to Mr. Abdul Kadir Khan's contention that the case of Kabushiki Kaisha Toshiba also trading as Toshiba Corporation) (Su pra) is distinguishable from the facts and circumstances of the case is concerned on the ground that "Toshiba" was a coined word and there was no prefix and suffix we can only observe that in the present case although there is a prefix and suffix to the word "SH AN" i,e, "Eastern and Tea", they are in small print as compared to the word "SH AN" in .Which circumstances this distinction fades into the background.
31. In view of the all foregoing facts and circumstances, we have come to the conclusion that both parties' trade marks/logos are quite similar even to the naked eye, the sale outlets are the same, the consumers are the same viz. The general public and hence it is more than probable that the product being offered by the respondent i,e, tea would be connected to the product of the appellant; viz. Sp ices which would thus result in confusion and deception and would be detrimental for the appellant as well as that of the general public because the trade mark laws are not only made for the protection of the owner of the trade mark but also of the general public. Hence the proposed registration of the respondents trade mark would be in violation of section 8(1) of the Trade Marks Act, 1940. So, also section 10(1) thereof would be violated as the appellant's trade marls was registered much beforethe respondents filed their application for registration of their trade mark.
32. For all the foregoing reasons this Appeal is allowed. The impugned judgment is set aside.
The respondent No,1 is directed not to use the. Word/logo "SH AN" for its product i,e, tea, at all.