1. This is an appeal under section 76 of the Trade Marks Act, 1940, against the order dated 4th March 1965, passed by the Registrar of trade Marks, Karachi; rejecting the application for tegistration of the trade mark.
2. The appellants had filed an Application No, 3315 dated 22-9-60 for the registration of a trade mark in respect of all types of soaps and soap products in class 3. The trade mark comprised a label containing the device of the Ace of Spade with the word "Kalapan", claimed to have been used since 1948. At the time when the application was made it was found that there was a registered trade mark having the device of Heart with words, "Lal Pan" registered under No, 30 dated 8th April 1948, in class 3 in respect of soaps, toilet, washing chips and liquids in favour of one firm known as Ismail Soap Factory and furthermore the application dated 1-7-1957, made by the respondents for the registration of their trade mark under No, 27568 in class 3 in respect of soap having the device of betel leaf with words, `Motia Pan' was pending. Consequently an objection was raised by the Registrar and there was some correspondence between the Registrar and the appellants.
3. Eventually the Registrar by his letter T. M. Order/10520/62 dated 1-10.1962 called upon the appellants to supply a suitable block for the purpose of advertising in the trade mark journal under section 15
(1) Proviso of the Trade Marks Act. Simul taneously notices dated 11-10-62 were also sent to the respondents as well as Ismail Soap Factory and Aftab Iqbal. It seems that the letter two put up no objection but the respondents took exception and sent a letter dated 31-10-1962 vide page 52 of the main file No, 3315-MA No, 68 (65), raising the objections to the advertisements on the grounds stated therein.
4. It was claimed by the respondents in the aforesaid application that they were registered proprietors of the mark comprising of the device of 'Pan' with the words `Motia Pan' in respect of soap in class 3 under No, 27568 and they had been using the mark since 1948. They had further stated that 'Pan' and the device of 'Pan' were in clear conflict with the registered trade mark and they had filed a suit in 1962 against the appellants for infringing their trade mark by their mark of pan and words `Best Pan' used in respect of soap and that suit was still pending in the Court of the District Judge, Karachi.
5. However, the advertisement was made in the Journal No, 146 volume XIII, March 1963. In pursuance of this adver-tisement the respondent entered opposition by making an application dated 8-8- 1963 and registered under No, 8871 dated 13-8-63 vide Page 1 of Opposition file No, 46 (63). In this the earlier grounds were repeated and it was further added that the user of the trade mark of the appellant, if any, was denied and they had adopted the previous registered Trade Mark of the respondents with a mala fide and dishonest intention. (Para. 13 of the application). They had also called upon the attorney of the appellants to withdraw the Trade Marks but no reply was received.
6. Both the parties filed affidavits. On behalf of the appellants affidavits of five persons, namely, Abdul Sattar, Muhammad Bbai. Bashir, Aftab All and Haji Usnian were filed along with certain documents, while on the other side affidavits of 2 persons, namely, Nisar Ahmed and Ibrahim Bhai were filed.
7. It may be mentioned here that Abdul Sattar is one of the partners of the firm of the appellants while the other four persons whose affidavits were filed on their behalf were the traders and they all supported the claim of the appellants that the trade Lark "Kalapan" on their soap was being used since 1948. The document consisted of 6 bill books and 9 cash memo books for the years from 1948 to 1961, in addition to a voucher dated 13-4-48 for the purchase of some parts of machinery. On the other hand Nisar Ahmed is the Director of the respondents' firm while Ibrahim Bhai is a merchant dealing in soap. Nisar Ahmed stated that it was denied that the appellants were the oldest manufacturers of soap in Pakistan and they were put to strict proof that they were using the trade mark since 1948 and its continuous sale thereafter. They were also required to render an explanation why they did not try to get their trade mark registered earlier. It was further stated that the registered trade mark of the respondents enjoyed the reputation and goodwill which would be seen from the evidence of user and distinctiveness filed at the time of the registration of their trade mark and the same may be brought on record, besides further evidence would be produced in that behalf. It was also claimed that the registered trade mark of "Motia Pan" on the soap manufactured by them was generally known as 'Pan Marka Sabun'. The device of pan and the word 'Pan' in the appellants' trade mark was an exact copy of their device and the word. This was apparent on the comparison of the two marks as well as from the show-cause notice issued to the appellants. The very fact that the appellants prayed for their mark to be registered under section 10 (2) on the basis of the concurrence user admitted the similarity of the two marks. Since the appellants had copied the trade mark the onus lay upon them to prove their bona fides by reference to the area and volume of their trade in respect of their mark. It also appeared from the conduct of the appellants since 1960, that they had tried to copy the main features with the device of pan and the word "Pan" and at first they had copied the device of pan and the word "Pan" in their mark "Best Pan" and that an objection was raised to it when they applied for the registration of their disputed trade mark "Kalapan". The other witness Ibrahim Bhai stated that he was selling various brands of soap manufactured by the respondents and it was of highest quality and its price was reasonable and, therefore, it was much in demand in the trade and the public and the customers always asked for "Pan Marka Sabun". He further stated that the two marks could mislead and confuse the public with the soap of the appellants and 'Pan Marka Sabun' of the respondents.
8. The learned registrar, on the assessme nt of the evidence produced by the parties observed that he had no reason to disbelieve the evidence adduced by the respondents regarding the user and reputation of their trade mark and it appeared from that evidence that the soap bearing the registered mark was popularly known as 'Pan Marka Saban'. He further came to the conclusion that the registered trade mark as well as the trade mark propose.' by the appellants had common identical features. It being washing soap, was a common house-hold article purchased mainly by domestic servants an I illiterate or semi-literate persons, and naturally they would identify the goods of the respondents by the device of betel leaf appearing thereon. He further observed that the educated people would not have much difficulty in distinguishing the two marks as one was `Motia Pan' and the other was `Kala Pan' but for illiterate or semi-literate people who would not be able to read the words `Motia Pan' or `Kala Pan' the similarity of the two devices would be deceptive, and furthermore the appellants' mark could also be known in the market as 'Pan Marka'. He then proceeded to refer to the legal aspect of the case and stated that it was well-settled law that the test of comparison was not to take the two marks and put them side by side for comparison because that was not what a man did when he went to buy a thing. For this he sought in aid the rule laid down by Sergent, J. in Sandoz application (1914) 31 R P C 196 at 206. On the basis of this rule the Registrar was of the opinion that there was tangible danger of the mark of the appellants being mistaken for the marks of the respondent by illiterate persons who would constitute the bulk of the consumers of the goods in question. So he held that the appellants' mark as objectionable under section 10 (1) of the Act. Then he proceeded to consider the plea with regard to the concurrent registration under section 10 (2) of the Act on the ground of honest concurrent user. He referred to the documentary proof furnished by the appellants but he rejected all those documents.
9. Consequently the plea of concurrent registration under section 10 (2) of the Act was also disallowed.
10. Aggrieved by this order the present appeal was filed. On consideration of the reasons given by the Registrar and the arguments addressed by the learned counsel for the parties before me. I entirely agree with the Registrar that there is a great resemblance between the two marks with minor changes' in the figure and the word "Pan" being common in both. The mark of the appellants, is `Kalapan' with device of the Ace of spade while the mark of the respondents is betel leaf. This question also came up for consideration in the case of Bandenawaz Ltd. v. Registrar of Trade Marks, Karachi and another . The mark depicting the features of deer was used in the two marks with some changes here and there. The rule laid down in the case of Aristoc Ltd. v. Rysta Ltd. was referred and it reads as under: The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938 (which corresponds to section 10), must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher for elocution. The Court must be careful to make allowance for imperfect recollection and effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants. The tendency to slur a word beginning with 'a' is generally speaking, very common, and the similarity between `Rysta' and `Ristoc' would, I think, be fairly obvious. It would not be surprising to learn that a person asking for `Aristoc' stocking from a shop assistant who only knew of `Rysta' stockings had been supplied with the latter and vice versa."
11. On the basis of the aforesaid rule it was held that the two marks closely resembled each other. It was further observed that the resemblance may be visual or phonetic and the basic; device in the two marks was similar i,e, deer, notwithstanding the dissimilarity with regard to the shapes of the deer, the two devices would in all probability be known in the market as deer mark or deer brand,1 2 and, therefore, the case of the goods of the appellants would be confused with each other. I am in respectful agreement with this view and it is equally applicable to the present case.
12. However, this does not conclude the matter as according to section 10 (2) an honest concurrent use also entitles a person to have the trade mark registered. Similarly, section 25 does not entitle the proprietor or a registered user of a registered trade mark to prevent the registration of the trade mark which was being used earlier than his trade mark. To establish the concurrent use the appellants had furnished ample proof. It was claimed by them that they had been using the trade mark `Kala Pan' since 1948. To support this they had produced the sale-deed dated 2-2-1948 and a letter of the same date showing that the appellants had purchased the soap factory from the Hindu owners and they had been using 'Kala Pata' as their trade mark which was duly registerd under the Trade D Marks Act. Word `Pata' in Sindhi language is also used for playing card. The Registrar offered no comments with regard to these documents nor the respondents controverted this fact. The appellants had also produced bill books, cash-memo. books and voucher from the year 1948. The cash memos and bills were rejected on the ground that the addresses of the customers were not shown in them and no corroborative documents such as order books, railway receipts and ledger books had been produced. Simply because the names of the customers had not been shown in the cash memos. does not mean that the cash memos are not genuine documents. It is a matter of common-knowledge and practice that in many cases such names are not shown in the cash memos, which are issued when the articles are purchased. Simply the dates and the articles which are Bros. purchased are shown with the signatures of the shop-keeper. So far the railway receipts are concerned they are not Factory expected to possess them as the railway receipts are for warded to the consignee to show the goods are despatched.
13. So far the order books and ledger books are concerned the persons who had filed the affidavits had never been cross examined on that point. The affidavits of those persons were rejected on the ground that the same were couched in the same language and contained parrot like repetitions.
14. This could hardly be a ground to reject the affidavits. When the affidavits are filed to support some facts it is but natural that they must be couched in the same language because these are prepared by the counsel who appears for the parties.
15. The last piece of evidence is the cash memo. showing that some blocks of trade mark `Kala Pan' were got prepared by the appellants in 1948 at a cost of Rs,
175. This was also rejected by the Registrar on a flimsy ground.
16. It was observed by him that this piece of evidence in itself did not constitute evidence of actual user of the mark and all that it proved was that some block of `Kala Pan' was got made by the appellants in 1948. I am constrained to observe that this was not the only piece of evidence produced by the appellants so that justification was found by the Registrar to reject the document.
17. Its value had to be assessed in the light of the other evidence which was adduced. It is cumulative effect of the various pieces of evidence which is material in reaching the conculsion. So the inference drawn by the Registrar from this single document was not justified. Keeping in view the entire evidence the appellants could not be expected to get the blocks prepared unless the same had to be put into use. Thus this piece of evidence serves to provide the necessary corroboration to the contention of the appellants that they had been using the trade mark since 1948.
18. Another important fact which was either not noticed by the Registrar or no thought was paid to it.
19. The objections which were filed by the respondents on 31-10-62 appearing at page 52 of File No, 3315-MA No, 68 (65) may be referred to. In these objections not a word was said disputing the claim of the appellants that they had been using the mark `Kala Pan' since 1948. The main objection which was taken was that the device by the appellants was in conflict with their registered trade mark. Thus in the absence of denial it ought to be presumed to have been admitted. It was only in the opposition application dated 8-8-1963 appearing at page 1 of File No, 47 (63) this plea was taken in para. 13. Apparently this was an after-thought. The evidence led in support of it by way of affidavits rejected. Even otherwise it was the word of Nisar Ahmad who was the Director of the respondents and, therefore, it could not be given much weight.
20. Thus the conclusion reached by the learned Registrar that the appellants failed to prove that they had been using the mark since 1948 is not sustainable. Consequently the case of the appellants clearly fell within section 10 (2) of the Trade Marks Act, and their trade mark had to be registered.
21. Not only this but there is yet another important fact which was also completely ignored by the Registrar. The trade mark of the respondents was registered on 25th May 1962, with effect from 1st July 1957, when presumably the application for registration was made, although another trade mark of 'La! Pan' was already registered under No, 30 dated 8th April 1948, in class 3 in respect of soaps, toilets, washing chips and liquids in favour of another firm known as Ismail Soap Factory, Karachi. If the trade mark of the respondents could be registered in the face of an earlier trade mark with similar device there is no reason why an exception could be made in the case of the appellants and the registration was refused. In order to meet this it was urged by the learned counsel for the respondents that this was a new plea not having been taken before the Registrar, could not be entertained in appeal. I find no force in this contention as it is a legal plea and it could be raised at any time. Apart from the fact that the existence of the previous registered trade mark has not been controverted by the respondents by filing any counter-affidavit in this appeal, it is clear from the statement of facts that it was not only within the knowledge of the Registrar that a similar trade mark of another firm was already registered under No, 30 in 1948 but actually objection in that behalf was raised and notices were issued by him. This is not all but when the respondents had applied for the registration of their trade mark the same objection was also raised then as is evident from the File No, 27568-MA/68/65 page 8 which is notice dated 4-9-1958 sent by the Registrar to the respondents. This file was also before the Registrar and was sought in evidence by Nisar Ahmed as per para. 5 of his affidavit. Despite this the Registrar paid no thought to it.
22. It was further urged by the respondents that their soap was known as Tan Marka Sabun' in the market but this contention must also be repelled by the very fact that already there was a soap bearing registered trade mark 'Lai Pan'. So Tan Mark a' name simplicitor has no significance.
23. Moreover, the evidence which was produced by the respondents in proof of their contention is insufficient.
24. In the result I allow the appeal and set aside the order passed by the Registrar and direct that the trade mark of the appellants be registered. PLD 1967 Kar. 492 (1940) 62 R P C 65