ZAFFAR HUSSAIN MIRZA, J.-Leave to appeal in this case was granted to examine whether Deputy Registrar, Trade Marks, Karachi, properly exercised his jurisdiction in refusing to register the appellant's trade mark and whether the High Court acted correctly in upholding that view. On a first impression the learned Judges of the Bench of this Court, who granted leave, were of the opinion that "there is apparently no point of similarity between the two" (the marks of the appellant and the. Respondents).
2. The facts forming the background of this appeal are that the appellant Jamia Industries Ltd.
Applied to the Registrar of Trade Marks for registration of a mark containing the word JAMIA" with the device of a five pointed star inside a crescent, in class 4, for lubricating oils. Respondents Caltex Oil (Pakistan) Ltd. Opposed this application on the ground that they were proprietors of two trade marks, one with the word "CALTEX" and a star device (duly registered at No, 20665 on 21-9-1953) and the other mark containing the device of star and letter "T" and the words "TEXACO" (duly registered at No, 3029 on 30-12-1948), both for the same goods in class 4. The Deputy Registrar by his order dated 27-4-1967 upheld the opposition of the respondents under sections 8 (a) and 10 (1) of the Trade Marks Act and refused the registration of the appellant's trade mark. The appellant challenged the decision of the Deputy Registrar by an appeal under section 76 of the Trade Marks Act, .1940, before the High Court of Sind and Baluchistan at Karachi, which was dismissed by a learned Single Judge of that Court on 17-8-1972. Aggrieved by the judgment of the High Court, the appellant has come up before this Court.
3. Under section 10 (1) of the Trade Marks Act, no trade mark can be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and is already registered, in respect of the same goods or description of goods or which "so nearly resembles such trade mark as to be likely to device or cause confusion". The case of the respondents in support of their objection was that the star device distinguished their goods and has been associated with their house mark "CALTEX" and that their house mark had commenced since 1937 in pre-partition India and since 1948 in Pakistan. They contended that their marks enjoyed a wide reputation, so that the star device was associated with their goods. On the other hand the appellant controverted the opposition case on the ground that their mark was primarily the word "JAMIA" and the device of crescent and star was generally used by Muslims, which therefore, does not necessarily indicate, any intention of deception on their part. After considering the evidence adduced by the parties the learned Registrar applying the test of the distinguishing features of the two marks as a factor contributing to deception notwithstanding dissimilarity, proceeded to examine the mark applied for and the registered marks of the respondents. His conclusion may usefully be reproduced in his own words : "Having stated the law above, I now propose to examine the two marks concerned in this opposition. The registered marks contain the device of star prominently and the word CALTEX in one case the word TEXACO in the other. It cannot be denied that in applicants' mark, the device of star is prominent together with the 'word JAMIA and the crescent device. Although it was urged by the learned counsel of the applicants Mr. Rizvi that the star in applicants' mark was merely an outline of a star while the five pointed star in the registered mark is a block device of a star, the net impression is the star device and the prominent feature of star in the registered mark has thus been adopted as a prominent feature in applicants' mark. At one stage, Mr. Fazle Elahi on behalf of the opponents suggested to the applicants that if the device of star was removed, the opponents would not pursue their objection, but Mr. Rizvi clients declined to entertain this proposal.
' I have, after comparing the two marks come to the conclusion that the device of star is common prominently in both the marks and though the distinguishing character in applicants' mark is the use of the word JAMIA, when I see the whole, I confess that the dissimilarity is not enough to make the wholes dissimilar. Accordingly my view is that appellants' mark is not entitled to registration.
This opposition succeeds under section 10(1) and section 8(a) of the Trade Marks Act, 1940."
4. The learned Judge in the High Court first took note of the well-established principles laid down by the judicial decisions, in matters of this nature, "that in making comparison of the two marks, emphasis should be laid on their leading features, and that, in doing so, it should be determined as to what are the leading characteristics of each of the competing trade marks". He then referred to several reported cases bearing on the question and formulated the proposition, that "though ordinarily totality of the two marks should be seen to ascertain whether they are similar to each other or distinctive from each other, but where a dominent feature of the registered trade mark is incorporated in the competing trade mark, then there is not only possibility, but also probability of deception and confusion being caused". By applying these principles the learned Judge reached the following conclusion : "If we take this trade mark and compare it with that of the appellants, then the irresistible conclusion would be that the dominent and essential feature of the two marks is the five pointed star in outline, and, this being so, there is every probability that the two marks will be confused with each other, as also the goods marketed under each mark. Even with regard to the first trade mark of the respondents, that is, the one bearing No, 20665, in which the whole star is coloured, the view may be taken, in the circumstances of the present case, that this mark bears resemblance to the proposed mark of the appellants "in that, in both the devices the five pointed star is shown surrounded by a circle. I have already stated that the appellants' five pointed star is within a crescent, but this crescent is, in fact, a circle. One feature, therefore, would be common between the respondents' trade mark No, 20665 and that proposed by the appellants, that is, in each case, the five pointed star is surrounded by a circle."
5. The examination of reported cases indicates that a decision on the question whether a mark so nearly resembles another as to be likely to deceive or cause confusion is not an exercise of discretion by a Tribunal but C a finding of fact. Kerly in his book Law of Trade Marks and Trade Names (1966 Edn.) at page 838 makes the following observations on the principles to be followed in comparing the two marks : "Two marks, when placed side by side, may exhibit many and Various differences yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of ball ; another mark may show players in a different dress, and in very different positions, and/yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollect of the whole. Moreover, variations in details might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
' When the question arises whether a mark applied for bears such resemblance to another mark as to be likely to deceive, it should be determined by considering what is the leading characteristic of each. The one might contain many, even most of the same elements as the other, and yet the leading, or it may be the only, impression left on mind might be very different. On the other hand, a critical comparison of two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus it is clear that a mark is infringed if the essential features, or essential particulars of it, are taken. In cases of device marks, especially it is helpful before comparing the marks to consider what are the essentials of the plaintiff's device ; with word marks, the Court is apt to be more impressed by the danger of 'giving the plaintiffs what amounts to a monopoly in a large class of words."
6. Learned counsel appearing for the appellant reiterated his contention that the proposed mark of the appellant was distinctive from the marks of the respondents in that the device of five pointed star is in outline inserted in a crescent, whereas the device adopted in one of the marks of the respondents was a solid star in a circle and in the other the star was superimposed with letter "T".
He urged that the only criterion to determine the question at issue was not with reference to the dominent features of the two marks but a comparison in totality, which according to the learned counsel the learned Judge of the High Court had wholly ignored. He further pointed out that the star in respondents' mark under No, 20665 was shown in colour, whereas the star in the other mark in outline only and, therefore, as to the former the proposed mark was definitely dissimilar.
7. After hearing the learned counsel for the parties we are, however not impressed by the submission that the Deputy Registrar and the learned Judge in the High Court were not justified in holding that the proposed mark for which registration was sought by the appellant came within the mischief and the prohibitions contained in sections 8(a) and 10(1) of the Trade Marks Act. As would appear from the passage cited from Kerly'sj book, the Deputy Registrar and the High Court proceeded on well-recognized principles governing the question whether the proposed mark resembled the respondents' marks already on the register so as to be likely the deceive or cause confusion. 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 respondents. It is well recognised that the same test is more stringently applied in cases of infringement or passing-off, but a weaker case than would entitle a plaintiff to succeed in action for infringement will enable an opponent to object successfully to the registration of a new mark. Applying these standards, we agree with the view that prevailed with the learned Judge in upholding the decision of the Deputy Registrar. It is not necessary, therefore, to reiterate the reasons for rejecting the contentions advanced.
8. No other ground was urged in support of the appeal.
9. In the result the judgment of the learned Single Judge of the High Court is not open to exception and the appeal, therefore, stands dismissed with no orders as to cost.