' The brief facts of the case are that the appellants being the proprietors of trade mark which according to them compromises of invented word "BARDASE" applied for its registration in Pakistan under clause 5 for "medicinal and pharmaceutical preparations." The Deputy Registrar of the Trade Marks, on examination in view of section 6(1)(d) of Trade Marks Act found the said mark objectionable on the ground that the word "Bardase" was considered to be close to the word "Bardash" meaning "youth, homosexual."
' A show-cause notice was issued to the appellants persuant to which their agent appeared before the Deputy Registrar and submitted reply dated 24th March,1977. In the said reply it was contended on behalf of the appellants that the meaning of the alleged equivalent word "Bardash" has no reference and certainly no direct evidence to the character or quality of the goods. Finding the reply as not satisfactory, a hearing was given to the appellants. The Deputy Registrar however, held that meaning given as above, has direct reference to the quality and character of the goods and accordingly refused registration of the said mark.
2. Against the above decision of the Deputy Registrar, the present appeal has been filed under section 76 of the Trade Marks Act, 1940.
3. The learned counsel for the appellants, Mr.Desa submitted that the .Word "Bardase" is an invented word and has no direct reference to the character or quality of goods and even otherwise is not similar to the word "Bardash" on which ground the Deputy Registrar refused the registration of the mark. The learned counsel referred to the Webster's New International Dictionary where the word "Bardash" has been defined as "youth, homosexual". The said word has also been defined in Shorter Oxford English Dictionary wherein the meaning of the said word is given as 'catamite'.
' The learned counsel then argued that in order that a trade mark be treated as objectionable and thus not registerable on the ground that it is in violation of section 6(1)(d) of the Trade Marks Act, it has to be shown that it has direct reference to the character or quality of the goods or is otherwise in violation of the sub clause (d) of section 6(1) of the Act.
The question therefore that arises in the case is as to whether the mark in question which is sought to be registered, consists of a word which has direct reference to the character or quality of the goods. The mere fact that the mark sought to be registered in clause 5 for medicinal and pharmaceutical products suggests that it has reference to some medicine would not mean that this particular mark has reference either to the character or quality of the goods. The learned counsel in support of his submissions relied upon the case reported in 24 R P C 585 which was a case wherein the mark "Motorine" was struck off by the Registrar as not being properly registerable on the ground that it was objectionable having reference to the character and quality of the goods.
The learned Judge who heard the appeal against the decision of the Registrar of trade marks while allowing the appeal and holding that the said mark was capable of being registered held that:-- "The word "direct" is inserted in this Act for the first time. In the previous Acts it was "A word or word having no reference to the character "or quality of the goods". The word "direct" is now inserted.
Now is the word "Motorine" a word which has direct reference to the character or quality of the goods? The goods in question consist of lubricating oil. I cannot see how the word "Motorine" has any direct reference to the character or quality of those goods. No doubt it suggests that in some way they are oils which are to be used in connection with a motor, but beyond that it has no reference either to their character or their quality, and such reference as the use of the two syllables of the word "motor" in the. Word "Motorine" as to the character or quality seems to me not to be that direct reference which the present Act contemplates."
4. Another case on which the learned counsel relied upon is reported in 35 R.P.C.53 wherein the question of registration of the word "Stanwal" came up for consideration. The Registrar of trade marks had refused to register the mark on the ground that the said word was similar to the English word "Stanwell." The learned Judge while allowing the appeal observed:-- "When one finds that the word is an invented word and that word is neither a surname nor a geographical expression which has reference to the geographical expression or the surname is only permissible in the exercise of the discretion and not under the provisions of the Act, the accident that the word is like a surname or is like a geographical expression is of no greater importance in itself than that it is like anything else in the world unless the consequence of the similarity is that there will be a liability to confusion if the mark is allowed to go on the Register."
On comparison of two words and for the reasons given therein it was found that the word Stanwell was an invented word within the meaning of the Act and that it was prima facie entitled to registration. In the same judgment it was further observed that though the discretion is left in the Registrar to receive and reject the application but the discretion must be exercised upon judicial principles and affected neither by caprice nor overcaution. The objection raised by the Registrar was overruled and he was directed that the application be allowed to proceed.
5. Lastly, the learned counsel relied upon the case of Messrs. Bubble Up Company v. Messrs Seven Up PLD 1975 Karachi 582. In the said case it was held:'.
"Assuming, however in favour of the appellants that the dictionaries do give this meaning, does that really conclude the matter? It is not, I think the meaning of a word which would occur only to the very crudite but the meaning which the ordinary person-and I think that means the ordinary person in Pakistan--would understand. I venture to think that in this country at least, and probably even in others where the English language is commonly used, this would not be the sense in which the word is understood. The purpose of the Legislature appears to me to be to forbid the use in a trade mark of a word which is descriptive of the goods; the word must therefore convey a description to those who commonly see it or hear it and not only to the scholarly."
6. Relying upon the cases cited as above Mr. Desa the learned counsel contended that the Registrar acted illegally in exercise of his discretion in refusing to register the mark of the appellant 'Bardase' merely on the alleged ground that it was considered to be too close to the word 'Bardash' and that the mark allegedly has direct reference to the character and quality of the goods.
According to the counsel the said reasons are non-existent on facts and untenable under the law.
I have considered these arguments of the learned counsel in the light of the decisions laid down in the above referred cases and find that the word 'Bardase' can neither be described as having any similarity with the word 'Bardash' nor can it be said to have any descriptive meaning of the appellants' products so as to violate section 6(1)(d) of the Trade Marks Act. I also agree with the learned counsel that the word. Bardase' is an invented word having no meaning.
7. The upshot of the above discussion is that the appeal succeeds and the decision given by the Deputy Registrar on 30th June,1977 is set aside.
The Deputy Registrar is directed to proceed with the registration of the mark in accordance with the law.
' As none has appeared to defend thus appeal on behalf of the respondent, there shall be no order as to costs.