' This judgment will dispose of Miscellaneous Appeals Nos. 16)79 and 17/79. In both appeals, the appellant is Glaxo Laboratories Ltd. And respondent is the Registrar of Trade Marks.
' Miscellaneous Appeal No, 16/79 challenges the decision dated 16-9-1978 of the respondent, Registrar of Trade Marks, Karachi, refusing to register the Trade Mark "VITAMILK" in class 5, for which the appellant had filed Application No, 66055 dated 21-8-1977. The respondent issued a notice to the appellant to show cause why the said Application No, 66055 should not be refused registration inter alia on the ground that Trade Mark "VITA-MILK" was descriptive under section 6 (1) (d) of the Trade Marks Act, 1940. The appellant replied to the show-cause notice and also filed various documents in support of the appellant's contention that the trade Mark "VITAMILK" was not descriptive under section 6 (1) (d) of the Trade Marks Act. However, by the impugned decision dated 16-9-1978, the respondent rejected the application of the appellant. The operative part of the order dated 16-9-1978 of the Registrar of Trade Marks refusing appellant's Application No, 66055 for registration of the Trade Mark "VITAMILK" in class 5 reads as follows :- "The applicants have failed to establish their case to cross the objection raised under section 6 (I)
(d) of the Trade Marks Act, and as the mark is disqualified itself at this stage, I do not think it appropriate to proceed further to discuss in detail the objections raised under sections 10 (1) and 8
(a) of the Act. The upshot of the whole discussion is that the mark does not qualify for registration and hence it is refused registration in exercise of the discretionary power vested in me under the provisions of the Trade Marks Act 1940."
' Miscellaneous Appeal No, 17 of 1979 challenges the decision dated 9-11-1978 of the Registrar of Trade Marks refusing the appellant's Application No, 66471 dated 3-12-1977 for the registration of the Trade Mark VI TAMILK" in class 29. In this case also a similar show-cause notice was issued by the Registrar of Trade Marks which was replied by the appellant and by the impugned decision dated 9-1 -1978 the Registrar of Trade Marks rejected Application No, 66471 of the appellant for registration of this mark in class 29.
' Being aggrieved by the two decisions dated 16-9-1978 and 9-11-1978 of the Registrar of Trade Marks refusing the appellant's applications for registration of the Trade Mark "VITAMILK" in classes 5 and 29, these two appeals have been filed, I have heard Mr. A. A. Zari, learned counsel for the appellant. No one has appeared on behalf of the respondent, the Registrar of Trade Marks.
2. Section 6 of the Trade Marks Act, 1940 is reproduced here :- "6.-(1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely :-
(a) the name of a company, individual, or firm, represented in a special or particular manner ;
(b) the signature of the applicant for registration or some predecessor in his business ;
(c) one or more invented words ;
(d) one or more words having no direct reference to the character or qualify of the goods, and not being according to its ordinary signification, a geographical name or surname or the name of a sect, caste or tribe in (Pakistan) ;
(e) any other distinctive mark, provided that a name, signature, or any word, othe than such as fall within the descriptions in the above clauses, shall not be registrable except upon evidence of its distinctiveness.
(2) For the purposes of this section, the expression 'distinctive' means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which -
(a) the trade mark is inherently so adapted to distinguish, and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish."
3. The reasoning of the Registrar of Trade Marks in upholding the objection raised by the Trade Mark Registry under section 6 (1)(d) of the Trade Marks Act 1940 is as follows (given in the order dated 16-9-1978.
"The mark applied for here is the word WITAMILK' : Now the prefix 'Vita' is a reference to 'vitamins' or 'vitality' while the suffix 'milk' of the trade mark is totally descriptive of the goods in question.
Addition of vitamins etc. To the milk actually and clearly indicate the character and quality of the goods. A milk which comprises of or contains vitamins or such other essential ingredients which make the milk full of vitality and energy indicate its character and quality.
' During the course of his arguments, the learned Advocate for the applicants referred to certain cases. Most of the cases referred to .By him are those where the prefix had been 'Vita' but the suffixes had always been a word having no. Direct reference to the character or quality of the goods. But here in this case, the total combination of the mark applied for is a fully descriptive word for the goods in question."
4. Mr. A. A. Zari, learned counsel for the appellant submitted that the mark "VITAMILK" is a word coined by the appellant and it has no obvious meaning as wrongly observed by the Registrar of Trade Marks. It was argued that the mark was to be taken as one word and not to be dissected as has been wrongly done by the Registrar of Trade Marks. Learned counsel also referred to the dictionary meaning of the word "Vita". In Dorland's Illustrated Medical Dictionary, 23rd Edn. At p.
1532. The meaning of "Vita" is given as "life". Learned counsel for the appellant also referred to p.
2558 of Webster's Third New International Dictionary where also the meaning of "Vita" is given as "life". Learned counsel then pointed out that appellant's Trade Mark "OSTERMILK" with the suffix 'milk" has been registered in different classes by the Registrar of Trade Marks and as such the registration of the Mark "VITAMILK" on the ground that the suffix "milk" is descriptive is not warranted by law. Mr. A. A. Zari also informed that in England appellant's Mark "VITAMILK" has been registered.
5. In my view, in the facts and circumstances of the present cases, the Registrar of Trade Marks should have looked at the Mark "VITA-MILK" as a whole and should not have dissected it to see whether any of its component's part conveys any meaning. Then, in any case, the word "Vita" does not always indicate that the products whose trade names include the word "Vita" contains vitamins. The show-cause notice issued by the Trade Mark Registry itself refers to about 17 trademarks already registered by the Registrar of Trade Marks having the prefix "Vita". Then appellant's mark "OSTERMILK" has also been registered by the Registrar of Trade Marks' suffix of which mark is "milk". In the circumstances, just because the word "Vita" has been used in the mark or the mark contains the suffix "milk", the Registrar of Trade Marks could not make it a ground for refusing to proceed with the registration of the mark under section 6 (1) (d) of the Trade Marks Act, 1940.
The Trade Mark "VITAMILK" appears to be a newly-coined word and although this mark may have some suggestive references to the character or quality of the goods of the appellant, it has no such direct reference as may make the trade mark descriptive of the goods. In my view, therefore, the reasoning of the Registrar of Trade Marks in upholding the objection of the Trade Marks Registry under section 6 (1) (d) of the Trade Marks Act, 1940 is not proper. The Trade Mark "VITAMILK" being a newly-coined word and not being descriptive of the goods in question, the applications of the appellant should not have been rejected under section .6 (1) (d) of the Trade Marks Act, 1940.
6. As a result Misc. Appeals Nos. 16 of 1979 and 17 of 1979 are allowed and the decisions dated 16-9- 1978 and 9-11-1978 of the Registrar of Trade Marks refusing Application No, 66055 in class 5 and Application No, 66471 in class 29 are set aside. The Registrar of Trade Marks is directed to take further action on the said applications in accordance with law. There will be no order as to costs.