This appeal from the order of the learned Deputy Regis--trar of Trade Marks, Karachi, dated 14-i- 1967 has arisen in the: following circumstances :-
2. The appellants on 6-12-1962 applied for the registration of the word "Crown" in respect of radio sets (Assemblers) in Class IX. The mark was advertised in the Trade Marks Journal dated 1-10-1963.
Messrs Crown Radio Corporation of Tokyo, the respondents, filed opposition to the registration of the mark. It appears that the respondents had themselves applied for the registration of the Trade Mark with the device of `Crown' on the 28th of April 1963 in Class IX in respect of all kinds of electric machines, apparatus and materials, including radios, television sets tape-recorders, trans- receivers, record-players, electric cells (inter) microphones, pick-ups for record players, electric torches and accessorial unit parts, using electronics, and parts and fittings of such machines and apparatus. The opposition was based under sections 8(a), 10(1) and 14(1) of the Trade Marks Act, 1940. In their counter-statement, the appel--lants denied the allegations made in the notice of opposition and alleged that the user claimed by the respondents was dis--honest. The learned Deputy Registrar on the basis of the evidence led by the parties in the form of affidavits, came to the conclusion that no deception or confusion was involved as the user and reputation of the respondents' Trade Mark hardly enjoyed any reputation ion Pakistan. The learned Deputy Regis-- trar, however, being of the opinion that since the appellants used to import Crown Radio goods from the respondents, they could not claim the borrowed mark of the respondents as their own.
The claim being improper it was not a case in which discretion could be exercised in favour of the appellants. The registration was, therefore, not permitted to proceed. This appeal has been filed to challenge this order.
3. It is an admitted position that the opposition under section 10(1) of the Trade Marks Act, was misconceived, as the said mark of the respondents was not on the register of Trade B Marks, in Pakistan as all. It also appears that in view of the prohibition of import of radio in Pakistan, the respondents were not selling any radio in this country. The record clearly shows that the appellants had been in correspondence with the respondents and on the 26th of April 1960, they bad asked for sample and literature regarding the transistor radio for the Import of which they had a licence, so that they might place their requirements from them. There is another letter dated 9-5-1961, in which the appellants wrote that they were recog--nised radio assembler in Pakistan and were desirous of enter--ing into a durable and lasting arrangement with the respon--dents. It went on to say that they were interested in the import of Crown Radio Kits (kits include all sorts of materials, includ--ing cabinet, back covers, wires, solders, resistors, condensers, transistors, packing materials, screws, washers, etc.). The requirements of the appellants as mentioned, included two or three waves bands Home type table model "with beautiful appearance and high colour". It was indicated that their, order at the initial stage, would be somewhere between 700 to 1000 radios in two shipping periods, namely, January-June and July-December. It is an admitted position that the appellants did import radio kits in 22 cases. It is, however, not denied that the respondents had no agency in Pakistan and it is not even properly established that they had any other buyer apart from the appellants in this country.
4. It was contended by Mr. Shaukat A.I, learned counsel for the appellants, that if there was no deception or confusion in the public mind within the meaning of section 8(a) of the Trade Marks Act, as found by the learned Deputy Registrar, he had no discretion left for refusing to register the mark of the appellants. The reply of Mr. Ibrahim Ahmad was that the learned Deputy Registrar had given the finding that the appel--lants had no proprietary rights in the mark, and, therefore he could not proceed with the registration. Otherwise too, according to him, the Deputy Registrar had a discretion under section 14(1) of the Trade Marks Act to refuse the registration in the special circumstances of the case, as the conduct of the appellants in appropriating a mark which they fully knew as importers, to be the proprietary right of the respondents, was dishonest and deceitful.
5. Mr. Shaukat A.I, learned counsel for the appellants, in support of his contention, relied upon S. M.
Taufiq and others v. National Biscuits Co. New York (PLD 1962 Kar. 355), Carl Zeiss v. Stiftung of Jena (PLD 1968 Kar. 276), "Weston" Trade Mark (1968 R P C 167), and Kaiser Jeep Corpora--petition v. Saber Saleem Textile Mills Ltd. (PLD 1969 Kar. 376). The cases cited by Mr. Ibrahim Ahmed, learned counsel for the respondents were : In re : Registered Trade Marks of the 9 ppotd--naris Co.
Ltd. (8 R P C 137), In re : vitamin Ltd's. Application for A Trade Mark (73 R P C 1) and Bengal Immunity Co. Ltd. v. Denever Chemical Manufacturing Co. Ltd. (AIR 1959 Cal. 636).
6. The dispute in S. M. Taufiq and others . v. National Biscuits Co, New York was in regard to the registration of "Nabisco" in respect of biscuits, bread, cake and confectionery. S. M. Taufiq &, Co., who were manufacturing biscuits applied for the registration of their Trade Mark "Nabisco" in 1951.
The National Biscuits Company also filed an application for the registration of the same Trade Mark in respect of the above--mentioned goods in 1954, and simultaneously filed opposition to the registration of the said Trade Mark at the instance of the National Biscuits Company, on the ground that "Nabisco" was adapted by them in America as early as 1901, and the said Trade Mark was registered in India in 1933. It was alleged that they had a world-wide business and spent as much as 80 million dollars annually on advertisement of their goods. Tae user of their trade mark by S. M.
Taufiq & Co., was, there--fore, dishonest knowing that it was the Trade Mark of another flourishing Company, and that its user would cause confusion and deception. The Deputy Registrar, in exercise of his discre--petition refused to register the Trade Mark "Nabisco" in favour of the local Company.
In the appeal, on the basis of the evidence led by the parties, it was held, that as the respondents had never any market or reputation in respect of any goods in this country, there could possibly be no deception or confusion is the mind of the public that the goods manufactured by the appellants belonged to the respondents. Reference was made to the observations of Tomlin, J., in Impex Electrical Ltd. v. Weinbaum (44 R P C 405), which was to the following effect :- "It seems to me that the whole contention rests on a misap--prehension. For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard.
For that purpose foreign marks are wholly irrelevant, unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become iden--tified with the manufacturer of the goods. If a manufactures having a mark abroad has made goods and imported them into this with the foreign mark on them, the foreign mark may acquire in this country this characteristic, that it is distinctive of the goods of the manufacturer abroad. If that be shown, it is not afterwards open to somebody else to register in this country that mark, either as an importer of the goods of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign country, but that it is something which has been used in the market of this country in such a way as to be identified with a manufacturer who manufactures in a foreign country. That, I venture to think, is the basis of the decision in the Appallinari's case."
7. The case of Carl Zeiss v. Stiftung of Jena, principally dealt with the question as to whether the East German or the West German Organisation, in terms of its constitution or statute, was the rightful claimant to the charitable corpora--petition originally set up in Jena in 1891, now situated in East Germany, and as such the proprietor of the Trade Mark that was in dispute. The observations in the precedent case will therefore, be of no assistance here.
8. In Weston Trade Mark, a company, called Sangamo --Weston Ltd., made an application to register the word 'Weston' as a Trade Mark in Class IX in respect of apparatus and instru--ments for the measurement of electricity heat or light." The application was opposed by two companies on the ground that in the United Kingdom Weston was not distinctive of Sangamo's goods because it also referred to the goods of the opponents. The facts leading to the dispute were, that the Newark Company of New Jersey, predecessor of Weston America, had set up a subsidiary Company in England and having later on sold the subsidiary company to a purchaser, had started competing with the purchaser, itself using the same Trade Mark, without an express agreement that they could sell their goods as Weston goods. Sangamo applied for the registration of their Trade Mark and opposition was filed by Newark. In appeal it was held by Megarry, J.- "It is the non-registration of Weston by Sangamo that would at all events permit deceit or confusion. For if Newark were to begin to advertise and sell their goods in the United Kingdom on any substantial scale I think there would be inevitable confusion between those goods and other goods entirely designed by Sangamo which have for many years been sold in the United Kingdom by Sangamo and English Weston under the mark Weston. Accordingly, in my judgment Sangamo has discharged the burden which lies on it, So far as my discretion under section 17 is concerned, I am content to adopt the Registrar's reasons as my own. Accordingly, in my judgment, the opposition fails and I direct that the application proceed t o registration."
The observations in this case, therefore, do not advance the case of the appellants.
9. In Kaiser Jeep Corporation v. Saber Saleem Textile Mills Ltd., the respondents bad sought the registration of the Trade Mark "Jeep Brand" in words and the device of a Jeep, in Class XXIII, in respect of thread and 3 am of all kinds. The opposition filed by the aforesaid appellants was on the ground that they were proprietors of the said Trade Mark "Jeep" with the device of a motor-car in respect of their automobiles, automobile parts, internal combustion engines, aircraft, water--craft, and the complete identity of the respondents' device was with the avowed object of creating deception and confusion in the public mind, in regard to the trade source. The opposition failed before the Deputy Registrar. The only point which came up for consideration in appeal was, whether the Trade Mark if registered, would cause any deception or confusion, and it was held that in spite of the identity of the mark, there was no trade connection between their goods ; they could not form part of each other ; were not put to the same use ; nor were they dealt with in the same course of business, or sold in the same kind of shop. Mr. Shaukat A.I, however, relied on the following observations: "But in my opinion, section 14 is not an independent of the other provisions of the Trade Marks Act, 11940. The accept--ance or refusal of the Registrar to register a Trade Mark has to be determined in accordance with those provisions."
Section 14 reads as under :- "Section 14.-(1) Any person claiming to be the proprietor of a Trade Mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Regis--trar in the prescribed manner, and subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.
(2) In the case of a refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat.
(3) The tribunal may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his applica--petition upon such terms as it may think fit."
10. The language of section 14 clearly indicates that subject to the provisions of the Act, the Registrar may refuse the application, or may accept it absolutely or subject to certain modifications, and limitations as he may think fit Shavaksha in his Commentary on the Trade Marks Act, 2nd Edn., p. 70 writes: "There is no absolute right under the Act, enabling an apple--cant to register his Trade Mark." As Lord Herschel said in Dnn's Tm. 7 R P C 311, certain sections "prohibit the registration of a Trade Mark in certain specified cases, but there is no duty cast upon the Comptroller of register--ing every other trade Mark that may be applied for. On the contrary, whilst he is in certain cases prohibited from registering, a discretion, whether to register or not appears to me to be in all other cases plainly conferred," A distinction has to be made between what is a matter of adjudication and what is a matter of discretion". Further on at page 71, he says, "The Registrar's discretion usually arises in a case in which as a matter of adjudication, the applicant is entitled to registration, but nevertheless owing to certain circumstances, the Registrar in his discretion refuses registration. The Regis--trar's discretion, will not be upheld if it is unreasonable. As for instance where the circumstances of the case do not sup--port the reason given by him for exercising his discretion, or be may have been overcautious in exercising his discretion against the applicant".
11. The learned Deputy Registrar was of the opinion that the Trade Mark of the respondents had not acquired a reputa--petition in this country, so as to find in their favour, under section 8 (a) of the Trade Marks Act. What, however, weighed with him was that the appellants used to import radio parts and kits, under the Crown mark and used these marks on their own sets which they assembled in Pakistan. They could not, therefore, arrogate the proprietary rights to themselves. He sought support for his view from In re : Vitamin's Ltd. Application for a Trade Mark (73 R P C 1). In that case the question, whether the applicants were making a proper representation to the Trade Mark Registry, was duly considered by the Assistant Registrar who found against them. This was approved in appeal. As for the second consideration mentioned by the Assistant Registrar, in reaching his conclusion, Lloyd Jacob, J., observed: "There is a second factor which it seems to me to be right that I should have in mind when exercising a discretionary jurisdiction, and that is that the evidence discloses that the mark has been used by the appellant upon and in relation to a remedy or an alleged remedy for arthritic conditions in human beings. The fact that the application was made in respect of pharmaceutical substances indicates that it is in a similar field that user by the respondents is contemplated.
Having regard to the fact that the evidence discloses a genuine business on the part of the appellants in their country of origin and that advertisements of such are reaching this country and appearing in libraries or places of reference to which medical men may resort, it seems to me that I am bound to consider the possibility that, with the passage of time, some conflict may occur between the use of the mark by the present respondents and the advertisement and user of the mark overseas by the present appellants. Having regard to the international character which medicine and the allied sciences have assumed and increasingly assumed over atom the last two decades, it seems to me that the Court must Radio be particularly careful to see that in exercising its discretion under the Act the public interest is not in any way imperilled. For my part I am not satisfied that, in allowing to be used by manufacturers in this country as a brand name for a pharmaceutical substance a word which is in fact used by an American Corporation in respect of the same material and advertised in journals, which on the evidence are received into this country and referred to, the public interest will be best served by permitting registration. Accordingly, on both those grounds it seems to me that it is my duty to indicate that in the light of the fuller consideration which the matter has received in this Court the application should; not be permitted to proceed."
12. In the matter of Application by the Appollinaris Co. Ltd. Fry L. J. Observed:-- "We are not concerned here with a case in which an importer may use the mark of a manufacturer with an addition indica--tive of the goods having been imported by him, but the mark of a manufacturer pure and simple cannot rightly be assumed by an importer from that manufacturer, or by a person who buys from that manufacturer, unless indeed where all the goods of the manufacturer go to that importer or that dealer."
Further on it was observed : "Again, if the mark registered had been one which indicated the importer ft might have been maintained, but an importer has no right to appropriate to himself a mark which, as in this case, both by user and express statement on its lacer asserts itself to be a mark of the producer or of the owner of the place of origin, because at the time of the registration the mark was an old one, and of course could not be registered as a new one; it was an old one of Kreuzberg's, and therefore could not be registered as an old one of the Appollinaris Company. It was the mark of the producer, and could not be registered as the trade mark of the importer, who had no right to the whole produce of the spring."
13. The case of Bengal Immunity Co. Ltd. v. Denver Chemical Manufacturing Co. And others, will not be strictly relevant, but the following observations will show that the Registrar's discretion has to be exercised where t e was a taint of fraud or dishonesty :- "As I read the section, the intention of the Legislature clearly was that in two classes of cases registration would be permitted when there is identity or resemblance likely to deceive or cause confusion-the first class to consist of cases of honest concurrent use and the second class to consist of cases where there are special circumstances not being cases of dishonest concurrent use. It is well to remember that the whole idea behind the law of registration of trade marks is to prevent fraudulent use of the marks of one proprietor by another proprietor."
14. I therefore venture to think that under section 14 of the Trade Marks Act, the learned Deputy Registrar, was competent to exercise his discretion, and in the circumstances disclosed, he had exercised it judiciously.